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 (fax)........................................................................................... 4 3.1.2 By electronic means ....................................................................................... 5 3.1.3 By post, courier service or personal delivery.................................................. 5
3.2 Notification by the Office ...........................................................................5 3.2.1 Notification by telecopier ................................................................................ 6 3.2.2 Notification by post ......................................................................................... 6 3.2.3 Notification by deposit in a post box at the Office .......................................... 7 3.2.4 Notification by hand delivery........................................................................... 7 3.2.5 Notification via the Office’s official website..................................................... 7 3.2.6 Notification by public notification .................................................................... 7
3.3 Addressees.................................................................................................8
4 Time Limits................................................................................................. 8 4.1 Time limits specified by the Office............................................................8
4.1.1 Length of the time limits specified by the Office ............................................. 9 4.1.2 Expiry of time limits......................................................................................... 9 4.1.3 Extension of time limits................................................................................. 10 4.1.4 Continuation of proceedings......................................................................... 11 4.1.5 Restitutio in integrum .................................................................................... 12
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1 Introduction
This part of the Guidelines includes those provisions that are common to all proceedings before the Office in trade mark matters, except appeals.
In the interests of efficiency and i n order to prevent parties encountering different practices, the Office applies procedural rules consistently.
Proceedings before the Office can be classified into 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, transfer-related entries in the Register, licences, levy of execution or bankruptcy, and seniority and conversion proceedings.
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 and Rule 83 CTMIR
An application for a Community trade mark (CTM) may be filed directly with the Office or through a national office of a Member State of the European Union, including the Benelux Trade Mark Office.
All other documents may only be filed directly with the Office.
All documents may be sent to the Office by post or courier services, handed i n personally at the Office’s reception desk (Avenida de Europa, 4, 03008 Alicante) during Office opening hours (Monday to Friday, 08:30 – 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 part of its e-business strategy, the Office will progressively make electronic communication available for filing other documents in all types of proceedings.
The Office has made various forms available to the public, in all the official languages of the EU. With one exception, their use is not mandatory but strongly recommended. The exception is when filing an i nternational application or subsequent designation under the Madrid Protocol, for which either the World Intellectual Property Organization’s (WIPO) MM 2 or MM 4 or the Office’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.
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A document’s date of notification or communication is the date on which that document is received or is deemed to be r eceived by the addressee (including the Office) (judgment of 30/01/2014, C-324/13 P, ‘Patricia Rocha’, para. 43). Exactly when receipt is deemed to have taken place will depend on the method of notification or communication.
3.1 Communication to the Office
Rule 5(1), Rule 79, Rule 79a, and Rules 80 and 82 CTMIR Decision No EX-13-02 of the President of the Office
3.1.1 By telecopier (fax)
Where a document is faxed to the Office, the original should be signed so that the fax received by the Office bears the facsimile of the signature. If the fax is not signed, the Office will invite the party concerned to do so within a specified deadline. If the document is not signed within that time, the application or request will be declared inadmissible, or the document will not be taken into account, as the case may be.
However, if the fax was generated electronically by computer (‘electronic fax’), the indication of the name of the sender is deemed to be equivalent to the signature.
It is not necessary to follow this up with a confirmation of the fax by mail.
The Office will acknowledge receipt of a fax only in the cases expressly specified by the CTMIR, namely when a CTM application is filed. However, if the communication is incomplete or illegible, or the Office has reasonable doubts as to the accuracy of the transmission, it will advise the sender and invite it to retransmit the communication by fax or to submit a signed original of the document in question to the Office by post, personal delivery or any other means within a specified deadline. If the retransmission is complete, the date of receipt will be c onsidered to be the date of the first transmission, except for the purposes of establishing a filing date for a CTM application. Otherwise, the Office will not take the transmission into account or will 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 the filing date, see the Guidelines, Part B, Examination, Section 2, Formalities.
Where a document in colour is to be transmitted, the document can be sent by fax and the coloured original 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 the Office receives the fax, including for the purposes of obtaining a filing date for a CTM application. The time of receipt is the local time in Alicante (Spain) at which the Office received the fax.
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3.1.2 By electronic means
In accordance with Rule 82 CTMIR, if a CTM application is filed using e-filing, or a communication is sent to the Office by any electronic means, the indication of the name of the sender is deemed to be equivalent to the signature.
The Decision of the President of the Office is decisive in determining whether, to what extent and under what technical conditions, communications may be sent to the Office by electronic means. Particular reference is made to Decision No EX-13-2, according to which the time of receipt of requests, communications or documents submitted electronically via the official OHIM website is the local time in Alicante (Spain) when such receipt was validated.
Where an electronic communication is incomplete or illegible, or the Office has reasonable doubts as to the accuracy of the transmission, Rule 80(2) CTMIR applies mutatis mutandis.
3.1.3 By post, courier service or personal delivery
Documents sent by post, courier service or personal delivery should be addressed to the Office at the address indicated in the explanatory notes accompanying the forms provided by the Office.
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 do so within a specific deadline. If the document is not signed within that time, the application or request will be declared inadmissible, or the document will not be taken into account, as the case may be.
The date of receipt is the date on which the Office receives the communication. The time of receipt is the local time in Alicante (Spain).
For further information on copies of the documents submitted, see the Guidelines, Part C, Opposition, Section 1, Procedural matters, 4.2 Substantiation.
3.2 Notification by the Office
Rules 55, 61-69 CTMIR Decision No EX-97-1 of the President of the Office Decision No EX-05-6 of the President of the Office Decision No EX-13-2 of the President of the Office
Written communications from the Office to the party or parties to proceedings will be ‘notified’. A document is considered to be notified when it has been received or is deemed to have been received by the addressee, irrespective of whether the addressee has been advised of this. Consequently, the date of notification of a document is the date on which that document is made accessible to or has reached the addressee and not the date on which it was sent or the date on which the person to whom it was addressed actually learned of the notification. However, exactly when receipt is deemed to take place will depend on the method of notification.
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The Office can freely choose the most appropriate means of notification (Rule 61(3) CTMIR), apart from public notification, although some means of notification require the party’s prior consent.
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 notification procedure has been followed, the document is deemed to have been notified unless the recipient can prove that it either did not receive the document at all, or received it late. If this is proved, the Office will re-notify the document(s) (judgment of 13/01/2011, T-28/09, ‘Pine Tree, para. 32). Conversely, where the proper notification procedure was not followed, the document will still be considered notified if the Office can prove that the document actually reached the recipient.
Any communication or notification from the Office shall indicate the department or division of the Office and the name(s) of the official(s) responsible. These documents have to be signed by the official(s) or, if not, bear the Office’s printed or stamped seal. For documents transmitted by telecopier, additional information is provided under paragraph 3.2.1 below.
3.2.1 Notification by telecopier
The Office may use notification by telecopier if the party has indicated a fax number, the exception being notifications that include colour elements.
Notification will be dee med to have taken place on the date on which the recipient’s telecopier receives it. The Office keeps fax logs so that it can prove the transmission time and content. In the absence of any evidence to the contrary or information that casts doubt on the correct transmission of the notification, the date of receipt of a fax may be es tablished by the Office transmission report (judgment of 13/01/2011, T-28/09, ‘Pine Tree’, para. 32).
Where documents are transmitted by telecopier, according to Decision No EX-97-1 of the President of the Office, the name of the department or division stated in the letterhead, together with the name of the official(s) indicated at the end of the document, is considered sufficient identification.
3.2.2 Notification by post
The procedure for notification by post will depend on the nature of the document notified.
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 deadline for appeal, summonses and other documents as determined by the President of the Office will be notified by registered post with recorded delivery.
Where the recipient’s address is not in the EU or the addressee has not appointed a professional representative, or for any other document to be notified, the Office will send the document by post.
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Notification will be deemed to have taken place 10 days after the document was posted. The recipient can only rebut this presumption by proving that it did not receive the document or that it received it later. Indications giving rise to reasonable doubt about correct receipt are considered to be s ufficient proof (judgment of 25/10/2012, T-191/11, ‘Miura’, para. 34). In the event of a dispute, the Office must establish that the notification reached its destination or establish the date on which it was delivered to the addressee.
Notification by registered letter will be deemed to have been effected even if the addressee refuses to accept the letter.
3.2.3 Notification by deposit in a post box at the Office
The Office may notify addressees who maintain a post box at the Office by depositing the notified document therein. The date of deposit will be recorded by the Office.
Notification will be deemed to take place five days after the document has been deposited.
3.2.4 Notification by hand delivery
The Office may also notify the addressee by delivering the document by hand if the addressee is present at the Office in person, but this method of notification is an exception. A copy of the document showing a signed and dated acknowledgement of receipt by the addressee will be kept in the file.
3.2.5 Notification via 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 via the Office’s official website if the holder of an electronic account with the Office has accepted this means of notification. In this case, notification consists of placing the electronic document in the holder’s inbox. This date will be indicated in the holder’s inbox and will be recorded by the Office (decision of 17/01/2011, R 0956/2010-4 – ‘DURAMAXX/DURAMAX’).
The document is deemed to have been notified five days after being placed in the holder’s inbox irrespective of whether the recipient actually opened and read it (Article 4(4) of the Decision of the President EX-13-2).
3.2.6 Notification by public notification
Public notification will be us ed for all notifications where the addressee’s address is unknown or where a notification by post has been returned to the Office after at least one failed attempt.
This relates primarily to post returned to the Office by the Post Office marked ‘not known at this address’ and post that has not been claimed by the addressee.
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Public notifications will be published on t he Office’s website. The doc ument will be deemed to have been notified one month after the day on which it was posted on the internet.
3.3 Addressees
Rules 67 and 77 CTMIR Articles 92 and 93 CTMR
If a p rofessional representative has been dul y appointed, the Office will send all notifications to the representative (judgments of 12/07/2012, T-279/09, ‘100% Capri’, and of 25/04/2012, T-326/11, ‘BrainLAB’). ‘Duly appointed’ means that the representative is entitled to act as such and has been properly appointed, and that no general obstacle exists to preclude representation by that person, such as illicit representation of both parties in an inter partes proceeding. Filing an authorisation is not required in order to receive Office 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 person represented. Similarly, any communication addressed to the Office by a representative will be considered to have originated from the person it represents.
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 specified by the Office, which are therefore not mandatory and c an be extended under certain circumstances.
4.1 Time limits specified by the Office
Time limits are an essential 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.
The Regulations foresee three measures that mitigate the rigorous application of the principle of strict observance of time limits (deadlines), depending on whether they are still running or have expired.
If the time limit is still running, the party may request an extension of the time limit pursuant to Rule 71(1) CTMIR.
If the time limit has expired, the party who has missed it still has two possible courses of action: it can either seek continuation of proceedings (pursuant to Article 82 CTMR),
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which only requires meeting certain formal requirements, or it can 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.
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
Where the Office sets a time limit in a notification, 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 same day as the day on which the ‘relevant event’ occurred.
For example, 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, a holiday or a 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 specified in a notification on 31 July will therefore expire on 30 September. Similarly, a two-month time limit set in a notification on 30 June will expire on 31 August.
Any time limit will be d eemed to expire at midnight on t he final day (local time in Alicante (Spain)).
A time limit that expires on a day on which 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 (Saturdays, Sundays and publ ic holidays) will be extended to the first working day thereafter. For this purpose, the President of the Office determines the days on w hich the Office is closed before the start of each calendar year. 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 to the postal service in Spain or to the Office’s connection to authorised electronic means of communication, any time limit that
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expires during that period will be extended to the first working day after the period of interruption. These periods will be determined by the President of the Office; the extension will apply to all parties to the proceedings.
In the event of an exceptional occurrence (strike, natural disaster, etc.) causing a disruption to the running of the Office or a serious impediment to its communication with the outside world, time limits may be extended for a period determined by the President of the Office.
4.1.3 Extension of time limits
An extension of the time limits may be granted if the party concerned makes the request before the original time limit expires.
In ex parte proceedings before the Office, if a request is made for an extension before the time limit expires, then a further period should be allowed, depending on the circumstances of the case, but not exceeding six months.
For the rules applicable to the extension of time limits in inter partes proceedings (i.e. where 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 for either in the Regulations or in the specific paragraphs in this Guideline, as a general rule any initial request for an extension that is received in time will always be granted, irrespective of the explanation given by the party requesting it. However, any subsequent request for an extension of the same time limit will be r efused unless the party requesting it can explain and j ustify the ‘exceptional circumstances’ that (a) prevented it from carrying out the required action during the previous two periods (i.e. the original time limit plus the first extension) and (b) still prevent the requester from carrying it out, so that more time is needed.
Examples of justifications that can be accepted:
• ‘Evidence is being gathered from distribution channels/all our licensees/our suppliers in several Member States. 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), we have only recently been able to contact the rest’.
• ‘In order to show that the mark has acquired distinctiveness through use we started carrying out market research at the beginning of the period (on date X). However, the fieldwork has only recently been concluded (as shown in the enclosed documents); consequently, we need a s econd extension in order 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.
• 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.
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Where a request is filed for an extension to an extendible time limit before this time limit expires and is not accepted, the party concerned will be gr anted at least one day to meet the deadline, even if the request for an extension arrives on the last day of the time limit.
4.1.4 Continuation of proceedings
Article 82 CTMR Communication No 06/05 of the President of the Office
The expressions ‘further processing’ and ‘continuation of proceedings’ have the same meaning.
Article 82 CTMR provides for the continuation of proceedings where time limits have been missed but excludes various time limits laid down in certain articles of the CTMR and CTMIR. Communication No 06/05 of the President of the Office of 16/09/2005 on restoration into missed time limits indicates that, with a few exceptions, most of these exclusions are self-explanatory.
The excluded time limits are the following:
• Those laid down in Article 81 CTMR, avoiding double relief for the same time limits;
• Those referred to in Article 112 CTMR, i.e. the three-month period within which conversion must be requested and the conversion fee paid;
• The opposition period and the time limit for paying the opposition fee laid down in Article 41 CTMR;
Those laid down in Article 42 CTMR, i.e. the time limits set by the Office for the parties to submit observations within the opposition procedure. This covers the time limits for the opponent to substantiate its 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 and 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’).
Pursuant to Rule 50(1), 2nd sentence CTMIR, these (or the corresponding) time limits shall not be applicable 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;
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○ the time limit under Rule 22(1) CTMIR for the applicant to request that the opponent prove 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.
• Those laid down in Article 25(3), Article 27, Articles 29(1), 33(1), 36(2) and 47(3), Articles 60 and 62, Article 65(5) and Article 82, and the time limits laid down by the CTMIR for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34.
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, for which a fee is charged 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, in spite of all due care required by the circumstances having been taken, it was unable to meet a time limit vis-à-vis the Office, provided that the failure to meet 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
3 General Principles of EU Law................................................................... 4
4 Means of Taking Evidence........................................................................ 5 4.1 Written evidence......................................................................................... 6 4.2 Oral evidence.............................................................................................. 6 4.3 Specific means of evidence....................................................................... 6
4.3.1 Commissioning of experts by the Office......................................................... 6 4.3.2 Affidavits ......................................................................................................... 7 4.3.3 Inspections...................................................................................................... 8
4.4 Costs of taking evidence ........................................................................... 8
5 Oral Proceedings....................................................................................... 8 5.1 Opening of oral proceedings..................................................................... 8 5.2 Course of the oral proceedings................................................................. 9 5.3 Minutes of evidence and of oral proceedings ........................................ 10
6 Decisions.................................................................................................. 10 6.1 Contents.................................................................................................... 10 6.2 Apportionment of costs ........................................................................... 10
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Articles 75-78 and 85 CTMR
1 Adequate Reasoning
Office decisions shall be in writing and shall state the reasons on which they are based. The reason for this is twofold: to explain to interested parties why the measure was taken so that they can protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgments of 12/07/2012, T-389/11, ‘Guddy’, para. 16 and of 22/05/2012, T-585/10, ‘Penteo’, para. 37, as well as the case-law cited).
However, if the Office does not respond to all the arguments raised by the parties, this does not infringe the duty to state reasons.
It is sufficient that it sets out the facts and the legal considerations of fundamental importance in the context of the decision (see, among others, judgments of 18/01/2013, T-137/12, ‘Vibrator’, paras 41 and 42; of 20/02/2013, T-378/11, ‘Medinet’ ‘, para. 17; of 03/07/2013, T-236/12, ‘Neo’, paras 57 and 58; of 16/05/2012, T-580/10, ‘Kindertraum’, para. 28; or judgment of 10/10/2012, T-569/10, ‘Bimbo Doughnuts’, paras 42-46, confirmed by judgment of 08/05/2014, C-591/12 P).
2 The Right to Be Heard
In accordance with the general principle of the right of defence, a person whose interests are affected by a dec ision taken by a public authority must be given the opportunity to express their point of view. Therefore, 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.
Decisions will only be based on reasons or evidence on which the parties have had an opportunity to present their comments. The right of defence therefore requires a communication to be received (judgment of 25/10/2012, T-191/11, ‘Miura’, para. 25).
The right to be heard covers all the matters of fact or law, together with the evidence that forms the basis for the decision. However, the right to be heard does not apply to the final position that is going to be adopted. Therefore, the Office is not bound to inform the parties of its legal opinion before issuing a decision and to afford them the opportunity to submit their observations on that position, or even to submit additional evidence (see, among others, judgments of 14/06/2012, T-293/10, ‘Colour per se’, para. 46 in fine; of 08/03/2012, T-298/10, ‘Biodanza’, para. 101; and judgment of 20/03/2013, T-277/12, ‘Caffè Kimbo’, paras 45 and 46).
The Office will examine the facts in proceedings before it on its own initiative, although in proceedings relating to relative grounds for refusal it will restrict this examination to the facts, evidence and arguments provided by the parties (this also applies to cancellation proceedings).
This restriction does not prevent the Office from taking into consideration, in addition to the facts expressly put forward by the parties, facts that are well known, that is, those that are likely to be known by anyone or that may be learnt from generally accessible sources or those arising from practical experience generally acquired from marketing general consumer goods that are likely to be known by anyone and are in particular
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known by the consumers of those goods. Therefore, the Office can use facts that are a matter of common knowledge as a basis for its reasoning.
The Office is not required to prove the accuracy of these well-known facts and, therefore, it is not obliged to give examples of such practical experience; it is up to the party concerned to submit evidence to refute it (see, among others, judgment of 20/03/2013, T-277/12, ‘Caffè Kimbo’, para. 46; judgment of 11/07/2013, T-208/12, ‘Rote Schnürsenkelenden’, para. 24; judgment of 21/02/2013, T-427/11, ‘Bioderma’, paras 19-22; judgment of 08/02/2013, T-33/12, ‘Medigym’, paras 20 and 25; judgment of 07/12/2012, T-42/09, ‘Quadratum’, para. 73; and judgment of 19/09/2012, T-231/11, ‘Stoffmuster’, para. 51).
However, in ex parte proceedings when the Office, on its own initiative, assembles facts that are not well known and that are intended to serve as the basis for its decision, it is under an obligation to notify the party of those facts in order that the party may submit its views thereon.
If documents are filed or allegations are made after a deadline set by the Office has expired, these will in principle be considered to be late and the document will not be taken into account. For more details, see the Guidelines, Part C, Opposition, Section 1, Procedural matters, 4.5.1 Additional evidence for proof of use and the Guidelines, Part C, Opposition, Section 6, Proof of use, 3.3.1 Time limit for providing proof of use.
However, the Office will take legal issues into account, irrespective of whether or not they have been pleaded by the parties.
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 Office must respect the general principles of EU law, such as equal treatment and sound administration (see, among others, judgment of 24/01/2012, T-260/08, ‘Visual Map’; judgment of 23/01/2014, T-68/13, ‘Care to care’, para. 51; and judgment of 10/03/2011, C-51/10 P, ‘1000’, para. 73).
For reasons of legal certainty and of sound administration, there must be a stringent and full examination of all trade mark applications in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case.
The lawfulness of the Office’s decisions must be assessed solely on the basis of Community regulations, as interpreted by the European Union judicature. Accordingly, OHIM is not bound either by its previous decision-making practice or by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. This is the case even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (judgment of 16/05/2013, T-356/11, ‘Equipment’, para. 7).
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However, in the light of the principles of equal treatment and sound administration, OHIM will take into account the decisions already taken in respect of similar applications and must carefully consider whether it should decide in the same way or not (judgment of 10/03/2011, C-51/10, ‘1000’, paras 74-75; judgment of 27/02/2014, T-225/12, ‘LIDL express’, para 56; judgment of 23/01/2014, T-68/13, ‘Care to care’, para. 51; and judgment of 12/12/2013, T-156/12, ‘Oval’, para. 28). Moreover, the principle of equal treatment and sound administration must be applied in a manner that is consistent with the principle of legality, according to which a person may not rely, in support of its claim, on an unlawful act committed in another procedure (judgment of 23/01/2014, T-68/13, ‘Care to care’, para. 51; judgment of 12/12/2013, T-156/12, ‘Oval’, para. 29; judgment of 02/05/2012, T-435/11, ‘UniversalPHOLED’, para. 38; and judgment of 10/03/2011, C-51/10, ‘1000’, paras 76-77).
4 Means of Taking Evidence
Articles 77 and 78 CTMR Rules 56-60 CTMIR Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003
In any proceedings before the Office, evidence may be t aken. The means for taking evidence are listed in Article 78 CTMR and Rule 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 • sworn or affirmed statements in writing or statements having a s imilar effect
under the law of the State in which they are drawn up • inspection.
Some of these means, such as requests for information, statements in writing and, in particular, the submission of documents and items of evidence, will be used more frequently than others. Hearing the parties, witnesses or experts, and inspections are used only exceptionally.
The Office will decide which of these means to use but will use them only when necessary for examining the file.
If the Office refuses a request to take evidence, an appeal can only be made together with the appeal against the final decision.
The procedure followed by the Office varies depending on the means of taking evidence proposed.
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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.
The Office will therefore 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 that have been sworn or affirmed or have a similar effect thereto under the law of the State in which they are drawn up, but also opinions by experts, which may consist solely of a written report.
The Regulation makes no provision for any special procedure or formality. Therefore, the Office’s general rules of procedure apply.
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 set the other parties a time limit of, in principle, two months to reply.
The Office will base its decision only on r easons on w hich both sides have had an opportunity to submit observations.
For further information on Oral Proceedings, see paragraph 5 below.
4.2 Oral evidence
This refers to evidence taken in oral proceedings, such as hearing the oral evidence of parties, witnesses or experts.
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 the cost, which will have to be borne by the unsuccessful party in inter partes proceedings, or in some cases by both parties.
If the Office invites one of the parties to give evidence orally, it will advise the other parties accordingly so that they can attend.
Similarly, when the Office summons an expert or a witness to a hearing, it will advise the parties concerned. These may be present and put questions to the person giving evidence.
4.3 Specific means of evidence
4.3.1 Commissioning of experts by the Office
Opinions by experts will be used only as a last resort because they involve substantial costs and protract the proceedings.
It is up to the Office to decide whether or not to commission an expert’s opinion and who to appoint as expert. However, the Office does not maintain a list of experts because it uses experts as a means of taking evidence only by way of exception.
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The terms of reference of the expert include:
• a precise description of their task • the deadline for submitting their report • the names of the parties to the proceedings • details of any costs to be reimbursed by the Office.
On receipt of the expert’s report, the Office will forward copies 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 at the Office’s discretion.
The parties can object to an expert on the grounds of incompetence or a conflict of interest, or because the expert was previously involved in the dispute or is suspected of partiality. No refusal may be bas ed on the appointed expert’s nationality. If a party objects to the expert, the Office will rule on t he objection. The grounds that may be cited for objecting to an expert are the same as those for objecting to an examiner or Board of Appeal member pursuant to Article 137 CTMR.
4.3.2 Affidavits
Sworn or affirmed statements in writing or statements having a similar effect under the law of the State in which the statement is drawn up are equally admissible as evidence, if provided by a party.
In order for a statement to be considered sworn or affirmed, it must be understood by the parties that making a false statement would be considered a criminal offence under the law of the Member State in which the document was drawn up. Where that is not the case, the document will be considered simply as any other written document or statement (judgment of 28/03/2012, T-214/08, ‘Outburst’, para. 32 and the case-law cited therein).
The evidential value of an affidavit is relative (judgment of 28/03/2012, T-214/08, ‘OUTBURST’, para. 33). In assessing the evidential value of such a document, the Office will consider first and foremost the credibility of the account it contains. It will then take account, in particular, of the person who produced the document, the circumstances in which it came about, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (judgment of 07/06/2005, T-303/03, ‘Salvita’ para. 42 and t he case-law cited therein). Affidavits containing detailed and concrete information and/or that are supported by other evidence have a hi gher probative value than very general and abstractly drafted statements.
The mere fact that affidavits from third parties are made according to a predetermined draft provided by the interested party (parties) does not in itself affect their reliability and credibility, and does not call into question their probative value since the veracity of their contents is certified by the signatory (judgment of 16/09/2013, T-200/10, ‘Avery Dennison’, para. 73).
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4.3.3 Inspections
Only in very exceptional circumstances will the Office carry out an inspection in situ. If it does decide to carry out an inspection, it will, as with any other Office decision, state the means by which it intends to obtain evidence (in the present case, an inspection), the facts it wishes to prove, the date, and the time and place of the inspection.
The date fixed for the inspection must allow the party concerned sufficient time to prepare for it. If the inspection cannot take place for any reason, the proceedings will continue based on the evidence on file.
4.4 Costs of taking evidence
The Office may make the taking of evidence conditional upon a depos it by the party requesting it. The amount will be fixed by the Office based on 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, including an advance. They will also be entitled to compensation for loss of earnings and payment for their work.
The amounts reimbursed and the advances for expenses are determined by the President of the Office and are published in the Office’s Official Journal. For details, see Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003.
Where the Office decides to adopt means of taking evidence that require oral evidence from witnesses or experts, the Office will bear the cost of this. However, where one of the parties has requested oral evidence, then that party will bear the cost, subject to a decision on the apportionment of costs in inter partes proceedings.
5 Oral Proceedings
Articles 77 and 78 CTMR Rules 56-60
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 on its own initiative or at the request of any party to the proceedings only when it considers these to be absolutely necessary. This will be at the Office’s discretion (judgment of 20/02/2013, T-378/11, ‘Medinet’, para. 72 and the case-law cited therein). In the vast majority of cases it will be sufficient for the parties to present their observations in writing.
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.
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Since the purpose of any oral proceedings is to clarify all outstanding points before the final decision is taken, the Office, in its summons, should draw the parties’ attention to the points that need to be discussed in order for the decision to be taken.
Where the Office considers it necessary to hear oral evidence from the parties, witnesses or experts, it will take a decision stating the means by which it intends to obtain evidence, the relevant facts to be proven and the date, time and place of the hearing. The period of notice will be at least one month, unless the parties concerned agree to a shorter period. The summons will provide a summary of this decision and state the names of the parties to the proceedings and details of the costs, if any, that the witnesses or experts may be entitled to have reimbursed by the Office.
If required, and in order to facilitate the hearing, the Office may invite the parties to submit written observations or to submit evidence prior to the oral hearing. The period fixed by the Office for receiving these observations must allow sufficient time for them to reach the Office and then be forwarded to the other parties.
The parties may likewise submit evidence in support of their arguments on their own initiative. However, if this evidence ought to have been produced at an earlier stage of the proceedings, the Office will decide whether these items of evidence are admissible, taking account of 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 maintaining the Register will not be public.
Oral proceedings, including the delivery of the decision, will be public before the Cancellation Division and the Boards of Appeal, in so far as the department before which the proceedings are taking place does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings.
If a party who has been duly summoned to oral proceedings does not appear before the Office, the proceedings may continue without them.
If the Office invites a party to give evidence orally, it will advise the other parties accordingly so that they can attend.
Similarly, when the Office summons an expert or a witness to a hearing, it will advise the parties concerned. These may be present and put questions to the person giving evidence.
At the end of the oral proceedings the Office should allow the parties to present their final pleadings.
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5.3 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 s ubmitted for approval. However, any statements by 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).
6 Decisions
6.1 Contents
Article 75 CTMR Rule 55 CTMIR
Office decisions 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 points raised by the parties. In particular, if there are different outcomes for some goods and services of the CTM application or registration concerned, 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, there will also be a notice advising of the right to appeal.
Failure to include this notice does not affect the legality of the decision and does not affect the deadline for filing an appeal.
6.2 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. The Office will not reimburse any fees paid (the exceptions are Rule 51 CTMIR, refund of the appeal fee in certain cases, and Article 82(5) CTMR, refund of the fee for further processing if further processing is not granted).
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 CJEU). ‘Costs’ comprise the costs incurred by the parties to the proceedings, chiefly (i) representation costs (although the thresholds are relatively low) and costs for taking part in oral hearings; ‘representation costs’ means the costs for professional
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representatives within the meaning of Article 93 CTMR, not for employees (even from another company with economic links); (ii) 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. It does not involve the relationship with the Office (fees paid, the Office’s internal costs).
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 that are essential to the proceedings. If both parties fail on one or more heads or if reasons of equity so dictate, the Office may determine a di fferent apportionment of costs.
The decision will fix the costs to be paid by the losing party/parties. No proof that these costs were actually incurred is needed for this purpose. This part of the decision is a title that can be executed in simplified proceedings, in all Member States of the EU.
If the contested CTM application or CTM is withdrawn or surrendered, or the opposition or request for cancellation is withdrawn, the Office will not decide on the substance of the case, although it will normally take a decision on costs. The party terminating the proceedings will bear the fees and costs incurred by the other party. Where 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 hypothetical assumptions about who might have won the proceedings if a decision on substance had been taken. Furthermore, within one month of the date of notification fixing the amount of the costs, the party concerned may request a review. This request must state the reasons on which 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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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).
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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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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 .................................................................................................... 5 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....................................................................................................8
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.)
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• 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).
• 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 and can be appealed under Article 58(2) CTMR.
1.3 Procedural aspects
Article 80 CTMR
Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors
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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.
(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
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more than one party is affected: the new owner, the old owner and the third party that should have been entered in the Register.
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 that will be understood as a request for revocation/cancellation, 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 dec ision, 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.
Error notified by one of the parties
If the party adversely affected by the error informs the Office in writing of an error that will be under stood as a request for revocation/cancellation, it must be determined
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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 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
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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.
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.
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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 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.
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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 Rule 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
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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 certain 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.
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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 The condition of ‘all due care required by the circumstances’ ...............3 2.2 Loss of rights or means of redress caused directly by failure to meet
the time limit ...............................................................................................5
3 Procedural aspects ................................................................................... 5 3.1 Proceedings to which restitutio applies ...................................................5 3.2 Parties .........................................................................................................6 3.3 Time limit for national offices to forward an application to the Office ...6 3.4 Time limits excluded from restitutio in integrum .....................................6 3.5 Effect of restitutio in integrum...................................................................7 3.6 Time limit ....................................................................................................7 3.7 Fee...............................................................................................................8 3.8 Languages ..................................................................................................8 3.9 Particulars and Evidence ...........................................................................8 3.10 Competence................................................................................................9 3.11 Publications................................................................................................9 3.12 Decision, role of other parties in restitutio proceedings .........................9
4 Third-Party Proceedings......................................................................... 10
Restitutio in Integrum
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1 General Principles
Article 81 CTMR Article 67 CDR
Parties to proceedings before the Office may have their rights reinstated (restitutio in integrum) if they were unable to meet a time limit vis-à-vis the Office, despite taking all due care as required by the circumstances, provided that the failure to meet the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing a loss of rights or loss of means of redress (judgment of 28/06/2012, T-314/10, ‘Cook’, paras 16 and 17).
Observing time-limits is a matter of public policy and granting restitutio in integrum can undermine legal certainty. Consequently, the conditions for the application of restitutio in integrum have to be interpreted strictly (judgment of 19/09/2012, T-267/11, ‘VR’, para. 35).
Restitutio in integrum is only available upon ap plication to the Office and there is a charge for this.
If the party is represented, the representative’s failure to take all due care is attributable to the party that it represents (judgment of 19/09/2012, T-267/11, ‘VR’, para. 40).
2 Criteria for Granting restitutio
There are two requirements for restitutio in integrum (judgment of 25/04/2012, T-326/11, ‘BrainLAB’, para. 36):
a) that the party has exercised all due care required by the circumstances,
b) and that the non-observance (of a deadl ine) by the party has the direct consequence of causing the loss of any right or means of redress.
2.1 The condition of ‘all due care required by the circumstances’
Rights will be re-established only under exceptional circumstances that cannot be predicted from experience (judgment of 13/05/2009, T-136/08, ‘Aurelia’, para. 26) and which are therefore unforeseeable and involuntary.
a) Examples of where the ‘all due care’ requirement has been fulfilled
In principle, failure to deliver by the postal or delivery service does not involve any lack of due care by the party concerned (decision of 25/06/2012, R 1928/2011-4, ‘Sun Park Holidays’). However, it is up to the parties’ representatives at least to find out in advance from their delivery company what the usual delivery times are (in the case of letters sent from Germany to Spain in decision of 04/05/2011, R 2138/2010-1 – ‘Yellowline’).
The degree of due care that the parties must demonstrate in order to have their rights re-established must be determined in the light of all the relevant circumstances.
Restitutio in Integrum
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Relevant circumstances may include a relevant error made by the Office and its repercussions. Thus, even though the party concerned has failed to take all due care, a relevant error by the Office may result in the granting of restitutio (judgment of 25/04/2012, T-326/11, ‘BrainLAB’, para. 57 and para. 59).
Circumstances such as natural disasters and general strikes are regarded as fulfilling the requirement for all due care.
b) Examples of where the ‘all due care’ requirement has NOT been fulfilled
Errors in the management of files caused by the representative’s employees or by the computerised system itself are foreseeable. Consequently, due c are would require a system for monitoring and detecting any such errors (judgment of 13/05/2009, T-136/08, ‘Aurelia’, para. 18).
‘The exceptional workload and organisational strains to which the applicants claim they were subject as a result of the entry into force of Regulation No 40/94 are irrelevant in that connection’ (judgment of 20/06/2001, T-146/00, ‘DAKOTA’, para. 62.)
An erroneous calculation of the time limit does not constitute an exceptional event that cannot be predicted from experience (decision of 05/07/2013, R 0194/2011-4 – ‘PayEngine’).
An error by the Renewals Department Manager, who monitors staff performance daily, does not constitute an exceptional event (decision of 24/04/2013, R 1728/2012-3, - ‘Part of lifting device’).
The absence of a key member of the Accounts Department cannot be regarded as an exceptional or unforeseeable event (decision of 10/04/2013, R 2071/2012-5 – ‘Starforce’).
A clerical error in entering a deadline cannot be regarded as an exceptional or unforeseeable event (decision of 31/01/2013, R 0265/2012-1 – ‘Kansi’).
A misunderstanding of the applicable law may not, as a matter of principle, be regarded as an ‘obstacle’ to compliance with a time limit (decision of 14/06/2012, R 2235/2011-1 – ‘KA’).
Delay by the owner in providing instructions is not an exceptional event (decision of 15/04/2011, R 1439/2010-4 – ‘Substral Nutri + Max’).
Financial problems at the proprietor’s business, its closure and the loss of jobs cannot be accepted as a reason for the proprietor not to be able to observe the time-limit to renew its Community trade mark (decision of 31/03/2013, R 1397/2010-1 – ‘Captain’).
Legal errors by a professional representative do not warrant restitutio (decision of 16/11/2010, R 1498/2010-4 – ‘Regine’s’). The deletion of a deadline by an assistant is not unforeseeable (decision of 28/06/2010, R 0268/2010-2 – ‘Orion’).
Restitutio in Integrum
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2.2 Loss of rights or means of redress caused directly by failure to meet the time limit
Article 81(1) CTMR
Failure to meet the time limit must have had the direct consequence of causing the loss of rights or means of redress (judgment of 15/09/2011, T-271/09, ‘Romuald Prinz Sobieski zu Schwarzenberg’, para. 53).
Articles 42(2), 76(2) and 77(1) CTMR Rule 19, and Rules 20(1)-(5) and 40(1)-(3) CTMIR
This is not the case where the Regulations offer procedural options that parties to proceedings are free to use, such as requesting an oral hearing, requesting that the opponent prove 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 time limit by which a party must perform an action.
Article 36(1), (4), and Article 37 CTMR Rule 9(3), (4), Rule 10 and Rule 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 by the time limit specified because in this case there is a direct relationship between failure to meet the time limit and possible refusal.
Restitutio is also available for 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 being filed too late. 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. (In principle, the Office will disregard any statements filed in inter partes proceedings after the deadline has passed.)
3 Procedural aspects
Article 81(2) CTMR Rule 83(1)(h) CTMIR Article 67(2) CDR Article 68(1)(g) CDIR
3.1 Proceedings to which restitutio applies
Restitutio is available in all proceedings before the Office.
This includes proceedings under the CTMR and proceedings concerning registered Community designs under the CDR. The respective provisions do not differ materially.
Restitutio in Integrum
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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 in relation to revision, see the Guidelines, Part A, General Rules, Section 7, Revision.
3.2 Parties
Article 81 CTMR Article 67 CDR
Restitutio is available to any party to proceedings before the Office - not only to the applicant for, or holder or proprietor of, a Community trade mark or the applicant for, 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.
3.3 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 date of filing to the date the Office actually receives the relevant documents.
Furthermore, if the time limit under Article 25(3) CTMR for transmission of a C TM application is not met, rather than considering the CTM application as having been withdrawn, the Office will treat the CTM application as if it had a rrived at the Office direct from the applicant and not via a national Office. As a result, the filing date will be the date OHIM actually receives it.
3.4 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.
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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, which is the six-month time limit for filing an application claiming the priority of a previous trade mark or design application pursuant to Article 29(1) CTMR or Article 41(1) CDR. However, restitutio does apply to the three-month time limit for providing the file number of the previous application and filing a copy of it, as specified 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 67(2), (5) CDR
• The time limits for restitutio itself, namely:
○ a time limit of two months for filing the application for restitutio in integrum as from the removal of the cause of non-compliance
○ a time limit of two months from the date for completing the act that was omitted
○ a time limit of one year for filing the application for restitutio in integrum as from expiry of the missed time limit.
3.5 Effect of restitutio in integrum
Granting restitutio in integrum has the retroactive legal effect that the time limit that was not met will be considered to have been met, and that any loss of rights in the interim will be deem ed never to have occurred. If the Office takes a decision in the interim based on failure to meet the time limit, that decision 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 all the applicant’s rights.
3.6 Time limit
Articles 47(3) and 81(2) CTMR Articles 13(3) and 67(2) CDR
Applicants must apply for restitutio in integrum in writing and send the application to the Office.
The applicant must make the application within two months of the removal of the cause of non-compliance and no later than one year after expiry of the missed time limit.
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Within the same period, the act that was omitted must be completed. The date when the cause of non-compliance is removed is the first date on which the party knew or should have known about the facts that led to the non-observance. If the ground for non-compliance was the absence or illness of the professional representative dealing with the case, the date on which the cause of non-compliance is removed is the date on which the representative returns to work. If the applicant fails 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 the further six-month time limit expires.
3.7 Fee
Article 81(3) CTMR Article 2(19) CTMFR Article 67(3) CDR Annex, point 15 CDFR
The applicant must also pay the fee for restitutio in integrum within the same time limit (see paragraph 3.6). If the applicant does not pay the fee by the expiry of the time limit, the application for restitutio in integrum will be deemed not to have been filed.
3.8 Languages
Article 119 CTMR Rule 95 CTMIR Article 98 CDR Article 80 CDIR
The applicant must submit the application for restitutio in integrum in the language, or in one of the languages, of the proceedings in which the failure to meet 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 Office’s five languages.
3.9 Particulars and Evidence
Articles 78 and 81 CTMR Articles 65 and 67 CDR
In its application for restitutio the applicant must state the grounds on which it is based and set out the facts on which it relies. As granting restitutio is essentially based on facts, it is advisable for the requesting party to adduce evidence by means of sworn or affirmed statements.
Moreover, the act that was omitted must be completed, together with the application for restitutio, at the latest by the time limit for submitting the application for restitutio.
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3.10 Competence
Article 81 CTMR Article 67 CDR
The division or department competent to decide on the act that was omitted (i.e. responsible for the procedure in which failure to meet the deadline occurred) is responsible for dealing with applications for restitutio.
3.11 Publications
Article 81(7) CTMR Rule 30(4), (5), Rule 84(3)(k), (l) and Rule 85(2) CTMIR Article 67 CDR Article 22(4), (5), Article 69(3)(m), (n) and Article 70(2) CDIR
The CTMR and C DR provide for a mention of the re-establishment of rights to be published in the Bulletin. This mention will be published only if the failure to meet the time limit that gave rise to the application for restitutio has actually led to publication of a change of status of the CTM or CD application or registration, because only in such a case would third parties be able to take advantage of the absence of such rights. For example, the Office will publish a mention that restitutio has been granted if it published a mention that registration had expired due to failure to meet the time limit for paying the renewal fee.
In the event of such a publication, a c orresponding entry will also be made in the Register.
No mention of receipt of an application for restitutio will be published.
3.12 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 failure to meet the time limit occurred in inter partes proceedings.
The decision on restitutio will be taken, if possible, in the decision terminating the proceedings. If, for specific reasons, the Office makes an interim decision on the application for restitutio, it will generally not allow a separate appeal. The applicant for restitutio can appeal the refusal of its request for restitutio together with an appeal against the decision terminating the proceedings.
The decision to grant restitutio cannot be appealed.
The other party to inter partes proceedings will be i nformed that restitutio has been requested and about 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 period between the loss of right and 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 that 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:
• on the date of publication, where publication has taken place,
• on the date on which the decision to grant restitutio took effect, where publication has not taken place.
The Regulations do not contain any provisions governing this procedure. The department or unit that took the decision to re-establish the rights is responsible for third-party proceedings. 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.................... 6
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 ................................... 9 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 Recording 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 whether certain filing date requirements of the Community Trade Mark Regulation (CTMR) have been fulfilled. The filing date will only become definitive when the application fee has been paid.
The applicant should carefully check the receipt and notify the Office 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 it notifies the Office on the same date as the incorrect data were submitted. After this date, any amendment is subject to the provisions of the CTMR and CTMIR, in particular, Article 17 CTMR and Article 43 CTMR. For further details, see paragraph 5 below and the Guidelines, Part B, Examination, Section 2, Examination of Formalities.
After the receipt has been issued, the Office carries out a language check of the verbal elements of the mark in all the official languages of the EU, 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 CTM application has been filed. 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 s earches, see paragraph 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 its right to 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 the official languages of the EU.
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 requested), giving the applicant the opportunity to abandon its application, if it so wishes. For further details on publication, see paragraph 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 to give the applicant the option of withdrawing the CTM application before it is published. Surveillance letters inform holders of earlier Community trade marks about new, similar Community 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 to contain similar goods and/or services.
The Community search report is sent to the applicant in a standard letter or electronically. 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 valid if it is made at the time of filing and the relevant fee has been paid.
National search reports are prepared by 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-nothing approach means that the applicant cannot select the particular participating offices that it wishes to carry out the search.
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Holders of international registrations (IR) 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 the World Intellectual Property Organization (WIPO).
The national offices are responsible for the format and content of the national search report. The Office’s role is limited to receiving the national reports and forwarding 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, Collective Marks, Acquired Distinctiveness.
The CTMR is intended to enable proprietors to register a right that is valid throughout the European Union provided 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 to facilitate applications, not obstruct them.
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 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 on 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 has been published are dealt with during 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 Office’s languages: English, French, German, Italian or Spanish.
The Office issues a receipt to the party that submitted the observations (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 to check the status of the relevant CTM application. The Office does not inform the observer of any action taken, or whether or not the observations have given rise to an objection.
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 a restriction of the list of goods and services.
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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 the application is published or when the Office itself finds that a ground for refusal has been overlooked. After the application is published, 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, it must give the grounds for the decision. These must address any arguments raised by the applicant in its observations if they are pertinent. Decisions must not only refer to the appropriate parts of the CTMR and CTMIR but also give explicit reasons, except in the most self-evident cases (for example, where a document is missing or a fee has not been paid).
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 dec ision 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 steps 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 where a case is brought before the General Court (GC) or Court of Justice of the European Union (CJEU) by an action under Article 65.
3.3 International registrations designating the European Union
Details about the examination of a CTM application as a result of the transformation of an international registration designating the European Union are given in the Guidelines, Part M, International Marks.
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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 acceptance conditions.
Applications are published in all the official languages of the EU.
The examiner must ensure that the following details are available, where applicable:
(a) application file number (b) filing date (c) reproduction of the trade mark (d) indication of the 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 and 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 the examiner has checked that all these elements are correct and the Office has received the translation in all the official languages of the EU, the application is dispatched to the Publication Team.
5 Amendments to the CTM Application
This part of the Guidelines only covers issues that are relevant to CTM application amendments.
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), 65(5) and Article 119 CTMR Article 101 and Article 102(2) Rules of Procedure of the General Court (RPGC) Article 51 Rules of Procedure of the Court of Justice (RPCJ)
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, an application can be withdrawn at appeal level within the two-month appeal period, even if no appeal was actually filed or up until the appeal is 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’ and decision of 23/04/2014, R 0451/2014-1 – ‘SUPERLITE’, para. 18).
At the level of the General Court (GC), an application can be withdrawn within the two-month appeal period extended by a per iod of ten days (on account of distance) pursuant to Article 102(2) RPGC. At the level of the Court of Justice of the European Union (CJEU), the prescribed time-limit of two months to bring an action before the CJEU against a decision by the Boards of Appeal shall be extended on account of distance by a single period of 10 days (order of 19/07/2003, T-15/03, ‘BLUE’). The Boards of Appeal decision cannot be considered final within this period. The application can also be w ithdrawn up until completion of the appeal process before the GC.
At CJEU level, an application can be withdrawn within the two-month period for filing an appeal before the CJEU extended by a period of ten days (on account of distance) pursuant to Article 51 RPCJ 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 applicant must ask the Office (not the GC or CJEU) to withdraw it. The Office then informs the GC or CJEU whether or not it finds the withdrawal acceptable and valid, but the withdrawal will not take place until the GC or the CJEU has delivered 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.
There is no charge for a declaration of withdrawal but the declaration must be made in writing. No special form is provided by the Office.
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 the procedure in cases 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 of restrictions see paragraph 5.2 below.
Although Article 43(1) CTMR refers only to withdrawal of a Community trade mark application, the Court has held that oppositions can also be withdrawn in the same way as described above (decision of 07/07/2014, R 1878/2013-1 - ‘HOT CHILLYS’, para. 15).
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5.1.2 Unconditional and binding character of the declaration
A declaration of withdrawal becomes effective upon receipt by the Office, provided that the Office does not receive a withdrawal of the declaration on the same day. This means that if a declaration of withdrawal and a l etter withdrawing that declaration both reach the Office on the same day (regardless of the actual time of receipt), the latter annuls the former.
Once a declaration becomes effective, it cannot be withdrawn.
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 procedural declaration. Such a requirement is simply viewed as a 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 for some goods and/or services (partial withdrawal) on condition that the Office accepts the application for the remaining goods and/or services. Such a declaration is simply viewed as a suggestion to enable the Office to arrive at an acceptable list of goods and services.
Where an applicant responds to an official action by filing a restricted list of goods and services (partial withdrawal), the Office checks 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 has already been published and close the CTM application file in the event of a full withdrawal.
For the consequences of full or partial withdrawal on the opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.
Detailed information on 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, 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.
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Where the case is pending before the General Court (GC) or the Court of Justice (CJEU), the restriction must be filed with the Office (not with the GC or the CJEU). The Office then informs the GC or the CJEU whether or not it finds the restriction acceptable and valid; however, the restriction is not applied until the GC or the CJEU has delivered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘Vortex’).
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 the Office receives it. 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.
If these requirements are not met, the Office must refuse the proposed restriction and the list of goods and services will remain unchanged (decision of 14/10/2013 R 1502/2013-4 - ‘DARSTELLUNG EINES KREISES’, paras 12-16).
5.3 Other amendments
Article 43(2) CTMR Rules 13 and 26 CTMIR
This paragraph and the legal provisions cited above solely concern amendments to the CTM application requested by the applicant on its own initiative and not amendments or restrictions made following an examination, opposition or appeal procedure as a result of a decision by an examiner, Opposition Division or Board of Appeal.
Nor does this paragraph 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 accordance with the language regime (for more information, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities). There is no charge for this.
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 the correction does not substantially change the trade mark (for further details on such amendments, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities);
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• the list of goods and services (see paragraph 5.2 above).
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 address of an applicant or its appointed representative may be amended freely, provided that
• any change in the applicant’s name 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 a legal person’s nationality may also be amended 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 change 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 applicant or its representative must request a change of name and address and this request must contain the CTM application number and the name and address of the applicant or representative, both as recorded on the file and as amended.
No proof or evidence of the change is necessary. There is no charge for change of name or address requests.
The applicant must use a specific format in its application to indicate its name and official address in accordance with the aforementioned legal provisions, and may change it later using the same format. Both the name and address will be registered.
Legal persons can have only one official address. In case of doubt, the Office may ask for evidence of the legal form, the state of incorporation and/or address. The official name and address are taken, by default, as the address for service. Ideally, an applicant should have only one addr ess for service. Changes to the applicant’s official designation or official
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address will be registered for all CTM applications, registered Community trade marks and Registered Community Designs and, unlike the address for service, cannot be recorded only for specific portfolios of rights. In principle, these rules also apply, by analogy, to representatives.
5.3.2 Other elements of an application
Other elements of a CTM application may also be changed, such as the representation, type of mark, description of the mark and 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, Examination of Formalities.
5.3.3 Recording 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 may open 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 a 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 initiative. 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, there is a charge for a request for the division of a CTM application, and the CTM application remains in the hands of the same applicant. If the fee is not paid, the request is deemed not to have
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been filed. The request can be made in the first or second language indicated by the applicant in its CTM application.
Division is not available 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 will be created, the list of goods and services 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 Office will notify the applicant of any deficiency in this regard and give it two months to remedy the deficiency. If it is not remedied within this time, 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 s ervices may be hived 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 hiving off some or all of the contested goods to form a new application causing the opposition proceedings to be split. If such a request for division is made, the applicant is given the opportunity to amend it by hiving 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 division during this time would counteract the aim of not splitting an opposition 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 issued either. This does not necessarily coincide with the first month following filing. For further details on the filing date, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities.
For all practical purposes, in the period following publication of the application, 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 applicant to register its mark for the non-contested goods quickly, without having to wait for the outcome of a lengthy opposition procedure.
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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 and 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 also deemed to have been made or paid for the divisional application. However, fees duly paid for the original application are not refunded.
The practical effects of this provision are as follows:
• Where an appl ication for the registration of a l icence 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 of 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 filed because no fee 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, on payment of 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 the correspondence relating to the declaration of division and all future correspondence for the new application. Inspection of this file will be unrestricted under the general rules.
If the declaration of division concerns a CTM application that has not yet been published, both the divisional and t he original application are published separately and i n the normal way, without any express reference to each other.
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If the declaration of division concerns a CTM application that has already been 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 started 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
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 examined 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 all 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 accepted by the office concerned. 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 precision 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
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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preparations, in particular analgesics means that the application covers any kind of pharmaceuticals, with analgesics being an example.
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.
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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.
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 textile machinery; 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 used in the field of textile machinery and agricultural machines.
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 terms should be separated by commas.
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];
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Acronyms can be accepted in a list of goods or services as long as they are comprehensible and appropriate to the class applied for.
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
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be produced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.
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
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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 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 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 t hus 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™ (non-stick 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 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
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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(1) and (2) CTMR allows for the amendment of an application. 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.
Since an amendment cannot extend the list of goods and services, it must be in the nature of a r estriction 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 should respect certain criteria:
1. The applicant cannot exclude goods and services that are not covered in the application and/or not covered by the relevant class.
For example the following would not be acceptable:
Class 32: Syrups (original application) to syrups with the exception of fruit juices.
Class 3: Cosmetics with the exception of disinfecting substances (Class 5).
2. The restriction must be comprehensible and give a sufficiently clear and precise (see also paragraph 4.2) indication of the goods or services to be excluded in the list or a s ufficiently clear and p recise indication of those goods and services which remain after the restriction.
For example the following would not be acceptable:
Class 16: Typewriters, only related to financial services.
3. The restriction must not contain references to trade marks.
For example the following would not be acceptable:
Class 9: Apparatus for the reproduction of sound, namely iPods.
4. The restriction must not contain a territorial limitation which contradicts the unitary nature of the CTM.
For example the following would not be acceptable:
Class 7: Washing machines, only for sale in France.
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 s ervices 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.
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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...............................................................................................24 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...............................................................................................31 Protective clothing....................................................................................................32 Rental services .........................................................................................................32 Retail and wholesale services .................................................................................33 Satellite tracking .......................................................................................................35 Sets............................................................................................................................35 Social networking services......................................................................................35 Software publishing..................................................................................................35 Solar power ...............................................................................................................35 Storage services .......................................................................................................36 Supply of ... ...............................................................................................................36 Systems.....................................................................................................................36 Tickets (for travel, entertainment etc.) ....................................................................36 Video games .............................................................................................................37 Virtual environment ..................................................................................................37
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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 provision of a network of fibre optic cables; the provision of broadcasts or
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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.
Class 41: Charitable services, namely education and training.
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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) • Hand held computer game devices • Video game machines.
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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 purpose 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.
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
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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 were 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.
Electricity and energy
The following is a guide to some of the goods and services which surround electricity.
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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 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.
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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 9) 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 Location of mobile telephones via satellite signals Providing access to GPS navigation services via satellite transmission Satellite transmission of navigation data.
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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.
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,
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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).
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.
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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:
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.
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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 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.
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
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the Office (see also paragraph 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 in 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 (retail services). The same principle applies to leasing services which are found on TMclass in all of the service classes.
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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 or services to be sold or brought together for the benefit of others, is indicated with sufficient clarity and precision (see paragraph 4.1). 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 do not fulfil the requirements of clarity and precision:
• Merchandising articles • Fair-trade goods • Lifestyle accessories • Gift articles • Souvenirs • Collectors’ articles • Housewares.
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.
As regards ‘retail of services’, (i.e. services which consist of bringing together, for the benefit of others, of a variety of services, enabling consumers to conveniently compare and purchase those services), the Court has held that these must also be formulated with sufficient clarity and precision so as to allow the competent authorities and other economic operators to know which services the applicant intends to bring together (see judgment of 10/07/2014, C-420/13 ‘Netto Marken-Discount’).
This decision confirms that the ‘bringing together of services’ is an activity that is entitled to protection. The Court placed greater emphasis on the importance of defining the services being brought together, than on defining the action of ‘bringing together’ itself (thereby echoing its earlier judgment of 07/07/2005, C-418/02, ‘Praktiker).
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Terms expressing this should satisfy two requirements, firstly, using the familiar terms ‘bringing together, for the benefit of others... enabling customers to compare and purchase...’ in order to ‘frame’ the services being brought together and describe the actual retail activity itself, and secondly, in describing the services which are being brought together, employing terms which are understood and acceptable in their own right (e.g. legal services, broadcasting services, slimming club services etc.). In order to meet the fundamental requirements for clarity and pr ecision as confirmed by IP Translator, any claim to the retailing or ‘bringing together’ of services must be worded in this manner.
The following are example specifications which will now be deemed acceptable:
The bringing together, for the benefit of others, of a variety of legal services, enabling customers to conveniently compare and purchase those services.
The bringing together, for the benefit of others, of slimming club services, video- on-demand services, and detective agency services, enabling customers to conveniently compare and purchase those services.
The bringing together, for the benefit of others, of a variety of broadcasting services, enabling customers to conveniently compare and purchase those services.
In the case of the bringing together of services, wordings including ‘retail services connected with...’, ‘retail services connected with the sale of...’ and ‘electronic shopping retail services connected with...’ do not provide a clear distinction between the retailing of services and the provision of those services in their own right.
The following examples will therefore not be accepted and w ill be s ubject to an objection:
Retail services connected with takeaway services.
Retail services connected with the sale of legal services.
Mail order retail services connected with the sale of detective agency services.
The CJEU’s ruling is not to be interpreted as providing a means for obtaining duplicative protection of services intended to be provided in their own right (whether proper to Class 35 or elsewhere). Nor should it be perceived as an alternative means for providing protection for the advertising of one’s own services. Thus, if an application covers ‘the bringing together for the benefit of others of telecommunication services enabling customers to conveniently compare and purchase those services’, these services do not cover the actual provision of telecommunication services (which belongs to Class 38), but only the bringing together of a variety of telecommunication service providers enabling consumers to conveniently compare and purchase those services.
Finally, the specification of the goods or services 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 or services which follow. Consequently, the abovementioned terms should be replaced by ‘namely or being’ as it will restrict the goods or services which follow those terms.
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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.
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.
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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.
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.
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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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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
2.7 Public policy or morality, Article 7(1)(f) CTMR .........................................4 2.7.1 ‘Public policy’ .................................................................................................. 4
2.7.1.1 Concept and categories...............................................................................4 2.7.1.2 Plant Variety Denominations .......................................................................5
2.7.2 Accepted principles of morality....................................................................... 7
2.8 Deceptiveness: Article 7(1)(g) CTMR.......................................................10 2.8.1 Examination of the deceptive character ....................................................... 10 2.8.2 Market reality and consumers’ habits and perceptions ................................ 12 2.8.3 Trade marks with geographical connotations relating to the location of the
applicant or the place of origin of the goods/services .................................. 13 2.8.4 Trade marks making reference to an ‘official’ approval, status or
recognition .................................................................................................... 13 2.8.5 Relation with other CTMR provisions ........................................................... 14
2.9 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR.16 2.9.1 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 2.9.1.1 Examination of marks consisting of or containing a state flag ...................20 2.9.1.2 Examination of marks consisting of or containing armorial bearings and
other state emblems..................................................................................24 2.9.1.3 Examination of marks consisting of or containing official signs and
hallmarks indicating control and warranty..................................................27 2.9.2 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 .................................... 27
2.9.3 Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR.............. 34
2.10 Article 7(1)(j) CTMR...................................................................................40 2.10.1 Introduction ................................................................................................... 40 2.10.2 The application of Article 7(1)(j) CTMR ........................................................ 42
2.10.2.1 Relevant PDOs/PGIs.................................................................................42 2.10.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and
Article 16 of Regulation (EC) No 110/2008................................................43 2.10.2.3 Relevant goods .........................................................................................51
2.10.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008 ................................................................................................. 53 2.10.3.1 PDOs/PGIs protected at national level in an EU Member State ................53 2.10.3.2 PDOs/PGIs from third countries ................................................................53
2.11 Article 7(1)(k) CTMR..................................................................................55 2.11.1 Introduction ................................................................................................... 55 2.11.2 The application of Article 7(1)(k) CTMR....................................................... 57
2.11.2.1 Relevant PDOs/PGIs.................................................................................57 2.11.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012 ......58 2.11.2.3 Relevant goods .........................................................................................66
2.11.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012 ................ 69 2.11.3.1 PDOs/PDIs protected at national level in an EU Member State ................69 2.11.3.2 PDOs/PDIs from third countries ................................................................70
2.12 Community collective marks....................................................................72 2.12.1 Character of collective marks ....................................................................... 72
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2.12.2 Ownership..................................................................................................... 73 2.12.3 Particularities as regards absolute grounds for refusal ................................ 74
2.12.3.1 Descriptive signs .......................................................................................74 2.12.3.2 Misleading character as to its nature.........................................................75 2.12.3.3 Regulations of use contrary to public policy and morality..........................75
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2.7 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.
2.7.1 ‘Public policy’
2.7.1.1 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. As indicated above, national legislation may also be t aken into account, not because of its normative value, but as evidence of facts which make it possible to assess the perception of the relevant public in those Member States.
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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 (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.
2.7.1.2 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
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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 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 Article 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, Article 18(2) CPVRR implies that no exclusive rights should be granted in respect of a des ignation that is identical with the variety denomination, after such variety denomination has been designated pursuant to Article 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 denomination of a variety for which protection has been surrendered, 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.
1 http://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder.
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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 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 paragraphs 2.3 and 2.4).
2.7.2 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 goods and services applied for 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)).
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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 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 t rade 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
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Sign Relevant Consumer Public policy / morality Case No
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
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
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Sign Relevant Consumer Public policy / morality Case No
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
2.8 Deceptiveness: Article 7(1)(g) CTMR
2.8.1 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.
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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
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
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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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).
2.8.2 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, preparations for use as substitutes for coffee, artificial coffee, chicory, chicory flavourings; 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 justified in respect of tea. 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
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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.
2.8.3 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.
2.8.4 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
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goods/services issue from, or are endorsed by, a public body or statutory organisation, are acceptable.
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
2.8.5 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
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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 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, paragraph 3.6).
Article 51(1)(c) CTMR (grounds for revocation)
Whereas in examining a trade mark under Article 7(1)(g) CTMR an ex aminer 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
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trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods/services concerned.
2.9 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) CTMR 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).
2.9.1 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
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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 PC.
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 i dentical reproduction or a ‘heraldic imitation’ of the abovementioned symbols.
Furthermore, the competent authority must not have given its authorisation.
Armorial bearings consist of a design or image depicted on a shield. 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.
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Danish state emblem – 6ter database No DK3
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.
Official Spanish 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).
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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 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 imitations ‘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.).
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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 imitation 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).
2.9.1.1 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.
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.
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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.
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; this is confirmed by the Board of Appeal’s refusal of CTMA 10 502 714.
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Flag Sign
The flags of, for example, Belgium, Czech Republic, France, Italy, Latvia, Austria, Finland and Sweden.
CTMA 10 502 714, R 1291/2012-2
‘… the flags … are all represented in the mark and will be immediately recognized as such by the public coming from those parts of the EU, as well as many others across the relevant territory. … they do not merge into each other in a way which dissipates their individual characteristics. It must also be noted that the flags appearing at the bottom of the mark … are not upside down, but are presented exactly as they would be normally.
As noted by the Court in the judgment of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’ at para. 59, Article 6ter(1)(a) of the Paris Convention applies not only to trade marks but also to elements of marks which 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 imitation thereof for that mark to be refused registration as a Community trade mark … Therefore the applicant’s arguments that although the mark contains various national flags, this is only a s mall part of the mark which is overwhelmed by the presence of the additional elements and that these elements are more dominant and distinctive, fail.’ (paras 18-19)
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:
Flag Accepted CTMA
CTMA 5 851 721
Italian flag CTMA 5 514 062
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Swiss flag CTMA 6 015 473
Finnish flag CTMA 7 087 281
Flag Accepted CTMA
Swedish flag CTMA 8 600 132
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
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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.
2.9.1.2 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 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.
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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).
In the example reproduced below a ‘heraldic imitation’ of state emblems was found by the examiner. However, the decision was annulled by the Board which considered that the sign applied for is not identical to the national emblem of Ireland. It does not contain an imitation of the national emblems of Ireland either and i t does not reproduce characteristic heraldic features of these emblems (R 0139/2014-5, para. 16):
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State emblem CTMA
Irish state emblems: 6ter Numbers: IE 11 - IE 14 CTMA 11 945 797
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 her aldic 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 par tial 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 her aldic 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 f ile 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.
2.9.1.3 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).
2.9.2 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 c onsidered 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
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The following have been protected for the Commission:
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 of ficial 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)
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CTMA 2 180 800 (T-413/11) 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. both marks were accepted):
CTMA 5 639 984 CTMA 6 156 624
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The following is not a heraldic imitation because, although the stars are yellow, there is no blue (or dark-coloured) background:
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
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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.
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.
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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.
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.
2.9.3 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 A rticle 7(1)(h) CTMR both have a similar scope of application and grant at least equivalent levels of protection.
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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 heraldic 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 l ink 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 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 ibidem, 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 the 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,
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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:
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:
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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.
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.
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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.
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.
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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)
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 s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the symbol and pr ovide the applicant with all necessary details and, in particular, information on w hy 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
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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.
2.10 Article 7(1)(j) CTMR
2.10.1 Introduction
Article 7(1)(j) CTMR applies to CTMs that are in conflict with geographical indications for wines and spirits.
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 the 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 c haracteristics 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;
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 t he protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.
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(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, 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’.
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Article 103(2) of Regulation (EU) No 1308/2013 and A rticle 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 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)(j) CTMR
2.10.2.1 Relevant PDOs/PGIs
Article 7(1)(j) CTMR applies where PDOs/PGIs (either from an E U Member State or from a t hird 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/legal-content/EN/TXT/ PDF/?uri=CELEX:32012R0164&from=EN. 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
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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 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.
2.10.2.2 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’);
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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)
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.
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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.
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)
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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.
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.
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The Court has also stated that ‘it is possible … for a pr otected 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.
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
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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 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 AÇORIANO Noun in the PDO → Adjective in the CTM
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(PGI-PT-A1447)
BORDEAUX
(PDO-FR-A0821) BORDELAIS Noun in the PDO → Adjective 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 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.
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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 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.
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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).
2.10.2.3 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 i t 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.
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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.
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.
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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’).
2.10.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008
2.10.3.1 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 r egistered 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.
2.10.3.2 PDOs/PGIs from third countries
The following situations refer to PDOs/PGIs from third countries that are not simultaneously registered at EU level.
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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
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 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
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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).
2.11 Article 7(1)(k) CTMR
2.11.1 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;
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 f oodstuffs. It replaced and repealed Regulation (EC) No 510/2006.
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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 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) false or misleading practices in the packaging or information on the product and (iv) 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);
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• 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.
2.11.2 The application of Article 7(1)(k) CTMR
2.11.2.1 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.
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/do or/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 system 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.
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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
2.11.2.2 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; 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 m eans 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.
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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:
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)
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PDO/PGI Community trade mark
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.
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)
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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.
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.
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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)
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
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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 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.
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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’
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.
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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 assessed 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 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’
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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).
2.11.2.3 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, 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);
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• 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 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
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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’).
• 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’.
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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
2.11.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012
2.11.3.1 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.
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 able to grant transitional protection at national level without affecting intra-Union or international trade.
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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.
2.11.3.2 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 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.
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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 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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2.12 Community collective marks
2.12.1 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 w ith individual trade marks. Likewise, whether the CCTM falls under one of the grounds for refusal of Article 7 CTMR will also be examined.
The regulations provided by the applicant governing the use of its CCTM must cover its use for all the goods and services included in the list of the CCTM application. For instance, the applicant may do so by reproducing the list of goods and services in the regulations of use or by referring to the list of goods and s ervices of the CCTM application.
With respect to CCTMs conflicting with PGIs/PDOs, the regulations governing the use of a CCTM should accurately reflect any limitation introduced to overcome such conflict. For example, the regulations of use of the CCTM ‘XYZ Designation of Origin’ for ‘wines’ should accurately reflect the fact that they refer to the use of the trade mark for wines complying with the PDO ‘XYZ’.
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.
2.12.2 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,
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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.
2.12.3 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.
2.12.3.1 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.
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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 C CTM for tools in Class 7, it will be considered descriptive of the intended purpose of the goods. Since 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).
2.12.3.2 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.
2.12.3.3 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.
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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 .................. 18
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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 entitled to oppose the registration applied for, or demand its cancellation or, if the law of the country so allows, the assignment in his favour 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 paragraph 4 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.
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.
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Case No Comment
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’ (confirmed by T-184/12)
The opposition was based on an unregistered mark protected, inter alia, in Australia. 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 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
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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
Judgment of 09/07/ 2014, T-184/12 ‘Heatstrip’
The Board of Appeal concluded that, although there was no written co-operation agreement between the parties, their relationship on the date of the application for the CTM was, in view of the business correspondence between them, more than that of merely buyer and seller. There was, rather, a tacit cooperation agreement that led to a fiduciary obligation on the part of the CTM applicant (para. 67).
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 co-operation 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 s imple, non-exclusive commercial relationship. Indeed, a c ommercial co-operation agreement entailing an obl igation of loyalty can exist even in the absence of an ex clusivity clause (see judgment of 09/07/2014, T-184/12 ‘Heatstrip’, para. 69).
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
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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.
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.
The Court also decided that active co-operation between a C TM applicant and an opponent in the advertising of the product, in order to optimise the marketing thereof, could give rise to the fiduciary relationship required under Article 8(3) CTMR.
Case No Comment
Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (appealed confirmed by T-184/12)
The Court confirmed the findings of the Board, who considered that a binding contractual relationship could be established by means of business letters exchanged by the parties, including by email. The Board 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). The Court dismissed the applicant’s arguments that there was no co-operation between the parties (because the applicant was not integrated in the opponent’s sales structure, was not subject to a no- competition clause and had to bear the costs of sale and promotion) and confirmed the Board’s decision (para. 67 et seq).
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.
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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 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
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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 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
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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.
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.
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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.
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)
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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 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.
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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.
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
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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.
Finally, if the applicant does not provide any justification for its actions, it is not for the Office to make any speculations in that regard (see judgment of 09/07/2014, T-184/12 ‘Heatstrip’, paras 73 and 74).
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.
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Case No Comment
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 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
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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)
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’
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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).
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).
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Case No Comment
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
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Table of Contents
1 Introduction................................................................................................ 3
2 Structure of Article 8(4) CTMR ................................................................. 3
3 Conditions of Article 8(4) CTMR............................................................... 5 3.1 Direct right conferred on the opponent .................................................... 5 3.2 Types of rights falling under Article 8(4) CTMR .......................................6
3.2.1 Introduction ..................................................................................................... 6 3.2.2 Non-registered trade marks............................................................................ 6 3.2.3 Other business identifiers ............................................................................... 7
3.2.3.1 Trade names ...............................................................................................8 3.2.3.2 Corporate names.........................................................................................8 3.2.3.3 Domain names ............................................................................................9 3.2.3.4 Titles............................................................................................................9
3.2.4 Geographical indications .............................................................................. 10 3.2.4.1 Earlier rights deriving from EU legislation..................................................10 3.2.4.2 Earlier rights deriving from the laws of Member States .............................11 3.2.4.3 Earlier rights deriving from international agreements ................................12 3.2.4.4. Scope of protection of PGIs.......................................................................13
3.3 Use requirements ..................................................................................... 15 3.3.1 National Standard......................................................................................... 15 3.3.2 European Standard – use in the course of trade of more than mere local
significance ................................................................................................... 15 3.3.2.1 Use in the course of trade .........................................................................16 3.3.2.2 Significance of the use ..............................................................................19
3.4 Earlier right ............................................................................................... 24 3.5 Scope of protection.................................................................................. 25
4 Proof of the Applicable Law Governing the Sign.................................. 25 4.1 The burden of proof ................................................................................. 25 4.2 Means of evidence and standard of proof .............................................. 27
4.2.1 National law .................................................................................................. 27 4.2.2 European Union law ..................................................................................... 29
TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR ..................................................... 30
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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 operate 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 national 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 other signs used in 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 for invalidity proceedings beyond those of Article 8(4) CTMR to also cover other earlier rights, in particular the right to a name, 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 relied upon in 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 a 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 particular 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 opposition may be based under Article 8(4) CTMR and the 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 right 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 grants 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 and R 1446/2006-4 ‘RM2007’, where a non-registered trade mark in Belgium was invoked and the opposition rejected as unfounded because non- registered trade marks are not protected in Belgium.
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 primarily identifying function but which protect technical or artistic achievements or the ‘appearance’ of something.
Some examples of cases dealing with whether a right 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 particular 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 distinguishes a certain 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 trade 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 specific location on the internet (oami.europa.eu) or an email 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 domain 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; B 1 719 379, where rights based on the use of the French domain name ‘Helloresto.fr’ were invoked; T-321/11 and T-322/11, where rights based on the use of the Italian domain name ‘partidodellaliberta.it’ were invoked and the Court considered that references to this site in the Italian press did not in themselves substantiate its use in the context of a commercial activity.
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 title of a work can be invoked 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 used 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 protection 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 the market. Where the title relates to a service (such as a television
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programme), that service must have been made 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 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 the 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 may be a valid basis for an opposition to the extent that they allow the proprietor to prevent use of a subsequent mark. Their ability to prevent use is
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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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 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 supersedes 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 uniform 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
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.
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in Annex VII, part 2 of the Wines Regulation) and spirit drinks10 (as set out in Annex II of the Spirits Regulation) that are protected under national laws are not a proper 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 basis 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 necessary 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 invoked 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).
10 e.g. grain spirit, wine spirit, fruit spirit, brandy, liqueurs, rum, whisky, gin. 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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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 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 beverage 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 Member State’s accession and the 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
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 Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR.
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provisions preventing use from those that prevent registration15 of a trade mark and which are not a basis 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 services 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 they afford no protection 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 PGI 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
15Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively. 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 Spirits Regulations respectively.
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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 must also be shown 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 PGI 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 EU level (see further below paragraph 3.4 on the scope of protection). This standard determines the existence of the national right and the 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 use of the mark in Danish territory.
In Germany, however, the right to an unregistered trade mark is acquired through use that has led to recognition by the relevant public of it 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.
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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 the two conditions laid down in Article 8(4) CTMR is to limit conflicts between signs by preventing an earlier 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 reserved 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 private 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).
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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 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 distinguished 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).
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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 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 invoked, as long as the company name has been used, prior to the registration of the entity in the companies register. The following is an example 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 rye 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 opposition 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 film title. Lastly, the mere fact that the film was a worldwide 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).
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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 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 to 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 (see judgment of 18/04/2013, T-506/11, ‘Peek & Cloppenburg’, paras 19, 47-48).
The General Court held that the significance of a sign used to identify specific business activities must be established 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 sign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be made in concreto, according to the circumstances of each case.
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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 the evidence must relate, to these elements:
a) the intensity of use (sales made under the sign) b) the length of use 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 the company’s letterhead, on the 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 its 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 number 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 of the use of the sign is concerned, in general, neither the territory of a city alone, even a big one, is of more than mere local significance, and nor is a regional district or province. It will depend on the 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 specific 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
BUD (appellation of origin)
T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, T- 309/06 RENV
Four very small invoices for only three cities, without any advertisements, did not meet the requirement for use in the course of trade of a sign of more than mere local significance (para. 56). The same conclusion applied to Austria since the GC found that use was limited to deliveries of 12-25 hectolitres per year, for a marginal turnover (around EUR 1 200), almost exclusively in Vienna (paras 59-61).
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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).
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 opponent relies on a non- registered trade mark, proof of use of the sign as a company 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:
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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 specific 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.
Therefore, depending on the specific circumstances of the case, in a case where an opponent relies on a non-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 (see judgment of 07/05/2013, T-579/10 ‘makro’, where the Court confirmed the Board’s rejection of evidence submitted by the invalidity applicant, which related to periods subsequent to the owner’s application for the CTM (para. 70).
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
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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 finding 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.
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 easily be transported 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 Proof of the Applicable Law Governing the Sign
4.1 The burden of proof
According to Article 76(1) CTMR, in all inter partes cases, the burden is on the party making a particular claim or allegation to provide the Office with the necessary facts and arguments in order to substantiate the claim. Unlike other grounds in Article 8 CTMR, Article 8(4) CTMR does not specify the conditions governing the acquisition and scope of protection of the earlier right invoked. It is a framework provision where the particulars of the applicable law must be provided by the opponent.
Rule 19(2)(d) CTMIR provides 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 and scope of protection.
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It follows from the law as interpreted by the Court that the opponent must provide the relevant national law and show that it would succeed under that national law in preventing the use of a subsequent trade 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 … 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 that, 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.)
The Court held that in applications for a declaration of invalidity brought under Article 53(2) CTMR, it is for the party who seeks to rely on an earlier right protected under national law
to provide OHIM not only with particulars showing that he satisfies 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 earlier right, but also particulars establishing the content of that law.
(See judgments of 05/07/2011, C-263/09 P, ‘Elio Fiorucci’, para. 50 and 27/03/2014, C-530/12 P, ‘Representation of a hand’, para. 34.)
Although these judgments referred to invalidity proceedings under Article 53(2) CTMR, since Article 8(4) also concerns the application of earlier rights protected under European Union legislation or under the law of the Member State governing the sign at issue, the cited case-law also applies to oppositions brought under Article 8(4) CTMR.
The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence. It may also be particularly useful to submit evidence of relevant case-law and/or jurisprudence interpreting the law invoked.
The Office must effectively assess the applicability of the ground for refusal invoked. In order to ensure the correct application of the law invoked, the Office has the power to verify, by whatever means it deems appropriate, the content, the conditions governing the application and the scope of the provisions of the applicable law relied upon by the opponent (see judgment of 27/03/2014, C-530/12 P, ‘Representation of a hand’, paras 44-46), while respecting the parties’ right to be heard. If, after verifying the evidence submitted, the Office is of the opinion that the parties’ proposed interpretation or application of the law invoked was inaccurate, it can introduce new and/or additional
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elements. In order to respect the parties’ rights to be heard, the Office will invite the parties to comment on these elements, where appropriate.
This power of verification is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (see decision of 02/06/2014, R 1587/2013-4 ‘GROUP’, para. 26 and decision of 30/06/2014, R 2256/2013-2 ‘ENERGY’, para. 26).
4.2 Means of evidence and standard of proof
Pursuant to Article 8(4) CTMR, the applicable law may be the law of a Member State or European Union law.
4.2.1 National law
As regards national law, the opponent must provide:
a) the provisions of the applicable law:
on the conditions governing acquisition of rights (whether there is a requirement of use and, if so, the standard of use required; whether there is a registration requirement, etc.); and
on the scope of protection of the right (whether it confers the right of prohibition of use; the injury against which protection is provided, e.g. likelihood of confusion, misrepresentation, unfair advantage, evocation).
b) particulars proving fulfilment of the conditions:
of acquisition (entitlement; earlier acquisition; whether it is in force; evidence of use if use-based; evidence of registration if registration-based, etc.); and
of the scope of protection (facts, evidence and/or arguments that the requirements laid down by the applicable law for a prohibition of use are met, e.g. the nature of the goods, services or business activity protected by the earlier right and their relation with the contested goods or services; a cogent argument showing that there is a risk of injury).
First, as regards the provisions of the applicable law (see point a) above), the opponent must provide the reference to and content of the applicable law invoked. The opponent must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision either in its submission or by highlighting it in another publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision.
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As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation. However, a mere translation of the applicable law does not itself constitute proof and cannot substitute the original; therefore, the translation alone is not considered sufficient to prove the law invoked. See Rule 19(2)(d) CTMIR, which requires evidence to be submitted and Rule 19(3) CTMIR, which requires translations be submitted within the time limit specified for submitting the original document.
Where the opponent seeks to rely on national case-law or jurisprudence interpreting the law invoked, it must provide the relevant information in sufficient detail (e.g. a copy of the decision invoked or excerpts from the legal literature) and not merely by reference to a publication. The translation rules apply equally to that evidence.
Second, as regards the particulars proving fulfilment of the conditions of the applicable law (see point b) above), apart from providing appropriate evidence of acquisition of the right invoked, the opponent must submit evidence that the conditions of protection vis-à-vis the contested mark are actually met and, in particular, put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the applicable law. Merely providing the applicable law itself is not considered sufficient, as it is not up to the Office to make the relevant argument on behalf of the opponent.
Furthermore, in an opposition under Article 8(4) CTMR, what matters is whether the relevant provisions of the law conferring on the opponent the right to prohibit the use of a subsequent trade mark would apply to the contested mark in the abstract, and not whether the use of the contested mark could actually be prevented. Therefore, the applicant’s argument in defence that the opponent had not hitherto invoked or had not hitherto been able to prevent the actual use of the contested mark in the relevant territory cannot succeed (see judgment of 29/03/2011, C-96/09 P ‘BUD’, paras 191 and 193).
At the end of this Section of the Guidelines, there is an overview Table with the essentials of national laws applicable in the Member States. It is included in these Guidelines for information purposes only. As this table contains a description of the legal provisions for information purposes only, merely referring to the table does not discharge the opponent from the duty of proving the relevant law governing the sign that confers on it the right to prohibit the use of a later trade mark, as described above (see decision of 22/01/2013, R 1182/2011-4, ‘Crown Lounge (fig. mark)’, paras 48-50).
Based on the above, the Office will reject the opposition if:
the opponent invokes a right but does not include a reference to any specific national law and/or legal provision protecting that right (e.g. the opponent only indicates that the opposition is based on a commercial designation in Germany or that the opposition based on a commercial designation in Germany is protected under DE-TMA); or
the opponent provides a reference to the applicable national law and legal provision(s) but the reference is not complete: the legal provision only indicates the conditions governing the acquisition of the right but not the scope of protection of the right (or vice-versa) (e.g. the opponent indicates that the opposition is based on a commercial designation in Germany protected under Article 5 DE-TMA, which establishes the conditions for acquisition of the right, but
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the reference to the conditions governing the scope of protection, Article 15 DE- TMA, is missing); or
the opponent provides the reference to the relevant legal provision but does not provide the content (text) of the legal provision (e.g. the opponent’s submission refers to the DE-TMA but does not include the content of the law); or
the opponent provides the content of the legal provision only in the language of the proceedings but not in the original language (e.g. the language of the proceedings is English but the text of the DE-TMA is submitted only in English, not in German); or
the opponent does not provide any or sufficient evidence of the acquisition of the right invoked or does not provide arguments as to why it fulfils the conditions governing the scope of protection (e.g. the opponent refers to the relevant legal provisions and provides their content both in the original language and translated into the language of the proceedings, but does not provide any or sufficient evidence of the acquisition of protection or does not state whether it fulfils the conditions of the scope of protection).
4.2.2 European Union law
The above requirements also apply to European Union law, except that the opponent is not obliged to provide the content (text) of the law invoked. However, the opponent has to provide particulars proving the fulfilment of the conditions under the relevant provisions of European Union law (point b) above).
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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..................................................................................................... 34 2 Bulgaria .................................................................................................... 35 3 Czech Republic........................................................................................ 36 4 Denmark ................................................................................................... 37 5 Germany................................................................................................... 38 6 Estonia...................................................................................................... 40 7 Ireland....................................................................................................... 41 8 Greece ...................................................................................................... 42 9 Spain......................................................................................................... 44 10 France....................................................................................................... 45 11 Croatia ...................................................................................................... 46 12 Italy ........................................................................................................... 47 13 Cyprus ...................................................................................................... 48 14 Latvia ........................................................................................................ 49 15 Lithuania................................................................................................... 50 16 Hungary.................................................................................................... 50 17 Malta ......................................................................................................... 51 18 Austria ...................................................................................................... 51 19 Poland....................................................................................................... 53 20 Portugal .................................................................................................... 54 21 Romania ................................................................................................... 56 22 Slovenia.................................................................................................... 57 23 Slovakia .................................................................................................... 57 24 Finland...................................................................................................... 58 25 Sweden..................................................................................................... 60 26 United Kingdom....................................................................................... 61
20 The content of the Table is largely based on information and feedback from trade mark offices and user associations in 2013/2014. However, it is not a legal source and is made available for information purposes only. It may not contain the latest legislative developments or an exhaustive list of all national rights that can be invoked under Article 8(4) CTMR.
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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. (b) The subsequent trade mark must be identical or similar and must cover identical
or similar goods and/or services.
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Well-known TMs
Article 12(2)7 Bulgarian Trade Mark Law on Marks 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. (b) Signs must be identical 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.
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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 identical 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.
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4.2 Other signs used in the course of trade
Company names
The term ‘company name’ is to be interpreted broadly and covers 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
Guidelines for Examination in the Office, Part C Opposition Page 36
FINAL VERSION 1.0 01/08/2015
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 broad 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 other 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 company 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 sign of the undertaking by the relevant public (‘Verkehrsgeltung’).
Business symbols and other 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
Guidelines for Examination in the Office, Part C Opposition Page 37
FINAL VERSION 1.0 01/08/2015
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
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 Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 38
FINAL VERSION 1.0 01/08/2015
Rights conferred (a) and conditions (b)
(a) Right to prohibit use of subsequent (registered) trade marks. (b) The contested sign must be identical 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 result 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, provided that a reputation in Ireland or customers in Ireland can be proven. 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 Law in Ireland’ by Robert Clark, Shane Smyth, Niamh Hall, Bloomsbury Professional, 3rd edition 2010 (see http://www.bloomsburyprofessional.com/1155/Bloomsbury-Professional-Intellectual- Property-Law-in-Ireland-3rd-edition.html).. 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; Guiness Ireland Group v. Kilkenny Brewing Co Limited [2000] Fleet Street Reports 112; Allergan Inc. v Ocean Healthcare Ltd [2008] IEHC 189; Jacob Fruitfield Food Group Ltd v United Biscuits (UK) Ltd [2007] IEHC 368; and McCambridge v Brennan Bakeries Ltd [2012] IESC 46.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 39
FINAL VERSION 1.0 01/08/2015
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 the 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 40
FINAL VERSION 1.0 01/08/2015
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 41
FINAL VERSION 1.0 01/08/2015
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 42
FINAL VERSION 1.0 01/08/2015
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’, “raison sociale”)
Article L711-4(b) FR-IP Code
Conditions for protection
Protection of the company name is acquired upon completion 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 43
FINAL VERSION 1.0 01/08/2015
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
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 Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 44
FINAL VERSION 1.0 01/08/2015
Rights conferred (a) and conditions (b)
(a) Right to oppose the registration of a subsequent trade mark. (b) The subsequent trade mark must be identical or similar and have 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 the 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
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.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 45
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(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 substantial 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.
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
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 46
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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 identical 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.
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 court decision.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 47
FINAL VERSION 1.0 01/08/2015
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 services concerned have a characteristic 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 abovementioned provisions are only an example.
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 Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 48
FINAL VERSION 1.0 01/08/2015
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)
Conditions for protection
An unregistered TM must have acquired a certain recognition in the course of trade (‘Verkehrsgeltung’) before the owner of a subsequent (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
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 49
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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 undertaking (‘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 only 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
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 only if the application for the registered trade mark was not filed in bad faith. The trade mark
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 50
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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.
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.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 51
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(b) There must have been prior use of the name for business activity for identical or similar goods such as to be likely 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
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
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 52
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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 detrimental 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
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.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 53
FINAL VERSION 1.0 01/08/2015
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 earlier 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 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.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 54
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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 mark 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 covers 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 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 identical 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.
Rights Under Article 8(4) CTMR
Guidelines for Examination in the Office, Part C Opposition Page 55
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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 identical 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 symbol specific to its proprietor’s goods and/or services.
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 natural 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).
Rights Under Article 8(4) CTMR
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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.
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.
Rights Under Article 8(4) CTMR
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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 likelihood of confusion and the signs must cover identical or
similar goods and services.
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 reputation of a business that is likely to be harmed 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.
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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 conferred (a) and conditions (b)
Same as under Section 26.1.
Remarks: The Olympic Symbol Protection Act 1995 contains provisions on the 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 to 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.
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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 The risk of injury ......................................................................................46 3.4.1 Protected subject matter............................................................................... 46 3.4.2 Assessment of the risk of injury.................................................................... 47 3.4.3 Types of injury .............................................................................................. 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....................................................................................60
3.4.4 Proving the risk of injury ............................................................................... 66 3.4.4.1 Standard and burden of proof....................................................................66
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3.4.4.2 Means of evidence ....................................................................................69
3.5 Use without due cause.............................................................................69 3.5.1 Examples of due cause ................................................................................ 70
3.5.1.1 Due cause was accepted ..........................................................................70 3.5.1.2 Due cause was not accepted ....................................................................71
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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 or similar, the earlier mark enjoys a reputation and 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 mark.
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 take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. 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 taking unfair advantage of, or being detrimental to, the distinctive character or repute 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
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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 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-
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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.
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).
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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.
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
1 Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations.
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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 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 earlier 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
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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 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.
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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). 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.
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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).
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.
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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 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
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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.
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 Court 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 i nferred 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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 22
FINAL VERSION 1.0 01/08/2015
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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 23
FINAL VERSION 1.0 01/08/2015
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 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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 24
FINAL VERSION 1.0 01/08/2015
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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 25
FINAL VERSION 1.0 01/08/2015
Case No Comment
R 1466/2008-2 and R 1565/2008-2, ‘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’ (appeal dismissed in C-294/12 P)
The Beatles group was considered to be a gr oup with an exceptional 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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 26
FINAL VERSION 1.0 01/08/2015
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 advertised 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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 27
FINAL VERSION 1.0 01/08/2015
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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 28
FINAL VERSION 1.0 01/08/2015
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
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 29
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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 Office practice, such evidence may be s ubmitted 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 that the relevant
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 30
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materials are indicated in a c lear and unam biguous way and t hat 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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 31
FINAL VERSION 1.0 01/08/2015
Case No Comment
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).
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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 32
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Sworn or affirmed statements
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 capacity of the person giving the evidence and the relevance of such evidence to the particular case must be taken into account. For further details on t he weight and probative value of affidavits, see the Guidelines, Part C, Opposition, Section 6, Proof of Use.
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 s trong 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 TV, 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 take unfair advantage of, or be detrimental to, the reputation or distinctiveness of the earlier reputed trade mark.
The relationship between the notion of ‘similarity’ under the two provisions was addressed by the Court 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 pr econdition 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 t aken into account.
3.3 The link between the signs
The Court 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 of the existence of a risk of injury.
The notion of a link between the signs was addressed by the Court 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 Court, 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 Court 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
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them, there is, on account of the presence of other relevant factors such as 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 ‘The risk of injury’ 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 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.
Trade Marks with Reputation, Article 8(5) CTMR
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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 2 7. 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).
Trade Marks with Reputation, Article 8(5) CTMR
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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 The risk of injury2
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
2 For the purposes of these Guidelines, the term ‘injury’ covers taking ‘unfair advantage’ even though in such cases there is not necessarily an ‘injury’ in the sense of detriment either to the distinctive character or repute of the mark or, more generally, to its proprietor.
Trade Marks with Reputation, Article 8(5) CTMR
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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).
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 protection under Article 8(5) CTMR 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 devalue the image it has acquired among the public (detriment to repute), or the use of the contested mark is likely to result in misappropriation of its powers of attraction or 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 the risk of injury
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).
Trade Marks with Reputation, Article 8(5) CTMR
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Even though this statement is too limited to serve as a basis for a comprehensive analysis of the existence of a risk of injury, 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 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).
Trade Marks with Reputation, Article 8(5) CTMR
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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 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 adversely affect the earlier trade mark.
3.4.3 Types of injury
Article 8(5) CTMR refers to the following types of injury: ‘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 is fulfilled, namely if use of the contested mark would:
• take unfair advantage of the distinctiveness, or the repute of the earlier mark; • cause detriment to the distinctiveness; • cause detriment to the repute.
As regards the first type of injury, 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 dealt 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
Trade Marks with Reputation, Article 8(5) CTMR
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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 18/06/2009, C-487/09, ‘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’,
Trade Marks with Reputation, Article 8(5) CTMR
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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 par ticularly 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. Similarly, the Court has held that certain drinks (Classes 32 and 33) commercialised as improving sexual performance were linked to the properties of the goods in Class 5 (pharmaceutical and veterinary products and substances) for which the earlier mark, Viagra, was registered (judgment of 25/01/2012, T-332/10 ‘VIAGUARA’, para. 74). Conversely, such a l ink 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.
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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 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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 53
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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 coat-tails 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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 54
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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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 55
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Earlier reputed sign CTM application Case No
VIAGRA VIAGURA T-332/10
While recognising that the primary function of a t rade mark was as an indicator of origin, the General Court held that a mark could also serve to transmit other messages, concerning particular qualities or characteristics of the designated goods or services, or the images and sensations projected by the mark itself, such as luxury, lifestyle, exclusivity, adventure or youth. In this sense, a trade mark possessed an intrinsic economic value that was autonomous and distinct to that of the goods or services for which it was registered (para. 57).
The risk of taking unfair advantage encompasses cases of manifest exploitation or parasitism of a mark with reputation, namely the risk of transferring the image of the mark with reputation or the characteristics projected by it to the goods covered by the mark applied for, thus facilitating the marketing of those goods through association with the earlier mark with reputation (para. 59).
The Court concluded that, even if the drinks claimed by the mark applied for would not in reality produce the same benefit as the ‘immensely well-known’ pharmaceutical for the treatment of erectile dysfunction, what was important was that the consumer, because of the transfer of positive associations projected by the image of the earlier mark, would be inclined to purchase such drinks in the expectation of finding similar qualities, such as an increase in libido (paras 52 and 67).
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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 56
FINAL VERSION 1.0 01/08/2015
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
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 57
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of their distinctive quality by a later similar mark even where the later mark relates to dissimilar goods/services.
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 r educed – 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.
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’. 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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 58
FINAL VERSION 1.0 01/08/2015
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.
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
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 59
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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.
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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 60
FINAL VERSION 1.0 01/08/2015
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).
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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 61
FINAL VERSION 1.0 01/08/2015
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 t o 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).
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).
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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 62
FINAL VERSION 1.0 01/08/2015
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 Office does not accept such an argument, per se, as a means of 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 Office 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 Office, 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 manner that calls to mind an earlier 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.
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 63
FINAL VERSION 1.0 01/08/2015
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
tobacco products, cigarettes, cigars amongst others
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).
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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 64
FINAL VERSION 1.0 01/08/2015
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; amongst others.
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).
Earlier reputed sign CTM application Case No
EMILIO PUCCI
T-373/09 (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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 65
FINAL VERSION 1.0 01/08/2015
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 negative 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).
Trade Marks with Reputation, Article 8(5) CTMR
Guidelines for Examination in the Office, Part C, Opposition Page 66
FINAL VERSION 1.0 01/08/2015
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 Proving the risk of injury
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 i f 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 injury 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 for establishing reputation, 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 (appeal dismissed in C-294/12 P), T-60/10 ‘ROYAL SHAKESPEARE’ para. 53 and judgment of 25/01/2012, T-332/10 ‘VIAGUARA’, para. 25).
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 14/09/1999, C-375/97, ‘General Motors’, para. 30). It is also clear from case-law that the more immediately and s trongly 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 SHAKESPEARE’, para. 54, judgment of 18/06/2009, C-487/07 ‘L’Oréal and Others’ para. 44, and judgment of 27/11/2008, C-252/07 ‘Intel’, paras 67-69).
These are rebuttable presumptions, which 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 potential detriment or unfair advantage, it must prove any conditions of fact that might be necessary in particular cases for giving rise to a serious, non-hypothetical risk of detriment or unfair advantage, by submitting evidence of the kind mentioned in the paragraph below on proving actual detriment or unfair advantage.
Conclusions as to the risk of future injury may also be established 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’, paras 42-43).
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. 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.
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 injury 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 appl ication 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, appeal C-294/12 P dismissed). However, the applicant may
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avail 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.
Interpreting Article 5(2) of Directive 89/104 (whose legislative content is essentially identical to that of Article 8(5) CTMR), the Court ruled that the proprietor of a trade mark with a reputation might be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product that was identical to that for which that mark had been registered, if it was demonstrated that that sign was being used before that mark had been filed and that the use of that sign in relation to the identical product was in good faith (judgment of 06/02/2014, C-65/12, ‘The Bulldog’, para. 60). The Court gave further detailed factors to be considered in the assessment of due cause on account of prior use.
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.
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Case No Comment
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.
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.
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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
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Table of Contents
1 General Remarks ....................................................................................... 4 1.1 The grounds for cancellation.....................................................................4 1.2 Inter partes proceedings............................................................................4 1.3 The consequences of revocation and invalidity.......................................4
2 Revocation ................................................................................................. 5 2.1 Introduction ................................................................................................ 5 2.2 Non-use of the CTM – Article 51(1)(a) CTMR ............................................5
2.2.1 Burden of proof ............................................................................................... 5 2.2.2 Genuine use ................................................................................................... 6 2.2.3 Period of time to be considered...................................................................... 6 2.2.4 Proper reasons for non-use............................................................................ 7
2.3 CTM becoming the common name (generic term) – Article 51(1)(b) CTMR...........................................................................................................7 2.3.1 Burden of proof ............................................................................................... 7 2.3.2 Point in time to be considered ........................................................................ 7 2.3.3 Relevant public ............................................................................................... 7 2.3.4 Common name ............................................................................................... 8 2.3.5 Defence for the proprietor............................................................................... 8
2.4 CTM becoming misleading – Article 51(1)(c) CTMR.................................8 2.4.1 Burden of proof ............................................................................................... 9 2.4.2 Point in time to be considered ........................................................................ 9 2.4.3 Standards to be applied.................................................................................. 9 2.4.4 Examples ........................................................................................................ 9
3 Absolute grounds for invalidity.............................................................. 10 3.1 CTM registered contrary to Article 7 – Article 52(1)(a) CTMR ............... 10
3.1.1 Burden of proof ............................................................................................. 10 3.1.2 Points in time to be considered .................................................................... 10 3.1.3 Standards to be applied................................................................................ 11
3.2 Defence against a claim of lack of distinctiveness ................................ 11 3.3 Bad faith – Article 52(1)(b) CTMR ............................................................ 11
3.3.1 Relevant point in time ................................................................................... 12 3.3.2 Concept of bad faith ..................................................................................... 12
3.3.2.1 Factors likely to indicate the existence of bad faith ...................................12 3.3.2.2 Factors unlikely to indicate the existence of bad faith ...............................16
3.3.3 Proof of bad faith .......................................................................................... 17 3.3.4 Relation to other CTMR provisions .............................................................. 17 3.3.5 Extent of invalidity......................................................................................... 17
4 Relative Grounds for Invalidity............................................................... 18 4.1 Introduction .............................................................................................. 18 4.2 Grounds under Article 53(1) CTMR ......................................................... 18
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4.2.1 Standards to be applied................................................................................ 18 4.2.2 Points in time to be considered .................................................................... 19
4.2.2.1. For the assessment of enhanced distinctiveness or reputation .................19 4.2.2.2. Application based on Article 53(1)(c) in conjunction with Article 8(4) CTMR
19
4.3 Grounds under Article 53(2) CTMR – Other earlier rights ..................... 19 4.3.1 A right to a name/right of personal portrayal ................................................ 20 4.3.2 Copyright ...................................................................................................... 21 4.3.3 Other industrial property rights ..................................................................... 23
4.4 Non-use of the earlier mark ..................................................................... 23 4.5 Defences against an invalidity application based on relative grounds 24
4.5.1 Consent to registration ................................................................................. 24 4.5.2 Earlier applications for declaration of invalidity or counterclaims................. 25 4.5.3 Acquiescence ............................................................................................... 25
4.5.3.1 Examples rejecting the acquiescence claim..............................................26 4.5.3.2 Examples (partially) accepting the acquiescence claim ............................27
5 Res Judicata ............................................................................................ 27
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1 General Remarks
1.1 The grounds for cancellation
Pursuant to Article 56(1) CTMR, cancellation proceedings comprise applications for revocation and for declarations of invalidity.
The grounds for revocation are established in Article 51 CTMR. The grounds for invalidity are established in Article 52 CTMR (absolute grounds) and Article 53 CTMR (relative grounds). The CTMIR deals with revocation and invalidity in Rules 37 to 41.
1.2 Inter partes proceedings
Cancellation proceedings are never initiated by the Office itself. The initiative lies with the applicant for cancellation, even in cases based on absolute grounds for invalidity.
Article 56(1) CTMR establishes the locus standi that the applicant must have in order to file an application for revocation or for a declaration of invalidity. For further details, please see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraphs 2.1 and 4.1.
1.3 The consequences of revocation and invalidity
According to Article 55(1) CTMR, in the event of revocation, and to the extent that the rights of the proprietor have been revoked, the CTM will be deemed not to have the effects specified in the CTMR as from the date of the application for revocation. This is particularly relevant in cases where a request for revocation on grounds of non-use is followed by the surrender of the CTM. In this regard, the General Court has declared that the party who applies for revocation has a legitimate interest in continuing the revocation proceedings in spite of the surrender of the CTM by its proprietor, as the continuation of the revocation proceedings may result in a declaration of non-use preventing, pursuant to Article 112(2)(a) CTMR, the proprietor of the CTM from requesting the conversion of their mark (order of 24/10/2013, T-451/12, ‘Stormberg’, para. 48) (for the Office’s new practice on surrenders, see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings, paragraphs 7.3.1 and 7.3.2).
An earlier date on which one of the grounds for revocation occurred may be fixed by the Office if this is requested by one of the parties, provided that the requesting party shows a legitimate legal interest in this respect. On the basis of information available in the relevant case file, it must be possible to accurately determine the earlier date. The earlier date should, in any event, be set after the five year ‘grace period’ that the CTM proprietor has after the registration of a CTM pursuant to Article 15 CTMR (see decision of 28/07/2010, 3349 C, ‘ALPHATRAD’, confirmed by decision of 08/10/2012, R 0444/2011-1, paras 48-50 and judgment of 16/01/2014, T-538/12).
According to Article 55(2) CTMR, in the event of a declaration of invalidity, the CTM will be deemed not to have had, as from the outset, the effects specified in the CTMR.
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2 Revocation
2.1 Introduction
According to Article 51(1) CTMR, there are three grounds for revocation:
the CTM has not been put to genuine use during a continuous period of five years;
the CTM has become generic due to acts/inactivity of its proprietor; the CTM has become misleading due to the use made by its proprietor or with its
consent.
These grounds are examined in further detail in the sections below. According to Article 51(2) CTMR, where the grounds for revocation exist only for some of the registered goods and services, the CTM proprietor’s rights will be revoked only for those goods and services.
2.2 Non-use of the CTM – Article 51(1)(a) CTMR
According to Article 51(1)(a) CTMR, if within a continuous period of five years after the CTM has been registered and before the filing of the application for cancellation the CTM has not been put to genuine use, within the meaning of Article 15 CTMR, then the CTM must be revoked unless there are proper reasons for non-use.
Pursuant to Article 51(2) CTMR, if the CTM has been used for only some of the goods and services for which it is registered, the revocation will be limited to the non-used goods and services.
As regards procedural aspects of the submission of the evidence (time limits for submitting evidence, additional rounds for observations and submission of additional relevant evidence, translation of evidence, etc.), see the Guidelines, Part D, Cancellation, Section 1, Cancellation Proceedings.
The practice rules applicable to the substantive assessment of proof of use of earlier rights in opposition proceedings are applicable to the assessment of requests for revocation based on non-use (see the Guidelines, Part C, Opposition, Section 6, Proof of Use, Chapter 2, Substantive Law). However, there are a number of particularities to be taken into account in the context of revocation proceedings, which will be examined below.
2.2.1 Burden of proof
Pursuant to Rule 40(5) CTMIR, the burden of proof lies with the CTM proprietor.
The role of the Office is to assess the evidence put before it in the light of the parties’ submissions. The Office cannot determine ex officio genuine use of earlier marks. It has no role in collecting evidence itself. Even proprietors of purportedly well-known marks must submit evidence to prove genuine use of their marks.
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2.2.2 Genuine use
According to Rule 40(5) in conjunction with Rule 22(3) CTMIR, the indications and evidence for submitting proof of use shall consist of indications concerning the place, time, extent and nature of use of the contested trade mark for the goods and services for which it is registered.
As indicated above, the assessment of genuine use (including place, time, extent and nature of use) is the same in cancellation proceedings and in opposition proceedings. The detailed considerations in the Guidelines, Part C, Opposition, Section 6, Proof of Use, Chapter 2, Substantive Law should be followed.
Lack of genuine use for some of the contested goods/services in a revocation case implies the revocation of the registered CTM for those goods/services. Consequently, great care must be taken when assessing the evidence of use in revocation proceedings regarding the use for the registered (and contested) goods/services.
Case No Comment
R 1857/2011-4 AQUOS
The CTM was registered for angling articles; angling equipment; angling accessories in Class 28. The Board confirmed the Cancellation Division decision and maintained the CTM for fishing rods and the unchallenged fishing lines in Class 28. The Board concurred with the Cancellation Division that the evidence furnished in order to prove use of the contested CTM showed genuine use in relation to ‘fishing rods’ and that these goods are sufficiently distinct from the broad categories of angling articles and angling equipment to form coherent sub-categories. This finding was not challenged by the appellant.
2.2.3 Period of time to be considered
The relevant date is the date on which the application for revocation was filed.
The CTM is subject to revocation only if it has been registered for more than five years on that date.
If this condition is fulfilled, the CTM must have been genuinely used within the five years preceding that date (i.e. the five-year period is always counted backwards from the relevant date).
There is one exception: where genuine use of the CTM started or was resumed within the three months preceding the date on which the application for revocation was filed, such use will be disregarded where preparations for the commencement or resumption of use only began after the CTM proprietor became aware that the request for revocation might be filed (Article 51(1)(a) CTMR).
The burden of proof for this exception is on the applicant for revocation, who must file evidence that it made the CTM proprietor aware of its intention to file an application for revocation.
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2.2.4 Proper reasons for non-use
The detailed considerations in the Guidelines, Part C, Opposition, Section 6, Proof of Use, Chapter 2, Substantive Law and in particular paragraph 2.11 should be followed.
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 Burden of proof
The burden 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 Office 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 revocation 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 that took place between application and registration can be taken 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 which registration was sought would only be relevant in the context of an invalidity action.
2.3.3 Relevant public
A Community trade mark is liable to be revoked in accordance with Article 51(1)(b) CTMR if it has 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 29/04/2004, C-371/02, ‘Bostongurka’, paras 23 and 26). It is not necessary for the sign to become the common name for a product from the point of view of both sellers and end users of the
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product (judgment of 06/03/2014, C-409/12, ‘Kornspitz’, para. 30). It is sufficient that the sellers of the finished product do not inform their customers that the sign has been registered as a trade mark or offer their customers assistance, which includes an indication of the origin of the goods for sale (judgment of 06/03/2014, C-409/12, ‘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 the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 2, Absolute Grounds, paragraph 2.4). It is not necessary to prove that the term directly describes a quality 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 to its suitability for designating not just a particular producer’s product or service but a particular 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 relevant magazines), the CTM cannot be revoked. The proprietor must then check whether its trade mark appears in dictionaries as a generic term; if it does, the proprietor can request from the publisher that in future editions the trade mark will be 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.
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2.4.1 Burden of proof
The Office 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 applicant for revocation.
The burden of proof that the mark has become misleading rests on the applicant for revocation, who must further prove that it is the use made by the proprietor that causes the misleading effect. If the use is made by a third party, the burden is on the applicant for revocation 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 context of an invalidity action.
2.4.3 Standards to be applied
The Guidelines concerning Examination contain details of the criteria to be applied when assessing whether a CTM application complies with Article 7(1)(g) CTMR (Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 2, Absolute grounds (Article 7 CTMR), paragraph 2.7). The criteria are comparable 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 rule, 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 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 12/02/2009, R 0697/2008-1 – ‘MÖVENPICK OF SWITZERLAND’)
Moreover, 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.
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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 its application, an objection could be raised to the CTM under any of the grounds listed in Article 7 CTMR, it can be declared invalid.
3.1.1 Burden of proof
The purpose of invalidity proceedings 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).
The General Court has ruled that in invalidity proceedings, the Office is not allowed to examine afresh, of its own motion, all the absolute grounds for refusal but only those put forward by the applicant. The CTM enjoys a presumption of validity and it is for the invalidity applicant to invoke before the Office the specific facts that call the validity of a trade mark into question (see judgment of 13/09/2013, T-320/10, ‘Castel’, paras 27-29.
Consequently, the Office shall examine the facts in accordance with Article 76(1) CTMR within the scope of factual submissions made by the applicant for the declaration of invalidity (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 applicant for the declaration of invalidity.
One of the arguments that the CTM proprietor may put forward against the invalidity applicant’s claim is evidence that the CTM has acquired distinctive character following use. See paragraph 3.2. below.
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 assessed on the basis of the situation at the date of its application, not of its registration (judgment of 03/06/2009, T-189/07, ‘Flugbörse’; confirmed by Order of 23/04/2010, C-332/09 P, ‘Flugbörse’).
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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 for which registration was sought is in principle irrelevant for the purposes of examining an invalidity action (it would only be relevant in the context of a revocation action). However, such facts can nevertheless be taken into account where and to the extent that they allow conclusions to be drawn regarding the situation at the date of application of the CTM.
3.1.3 Standards to be applied
The Guidelines concerning Examination contain details of the criteria to be applied when assessing whether a CTM application complies with Article 7 CTMR. The criteria are identical to those applied in invalidity proceedings under Article 52(1)(a) CTMR.
3.2 Defence against a claim of lack of distinctiveness
A trade mark that falls foul of Article 52(1)(a) in conjunction with Article 7(1)(b), (c) or (d) CTMR will not be declared invalid where it has acquired distinctiveness through use (Articles 7(3) and 52(2) CTMR).
The distinctive character acquired following use is, in the context of invalidity proceedings, an exception to the grounds for invalidity of Article 52(1)(a) in conjunction with Article 7(1)(b), (c) and (d) CTMR. Since it is an exception, the onus of proof is on the party seeking to rely on it, namely the proprietor of the contested mark. The proprietor of the contested mark is best placed to adduce evidence in support of the assertion that its mark has acquired a distinctive character following the use which has been made of it (e.g. concerning the intensity, geographical extent, duration of use, promotional investment). Consequently, where the proprietor of the contested mark is requested to adduce evidence of distinctive character acquired through use, but fails to do so, the mark must be declared invalid (judgment of 19/06/2014, joined cases C-217/13 and C-218/13, ‘Oberbank e.a.’, paras 68-71).
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 the priority date (Article 7(3) CTMR); or
- distinctive character was acquired after registration (Article 52(2) CTMR).
Evidence of use during the period between the date of application and the date of registration can serve to support a finding of acquired distinctiveness after registration.
3.3 Bad faith – Article 52(1)(b) CTMR
The CTMR considers bad faith only as an absolute ground for the invalidity of a CTM, to be relied on either before OHIM or by means of a counterclaim in infringement proceedings. Therefore, bad faith is not relevant in examination or opposition
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proceedings (for opposition proceedings, see judgment of 17/12/2010, T-192/09, ‘Seve Trophy’, para. 50).
3.3.1 Relevant point in time
The relevant point in time for determining whether there was bad faith on the part of the CTM owner is the time of filing of the application for registration. However, it must be noted that:
facts and evidence dated prior to filing can be taken into account for interpreting the owner’s intention at the time of filing the CTM. Such facts include, in particular, whether there is already a registration of the mark in a Member State, the circumstances under which that mark was created and the use made of it since its creation (see paragraph 3.3.2.1, point 3 below).
facts and evidence dated subsequent to filing can sometimes be used for interpreting the owner’s intention at the time of filing the CTM, in particular whether the owner has used the mark since registration (see paragraph 3.3.2.1, point 3 below).
3.3.2 Concept of bad faith
As observed by Advocate General Sharpston (opinion of 12/03/2009, C-529/07, ‘Lindt Goldhase’, para. 36), the concept of bad faith referred to in Article 52(1)(b) CTMR is not defined, delimited or even described in any way in the legislation. However, the Court of Justice provided some guidance on how to interpret this concept in its judgment in the same case, as did the General Court in several cases (judgments of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’; of 14/02/2012, T-33/11, ‘BIGAB’; and judgment of 13/12/2012, T-136/11, ‘Pelikan’). In its preliminary ruling of 27/06/2013, C-320/12, ‘Malaysia Dairy’, the Court of Justice declared that the concept of bad faith is an autonomous concept of European Union law, which must be given a uniform interpretation in the European Union.
One way to describe bad faith is ‘conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices’ (opinion of Advocate General Sharpston of 12/03/2009, C-529/07, ‘Lindt Goldhase’, para. 60; similar decision of 01/04/2009, R 0529/2008-4 – ‘FS’, para. 14).
In order to find out whether the owner had been acting in bad faith at the time of filing the application, an overall assessment must be made in which all the relevant factors of the individual case must be taken into account. A non-exhaustive list of such factors is given below.
3.3.2.1 Factors likely to indicate the existence of bad faith
Case-law shows three cumulative factors to be particularly relevant:
1. Identity/confusing similarity of the signs: The CTM allegedly registered in bad faith must be identical or confusingly similar to the sign to which the invalidity applicant refers. Although the fact that marks are identical or confusingly similar is not in itself sufficient to show bad faith (regarding identity, see judgment of
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01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, para. 90), a dissimilar or not confusingly similar mark will not support a finding of bad faith.
2. Knowledge of the use of an identical or confusingly similar sign: The CTM owner knew or must have known about the use of an identical or confusingly similar sign by a third party for identical or similar products or services.
There is knowledge, for example, where the parties have been in a business relationship with each other (‘could not ignore, and was probably aware that the invalidity applicant had been using the sign for a long time’, judgment of 11/07/2013, T-321/10, ‘Gruppo Salini’, para. 25), or when the reputation of the sign, even as an ‘historical’ trade mark, is a well-known fact (judgment of 08/05/2014, T-327/12, ‘Simca’, para. 50).
Knowledge may be presumed to exist (‘must have known’) on the basis, inter alia, of general knowledge in the economic sector concerned or duration of use. The longer the use of a sign, the more likely it is that the CTM owner had knowledge of it (judgment of 11/06/2009, C-529/07, ‘Lindt Goldhase’, para. 39). However, a presumption of knowledge is less likely if the sign was registered in a non-EU country and there was only a short time between the application for registration in that non-EU country and an application for registration in an EU country (judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, para. 61).
Knowledge of an identical or similar earlier sign for identical or similar goods or services is not sufficient in itself to support a finding of bad faith (judgment of 11/06/2009, C-529/07, ‘Lindt Goldhase’, paras 40, 48 and 49). For example, it cannot be excluded that, where a number of producers use, on the market, for identical or similar goods, identical or similar signs that could give rise to confusion with the sign for which registration is sought, the CTM owner’s registration of the sign may be in pursuit of a legitimate objective. This could be the case where the CTM owner knows, at the time of filing the CTM application, that a third undertaking is making use of the mark covered by that application by giving its clients the impression that it officially distributes the goods sold under that mark, even though it has not received authorisation to do so (judgment of 14/02/2012, T-33/11, ‘BIGAB’, para. 27).
Similarly, the fact that the applicant knows or should know that, at the time of filing of its application, a third party is using a mark abroad that is liable to be confused with the mark whose registration has been applied for is not sufficient, in itself, to permit the conclusion that the applicant is acting in bad faith within the meaning of that provision (preliminary ruling of 27/06/2013, C-320/12, ‘Malaysia Dairy’, para. 37).
Knowledge or presumption of knowledge of an existing sign is not required where the CTM owner misuses the system with the intention of preventing any similar sign from entering the market (see, for example, artificial extension of the grace period for non-use in paragraph 3.3.2.1, point 3(c) below).
3. Dishonest intention on the part of the CTM owner: This is a subjective factor that has to be determined by reference to objective circumstances (judgment of 11/06/2009, C-529/07, ‘Lindt Goldhase’, para. 42). Again, several factors can be relevant. See, for example, the following case scenarios:
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(a) Bad faith is found when it can be inferred that the purpose of the CTM applicant is to ‘free-ride’ on the reputation of the invalidity applicant’s registered marks and to take advantage of that reputation (judgment of 08/05/2014, T-327/12, ‘Simca’, para. 56).
(b) While it is not a requirement of the CTM system that a CTM owner must at the time of applying for a CTM also have the intention of using it, it could be seen as an indication of dishonest intention if it subsequently becomes apparent that the owner’s sole objective was to prevent a third party from entering the market (judgment of 11/06/2009, C-529/07, ‘Lindt Goldhase’, para. 44).
On the other hand, if there is commercial logic to the filing of the CTM and it can be assumed that the CTM owner intended to use the sign as a trade mark, this would tend to indicate that there was no dishonest intention. For example, this could be the case if there is a ‘commercial trajectory’, such as the registration of a CTM after registration of the mark in a Member State (judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, para. 58), if there is evidence of the CTM owner’s intention to develop its commercial activities, for example by means of a licensing agreement (judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, para. 67), or if the CTM owner had a commercial incentive to protect the mark more widely, for example an increase in the number of Member States in which the owner generates turnover from goods marketed under the mark (judgment of 14/02/2012, T-33/11, ‘BIGAB’, paras 20 and 23).
The existence of a direct or indirect relationship between the parties prior to the filing of the CTM, for example a pre-contractual, contractual or post-contractual (residual) relationship, can also be an indicator of bad faith on the part of the CTM owner (judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, paras 85 to 87; judgment of 11/07/2013, T-321/10, ‘Gruppo Salini’, paras 25 to 32). The CTM owner’s registration of the sign in its own name in such cases can, depending on the circumstances, be considered a breach of honest commercial and business practices.
(c) One example of a situation that may be taken into account in order to assess whether the proprietor acted in bad faith is where a CTM owner tries to artificially extend the grace period for non-use, for example by filing a repeat application of an earlier CTM in order to avoid the loss of a right as a result of non-use (judgment of 13/12/2012, T-136/11, ‘Pelikan’, para. 27).
This case needs to be distinguished from the situation in which the CTM owner, in accordance with normal business practice, seeks to protect variations of its sign, for example, where a logo has evolved (judgment of 13/12/2012, T-136/11, ‘Pelikan’, paras 36 et seq.).
In addition to the three factors mentioned above, other potentially relevant factors identified in case-law and/or Office practice to assess the existence of bad faith include:
(i) the circumstances under which the contested sign was created, the use made of it since its creation and the commercial logic underlying the filing of the application for registration of that sign as a CTM (judgment of 14/02/2012,
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T-33/11, ‘BIGAB’, paras 21 et seq.; judgment of 08/05/2014, T-327/12, ‘Simca’, para. 39).
(ii) the nature of the mark applied for. Where the sign for which registration is sought consists of the entire shape and presentation of a product, the fact that the CTM owner was acting in bad faith at the time of filing might more readily be established where the competitor’s freedom to choose the shape of a product and its presentation is restricted by technical or commercial factors, with the result that the CTM owner is able to prevent its competitors not merely from using an identical or similar sign, but also from marketing comparable products (judgment of 11/06/2009, C-529/07, ‘Lindt Goldhase’, para. 50).
(iii) the degree of inherent or acquired distinctiveness enjoyed by the invalidity applicant’s sign and the CTM owner’s sign, as well as its degree of reputation, even if this is only residual (judgment of 08/05/2014, T-327/12, ‘Simca’, paras 40, 46 and 49).
(iv) the fact that the national mark on which the CTM owner has based a priority claim has been declared invalid due to bad faith (decision of 30/07/2009, R 1203/2005-1 – ‘BRUTT’).
(v) a request for financial compensation made by the CTM owner to the invalidity applicant if there is evidence that the CTM owner knew of the existence of the earlier identical or confusingly similar sign and expected to receive a proposal for financial compensation from the invalidity applicant (judgment of 08/05/2014, T-327/12, ‘Simca’, para. 72). However, in a previous case, the Court considered that even a seemingly disproportionate request for compensation does not in itself establish bad faith if the invalidity applicant does not provide evidence that the CTM owner could not have been unaware of the existence of the earlier mark. In this particular case, the Court took into account the fact that in 1994, the CTM owner had registered a trade mark identical to the contested CTM in the Spanish Trade Mark Office (judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, paras 1-22 and 88).
Finally, the case-law and/or the Office have identified a number of factors that, considered in isolation, are not enough to find bad faith but that, in combination with other relevant factors (to be identified on a case-by-case basis), might indicate the existence of bad faith:
The fact that an earlier, very similar, CTM was revoked for goods or services in a number of classes is not, in itself, sufficient to allow any conclusions to be drawn as to the CTM owner’s intentions at the time of filing the CTM application for the same goods or services (judgment of 13/12/2012, T-136/11, ‘Pelikan’, para. 45).
The fact that the application for registration of the contested CTM is filed three months before expiry of the period of grace for the earlier CTMs is not sufficient to counteract factors that show that the CTM owner’s intention was to file a modernised trade mark covering an updated list of services (judgment of 13/12/2012, T-136/11, ‘Pelikan’, paras 50 and 51).
The filing of applications for declarations that the invalidity applicant’s marks are invalid constitutes the legitimate exercise of a CTM owner’s exclusive right and cannot in itself prove any dishonest intent on its part (judgment of 13/12/2012, T-136/11, ‘Pelikan’, para. 66).
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The fact that, after successfully registering the CTM at issue, the CTM owner serves formal notice on other parties to cease using a similar sign in their commercial relations is not in itself an indication of bad faith. Such a request falls within the scope of the rights attaching to the registration of a CTM; see Article 9 CTMR (judgment of 14/02/2012, T-33/11, ‘BIGAB’, para. 33). However, in circumstances where this request is connected with other factors (e.g. the mark is not being used), it might be an indication of the intention to prevent another party from entering the market.
The fact that the signs at issue are identical does not establish bad faith where there are no other relevant factors (judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, para. 90). Furthermore, the mere fact that the differences between the CTM at issue and the previous CTM registered by the same proprietor are so insignificant as not to be noticeable to the average consumer cannot establish that the contested CTM is a mere repeat application made in bad faith (judgment of 13/12/2012, T-136/11, ‘Pelikan’, paras 33-34). The evolution over time of a logo intended as the graphic representation of a mark constitutes normal business practice (judgment of 13/12/2012, T-136/11, ‘Pelikan’, para. 36).
3.3.2.2 Factors unlikely to indicate the existence of bad faith
Case-law has identified several factors that, in general, are unlikely to prove bad faith.
Extending the protection of a national mark by registering it as a CTM falls within a company’s normal commercial strategy (judgment of 14/02/2012, T-33/11, ‘BIGAB’, para. 23; judgment of 01/02/2012, T-291/09, ‘Pollo Tropical chicken on the grill’, para. 58).
Bad faith cannot be found on the basis of the length of the list of goods and services set out in the application for registration (judgment of 07/06/2011, T-507/08, ‘16PF’, para. 88). As a rule, it is legitimate for an undertaking to seek registration of a mark not only for the categories of goods and services that it markets at the time of filing the application but also for other categories of goods and services that it intends to market in the future (judgment of 14/02/2012, T-33/11, ‘BIGAB’, para. 25; judgment of 07/06/2011, T-507/08, ‘16PF’, para. 88).
The fact that the owner of several national marks decides to apply for a CTM for only one and not all of them cannot be an indication of bad faith. The decision to protect a mark at both national and Community level is a choice dictated by the proprietor’s marketing strategy. It is not for OHIM or the Court to interfere with this choice (judgment of 14/02/2012, T-33/11, ‘BIGAB’, para. 29).
If a sign enjoys a reputation at national level and the owner applies for a CTM, the extent of the sign’s reputation might justify the owner’s interest in ensuring broader legal protection (judgment of 11/06/2009, C-529/07, ‘Lindt Goldhase’, paras 51 and 52).
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3.3.3 Proof of bad faith
Good faith is presumed until proof to the contrary is adduced (judgment of 13/12/2012, T-136/11, ‘Pelikan’, para. 57). The invalidity applicant needs to prove that there was bad faith on the part of the CTM owner at the time of filing the CTM, for example that the CTM owner had no intention of using the CTM or that its intention was to prevent a third party from entering the market. The decisions of the Board of Appeal of 12/07/2013 in the URB cases (R 1306/2012-4, R 1309/2012-4 and R 1310/2012-4) make it clear that bad faith has to be clearly proven by the applicant.
3.3.4 Relation to other CTMR provisions
Whilst Article 8(3) CTMR is a manifestation of the principle that commercial transactions must be conducted in good faith, Article 52(1)(b) CTMR is the general expression of that principle (see page 4 et seq. of the Guidelines on Article 8(3) CTMR).
3.3.5 Extent of invalidity
When bad faith of the CTM owner is established, the whole CTM is declared invalid, even for goods and services that are unrelated to those protected by the invalidity applicant’s mark. The only exception is where the applicant has directed its invalidity application against only some of the goods and services covered by the contested CTM, in which case a finding of bad faith will invalidate the CTM only for the goods and services that have been contested.
For example, in its decision R 0219/2009-1 (‘GRUPPO SALINI/SALINI’), the Board of Appeal concluded that bad faith had been proven and declared the contested CTM invalid in its entirety, i.e. also for services (insurance, financial and monetary services in Class 36 and software and hardware-related services in Class 42) that were dissimilar to the invalidity applicant’s building, maintenance and installation services in Class 37.
The General Court confirmed the Board of Appeal’s decision and stated that a positive finding of bad faith at the time of filing the contested CTM could only lead to the invalidity of the CTM in its entirety (judgment of 11/07/2013, T-321/10, ’Gruppo Salini’, para. 48).
Whereas the Court did not expand on the reasons for this conclusion, it can be safely inferred that it took the view that the protection of the general interest in business and commercial matters being conducted honestly justifies invalidating a CTM also for goods/services that are dissimilar to the invalidity applicant’s ones and do not even belong to an adjacent or neighbouring market.
Therefore, it seems only logical that the invalidity, once declared, should extend to all the goods and/or services covered by the contested CTM, even those that, in a pure Article 8(1)(b) scenario, would be found to be dissimilar.
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4 Relative Grounds for Invalidity
4.1 Introduction
Article 53 CTMR enables proprietors of earlier rights to apply for a declaration of invalidity of a CTM in a range of situations (grounds), which are detailed below.
The same grounds as in opposition proceedings:
o An earlier trade mark, within the meaning of Article 8(2) CTMR, is identical or similar to the contested CTM and covers identical or similar goods and services or is reputed (Article 53(1)(a) CTMR in conjunction with Article 8(1)(a) or (b) and Article 8(5) CTMR)
o A trade mark has been filed without authorisation by an agent or representative of its proprietor (Article 53(1)(b) CTMR in conjunction with Article 8(3) CTMR).
o A non-registered trade mark or other sign used in the course of trade can invalidate a CTM registration if national laws allow the proprietor of the earlier sign to prohibit the use of the CTM registration (Article 53(1)(c) CTMR in conjunction with Article 8(4) CTMR).
An additional ground based on another earlier right, to the extent that EU law or national law (including rights deriving from international agreements having effect in a Member State) entitle the proprietor to prohibit the use of the contested CTM (Article 53(2) CTMR), in particular:
o a right to a name o a right of personal portrayal o a copyright o an industrial property right.
These grounds are further developed below (Sections 4.2 and 4.3).
As in opposition proceedings, the proprietor of the contested CTM may require the invalidity applicant to submit proof of genuine use of its earlier trade mark. The particularities regarding the relevant period for assessing genuine use in invalidity proceedings are explained in Section 4.4.
Finally, the CTMR includes a number of provisions that can be invoked by the CTM proprietor against the invalidity application, depending on the type of earlier right invoked (e.g. whether or not it is an earlier CTM or national trade mark). These provisions are dealt with under Section 4.5.
4.2 Grounds under Article 53(1) CTMR
4.2.1 Standards to be applied
The substantive conditions for considering an earlier right referred to in Article 53(1) CTMR in conjunction with Article 8 CTMR as a relative ground for a declaration of invalidity are the same as in opposition proceedings. The practice rules in the Guidelines, Part C, Opposition, in particular Section 2, Identity and Likelihood of Confusion; Section 3, Unauthorised Filing by Agents of the TM Proprietor, Chapter 4,
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Conditions of Application; Section 4, Rights under Article 8(4) CTMR; and Section 5, Trade Marks with Reputation, should be applied accordingly.
4.2.2 Points in time to be considered
4.2.2.1. For the assessment of enhanced distinctiveness or reputation
In line with opposition proceedings, in invalidity proceedings an invalidity applicant relying on enhanced distinctiveness or reputation must prove that its earlier right has acquired enhanced distinctiveness or reputation by the filing date of the contested CTM, taking account, where appropriate, of any priority claimed. In addition, the reputation or the enhanced distinctive character of the earlier mark must still exist when the decision on invalidity is taken.
In opposition proceedings, due to the short time span between the filing of the CTM application and the opposition decision, it is normally presumed that the enhanced distinctiveness or reputation of the earlier trade mark still exists at the time of the decision1. In invalidity proceedings, however, the time span can be considerable. In this case, the invalidity applicant must show that its earlier right continues to enjoy enhanced distinctive character or reputation at the time the decision on invalidity is taken.
4.2.2.2. Application based on Article 53(1)(c) in conjunction with Article 8(4) CTMR
In the event of an application for invalidity based on Article 53(1)(c) in conjunction with Article 8(4) CTMR, the invalidity applicant must show the earlier sign’s use in the course of trade of more than local significance by the filing date of the contested CTM (or the priority date if relevant). In invalidity proceedings, the applicant also has to prove that the sign was used in the course of trade of more than local significance at another point in time, namely at the time of filing of the invalidity request. This condition stems from the wording of Article 53(1)(c) CTMR, which states that a Community trade mark shall be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’ (decision of the Cancellation Division of 05/10/2004, No 606 C, ‘ANKER’, and decision R 1822/2010-2 – ‘Baby Bambolina’, para. 15). Once proved, this requirement is considered still to be fulfilled at the time the decision on invalidity is taken unless there is evidence to the contrary (e.g. a company name is invoked but the company has ceased to exist).
There are further particularities regarding substantiation and admissibility, which are dealt with in the Guidelines, Part D, Section 1, Cancellation Proceedings.
4.3 Grounds under Article 53(2) CTMR – Other earlier rights
A CTM is liable to be declared invalid on the basis of the rights below where use of the trade mark could be prohibited under the Community or national law governing their protection. This is not an exhaustive list of such earlier rights.
1See Guidelines, Part C, Opposition, Section 5, Trade Marks with Reputation.
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Article 53(2) CTMR applies only where the rights invoked are of such a nature that they are not considered typical rights to be invoked in cancellation proceedings under Article 53(1) CTMR (Cancellation Division decision of 13/12/2011, 4033 C, para. 12).
4.3.1 A right to a name/right of personal portrayal
Not all Member States protect the right to a person’s name or portrayal. The exact scope of protection of the right will follow from the national law (e.g. whether the right is protected irrespective of the goods and services the contested mark covers).
The invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, judgment of 05/07/2011, C-263/09, ‘Elio Fiorucci’).
Earlier right Contested sign Case No
TELESIS TELESIS R 0134/2009-2
Right to a name under Austrian law
Under Austrian law (Section 43 AGBG), ‘the person whose right to use his name has been contested or whose name is used without due [cause] to his detriment, infringing his protectable interests, can request the infringer to cease and desist and to compensate any damages. Such protection extends as well to distinctive designations of traders, even if they deviate from the civil name of that trader ... Even if Section 43 AGBG may also apply to a trader’s name, the scope of protection does not go beyond the field of activity of the sign used. The remaining contested services are dissimilar to the services of the earlier right as … they concern different branches of activity (paras 61-63)’. Thus, the requirements under Austrian law were not fulfilled and the request for invalidity based on Article 53(2)(a) CTMR in conjunction with Austrian law was rejected.
Earlier right Contested sign Case No
‘MARQUÉS DE BALLESTAR’ Nobility title (título nobiliario) R 1288/2008-1
Right to a name under Spanish law
In Spain, noble titles are protected under Law 1/1982 as if they were persons’ names. The applicant for cancellation proved that this noble title exists and that it is held by her. The Community trade mark comprises a small coat of arms and the words MARQUÉS DE BALLESTAR in large letters. The wine could not be correctly identified in any business transaction without mentioning the words MARQUÉS DE BALLESTAR. The right conferred by the CTM consists of using this in the following ways: placing it on the product container, putting the product bearing the trade mark onto the market, and using it in publicity (Article 9 CTMR). Consequently, trade mark use is use ‘for publicity, commercial or similar purposes’, within the meaning of Article 7(6) of Law 1/1982. Since these uses are considered by this Law as ‘unlawful intromissions’, the protection provided by Article 9(2) of that same Law would be admissible. This Article allows the adoption of measures to ‘put an end to the unlawful intromission’. The CTM must be declared invalid because its use can be prohibited as a result of a right to a name in accordance with the Spanish legislation on protection of the right to honour, personal and family privacy and own image (paras 14 et seq.).
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Earlier right Contested sign Case No
DEF-TEC DEF-TEC R 0871/2007-4
Right to a name under German law
The Board considers that ‘what could eventually be protected under § 12 BGB is the name of the cancellation applicant, which is ‘DEF-TEC Defense Technology GmbH’, but not the sign ‘DEF-TEC’ which is not the cancellation applicant’s name ... the registration, and eventual use as a trade mark, of the designation ‘DEF-TEC’ on pepper sprays cannot infringe the right to the cancellation applicant’s name. … § 12 BGB protects the names of physical persons and as there is no absolute prohibition to bear a name which is similar to another person’s name, its protection is limited to cases where the right to the other person’s name is denied or misappropriated … and nothing else applies to the extended application of § 12 BGB to the names of legal persons … The request for declaration of invalidity fails on account of all the earlier rights invoked’ (para. 38 et seq.).
4.3.2 Copyright
According to Article 53(2)(c) CTMR, a Community trade mark shall be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular copyright.
Pursuant to Rule 37 CTMIR, the application for a declaration of invalidity must contain particulars of the right on which the application is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 53(2) CTMR or that it is entitled under the applicable national law to claim that right.
Although the Community legislator has harmonised certain aspects of copyright protection (see Directive 2001/29/EC of the European Parliament and of the Council of 22/05/2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22/06/2001, pages 10–19), so far there is no full-scale harmonisation of the copyright laws of the Member States, nor is there a uniform Community copyright. However, all the Member States are bound by the Berne Convention for the Protection of Literary and Artistic Works and the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’).
The invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, judgment of 05/07/2011, C-263/09 ‘Elio Fiorucci’).
The notion of copyright protection is applicable irrespective of the goods and services the contested mark covers and merely requires a ‘copying’ of the protected work without a requirement that the contested mark as a whole has to be ‘similar’ to the protected work.
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Earlier right Contested sign Case No
R 1235/2009-1
Copyright under Italian law
The Board indicates that this ground of invalidity is relative and, therefore, only holders of earlier rights — or other parties, if allowed by the law governing those rights — are entitled to invoke it (Article 56(1)(c) CTMR). The right relied upon here is copyright. Therefore, the party entitled to act is the holder of the copyright in the flower design or another party authorised by the law governing copyright. The invalidity applicant acknowledges that ownership of the copyright in the design ‘belongs to third parties’ (in fact to one third party: Corel Corporation, the graphic design company). The invalidity applicant does not own the right it seeks to rely upon. It solely has the right to use clip art with the flower shape and use it for purely private purposes. The ground was rejected (para. 32 et seq.).
Earlier right Contested sign Case No
R 1757/2007-2
Copyright under French law
‘… the mere fact that the stylization of the letter ‘G’ is ‘simple’, does not exclude its protection under French copyright law ... Indeed, for a work of the mind to be protected, it is sufficient for it to be “original” …While it is true that the contested CTM is not an exact copy of the earlier work, it must be borne in mind that the partial reproduction and adaptation without the consent of the owner of the copyright is also prohibited. The Board considers this to be the case here. The contested CTM has taken all the essential characteristic features of the prior work: a stand-alone capital ‘G’ in straight, thick, black lines, in a perfectly square flattened shape ... the ‘G’ of the contested CTM is drawn in a thick, black line of equal width and its inner part reaches further inside, than is the case in the prior work. However, the difference in these minor details constitute minimal modifications which do not affect the overlap in the essential characteristic features of the earlier work, namely, a stand-alone capital ‘G’ with a perfectly rectangular form, a flattened shape and thick, black lines ... As the partial reproduction or adaptation of the prior work has been done without the owner’s consent, it is unlawful. Therefore, the contested decision must be annulled and the request for a declaration of invalidity … must be upheld’ (para. 33 et seq.).
Earlier right Contested sign Case No
R 1925/2011-4
Copyright under German law
‘Pursuant to § 1 of the German Copyright Act, copyright protection is granted to the ‘authors’ of ‘works of literature, science, or art’. § 2 of the Act lists various types of work considered works of art. Pursuant to §§ 16 et seq., the copyright law protects the author. Under the assumption that the claimed subject-matter constituted a ‘work’ in the sense of those provisions, the cancellation applicant failed to demonstrate and to prove who was its author, and, how the cancellation applicant (a legal person with its seat in Japan) acquired the exclusive rights from the author’ (paras. 12-13). The Board examined each of these aspects. Moreover, it describes the differences between trade mark similarity and copying for the purposes of copyright infringement. The cancellation applicant had mixed up both concepts (paras 22-24).
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4.3.3 Other industrial property rights
Other industrial property rights and prior works at national or Community level, such as a Registered Community design (RCD), may be invoked.
The invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, judgment of 05/07/2011, C-263/09, ‘Elio Fiorucci’).
In the case of an RCD there is no need to prove what protection is given under the law. The Cancellation Division will apply the standards of the RCD.
Earlier right Contested sign Case No
(earlier RCD) (shape of a teabag)
R 2492/2010-2
‘Article 19(1) Council Regulation CDR states that a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. According to Article 10(1) CDR the scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. The earlier RCD and the contested CTM provoke a different overall impression. … Furthermore, it is observed that the earlier RCD introduces additional differences, such as the presence of a remarked base that does not form part of the contested CTM. Consequently, the Board confirms the Cancellation Division finding that the rights conferred by RCD No 241 427 pursuant to Article 19(1) CDR cannot be invoked against the contested CTM’ (paras. 59-64).
4.4 Non-use of the earlier mark
According to Article 57(2) and (3) CTMR, where the earlier mark has been registered for five years or more when the application for a declaration of invalidity is filed, the proprietor of the CTM may request that the proprietor of the earlier mark submit proof that the earlier mark has been put to genuine use in the EU in connection with the goods or services for which it is registered or that proper reasons for non-use exist.
According to Rule 40(6) in conjunction with Rule 22(3) CTMIR, the indications and evidence for submitting proof of use shall consist of indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services for which it is registered and on which the application for a declaration of invalidity is based.
The practice rules applicable to the substantive assessment of proof of use of earlier rights in opposition proceedings are applicable to the assessment of proof of use in invalidity proceedings (see the Guidelines, Part C, Opposition, Section 6, Proof of Use, Chapter 2, Substantive Law). In particular, when the CTM proprietor requests proof of use of the earlier rights, the Office will examine whether, and to what extent, use has
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been proved for the earlier marks, provided this is relevant for the outcome of the decision.
Finally, there is a particularity to be taken into account in the assessment of proof of use in the context of invalidity proceedings. It regards the relevant time of use. Pursuant to Article 57(2) CTMR in conjunction with Article 42(2) CTMR, in contrast to opposition proceedings, there are two relevant periods during which use has to be established.
In all cases when the earlier trade mark was registered for more than five years prior to the application for invalidity: the period of five years preceding the date of filing of the application for a declaration of invalidity (first relevant period).
Additionally, in cases when the earlier mark was registered for at least five years on the date on which the contested CTM application was published: the period of five years preceding the date of publication of the application for the contested CTM (second relevant period).
These two relevant periods do not necessarily overlap: they may totally or partially overlap or follow on from each other (with or without a gap).
4.5 Defences against an invalidity application based on relative grounds
4.5.1 Consent to registration
According to Article 53(3) CTMR, the CTM may not be declared invalid if the owner of the earlier right consents expressly to the registration of the CTM before filing the application for a declaration of invalidity.
Consent does not have to be given before the date of registration of the CTM. It is sufficient if it is given before the application for invalidity is filed. For these purposes, the Office will take into account, for instance, a contract to this effect between the parties.
Earlier right Contested sign Case No
SKYROCK R 1736/2010-2
The CTM proprietor argued that by virtue of the coexistence agreement, the cancellation applicant had effectively consented to the registration of the contested CTM pursuant to Article 53(3) CTMR. BoA examined the coexistence agreement and the interpretation thereof by the French courts. It concluded that the French courts construed the coexistence agreement as conferring a right on the part of the CTM proprietor to register marks, other than ‘SKYROCK’ and ‘SKYZIN’, that contain the prefix ‘SKY’. ‘That agreement has a worldwide scope of application and therefore applies to Community trade mark applications or registrations, such as the one in dispute in the present case’ (para. 32).
Evidence of express consent must take the form of a statement (and not of conduct). The statement must come from the applicant (and not from third parties). The consent must be ‘express’ (and not implicit or presumed) (decision of 23/07/2009, R 1099/2008-1, para. 46)
Merely withdrawing an opposition unilaterally does not necessarily imply that the opponent consents to the registration of the CTMA (decision of 14/10/2008,
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R 0946/2007-2 and R 1151/2007-2, ‘VISION’, para. 26). As Article 53(3) CTMR requires express consent, the withdrawal of the opposition has not been considered as consent for registration (decision of 01/12/2012, R 1883/2011-5, para. 30, appealed).
4.5.2 Earlier applications for declaration of invalidity or counterclaims
According to Article 53(4) CTMR, where the proprietor of an earlier right has previously made an application for a declaration of invalidity of a CTM or has made a counterclaim for invalidity in infringement proceedings on the basis of rights in Article 53(1) or (2) CTMR before a Community trade mark court, it may not submit a new application for a declaration of invalidity on the basis of other rights referred to in Article 53(1) or (2) CTMR that it could have invoked in the original proceedings.
Although Article 100 CTMR imposes an obligation on Community trade mark courts to notify the Office of the initiation of counterclaims for invalidity and their outcome, in practice this is not always done. A CTM proprietor wishing to rely on the defence provided for by Article 53(4) CTMR must submit evidence from the national court to support its claim.
4.5.3 Acquiescence
According to Article 54 CTMR, where the proprietor of an earlier CTM or national trade mark has acquiesced in the use of the CTM for a period of five successive years, while being aware of the use, the CTM is not liable to be declared invalid, unless registration of the later CTM was applied for in bad faith.
The aim of Article 54 CTMR is to penalise the proprietors of earlier trade marks who have acquiesced, for a period of five successive years, in the use of a later Community trade mark while being aware of such use, by excluding them from seeking a declaration of invalidity or by opposing the use of that trade mark, which will then therefore be able to coexist with the earlier trade mark (judgment of 28/06/2012, T-133/09 and 134/09, ‘B. Antonio Basile 1952’, para. 32).
The burden of proof is on the proprietor of the contested CTM to show that:
the contested CTM was used in the Community (or in the Member State where the earlier trade mark is protected) during a period of at least five successive years;
the invalidity applicant was aware of this or could reasonably be presumed to be aware of it;
although the invalidity applicant could have stopped the use, it nevertheless remained inactive. This is not the case where there was a licence or distribution relationship between the parties, so that use by the CTM proprietor was for goods it lawfully obtained from the invalidity applicant (judgment of 22/09/2011, C-482/09, ‘Budweiser’, para. 44; decision of 20/07/2012, R 2230/2010-4).
All three conditions must be fulfilled. If they are, the limitation on acquiescence will apply only to the contested goods or services for which the later CTM has been used.
The period of limitation in consequence of acquiescence starts running from the time when the proprietor of the earlier trade mark becomes aware of the use of the later CTM. It is at this point that it has the option of not acquiescing in its use and, therefore,
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opposing it or seeking a declaration of invalidity of the later trade mark (judgment of 28/06/2012, T-133/09 and 134/09, ‘B. Antonio Basile 1952’, para. 33).
An example of where the proprietor could reasonably be presumed to be aware of the use of the contested CTM is where both proprietors have exhibited goods or services under the respective marks at the same event.
Article 54 CTMR is not applicable when the contested CTM was filed in bad faith. This exception will only be considered if it is argued and proven by the applicant.
4.5.3.1 Examples rejecting the acquiescence claim
Earlier right Contested sign Case No
BASILE T-133/09 and T-134/09(C-381/12 P dismissed the action)
The appeal applicant did not adduce ‘any evidence capable of establishing when the intervener became aware of the use of the contested trade mark after its registration. It merely stated that the contested trade mark had been used for more than five years in Italy and that the intervener must have been aware of that use. Nevertheless, … less than five years had elapsed between the date of registration of the contested trade mark and the date when the application for a declaration of invalidity was filed, as use of that mark prior to its registration is not relevant since it had not yet been registered’ (para. 34).
Earlier right Contested sign Case No
DIABLO DIABLO R 1022/2011-1
‘In the case at hand, the contested Community trade mark was registered on 11 April 2007 and the request for invalidity was filed on 7 July 2009. Thus, the contested mark had been registered as a Community trade mark for less than five years. Given that one of the conditions provided for in Article 54(2) CTMR is not fulfilled, the Board concludes that the Cancellation Division was right in holding that the applicant has not acquiesced in the use of the CTM’ (paras 25-26).
Earlier right Contested sign Case No
R 2230/2010-4 (confirmed by T-417/12)
‘The late evidence [filed] by the CTM proprietor shows that in 2005 ‘AQUA FLOW’ branded products were being distributed by various companies in Spain including Hydro Sud. It is claimed that the cancellation applicant was aware of that use. The CTM proprietor furnished three invoices to third companies located in Spain: ‘Hydro Sud’, ‘Tonocolor SL Hydro Sud’ and ‘H2O Problematica del Agua’. These invoices are dated 18 June 2004, 31 May 2005 and 31 July 2006 and contain headings with a representation of the mark ‘AQUA FLOW’. However, all these invoices postdate May 2004. Under the assumption that the cancellation applicant had knowledge of them, or of the underlying commercial transactions, this would not be enough for the finding that there was an uninterrupted period of five years preceding the cancellation request in the meaning of Article 54(2) CTMR’ (paras 21-22). Therefore, the CTM proprietor’s claim of acquiescence was dismissed.
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Earlier right Contested sign Case No
PURELL R 1317/2009-1
‘Article 54(2) CTMR requires that the contested Community trade mark be used for five successive years in Germany and that the cancellation applicants have acquiesced in this use for this period. In the present case, the arguments and materials submitted by the parties do not allow for the conclusion that the contested mark was used in Germany and that the cancellation applicants could reasonably be presumed to be aware of that use and to have acquiesced, for five successive years, in that use ... the sole elements that would suggest some connection with Germany and on which the CTM proprietor relies primarily on appeal (i.e. the figures related to the unique local distributor and the Internet excerpts examined in light of the correspondence of 2001 between the parties) are insufficient to hold that the cancellation applicants have acquiesced in the long and well-established honest use of the contested mark in Germany’ (para. 47).
4.5.3.2 Examples (partially) accepting the acquiescence claim
Earlier right Contested sign Case No
CITYBOND CITIBOND
3971 C R 1918/2011-5 (appeal withdrawn; the
Cancellation Division decision has become final)
Taking the evidence as a whole, it showed that all the conditions for acquiescence were met for some of the contested services. In particular, the exchange of letters between the parties showed that the applicant was aware of the existence of the CTM ‘CITIBOND’ for some of the services. Moreover, the extracts and the statutory declaration (2003) included in proceedings in the UK, and the rest of the financial information, demonstrated that the applicant was conscious of the use of the CTM ‘CITIBOND’ in the UK, bearing in mind that the financial market is very specific and highly specialised.
Earlier right Contested sign Case No
Ghibli Et al R 1299/2007-2
The cancellation applicant acknowledged that he was aware of the use of this sign, in Italy. The legal issue was whether – for the purposes of applying Article 53(2) CTMR – the cancellation applicant also had to be aware of the legal status of the sign used, namely, that it had been used as a registered CTM in Italy. In the Board’s view, Article 53(2) CTMR cannot be interpreted to require the CTM proprietor to prove – in addition to the five years’ concurrent use, knowingly tolerated by the proprietor of the earlier right – that the cancellation applicant also knew, for at least five years, that the later mark was protected as a CTM. What matters in this context is the objective circumstance that the sign (the use of which has been knowingly tolerated by the cancellation applicant), must have existed, for at least five years, as a CTM. In view of the evidence in the file, it was proven that when the request for a declaration of invalidity was filed, the cancellation applicant had been aware and tolerated the use of the contested CTM in Italy for more than five years, irrespective of whether or not he was aware of the fact of registration (para. 35 et seq.).
5 Res Judicata
Pursuant to Article 56(3) CTMR, in addition to the particular defences that a CTM proprietor may raise against an application for a declaration of invalidity or against a revocation application (see sections above), an invalidity or revocation application is inadmissible if an application relating to the same subject matter and cause of action, involving the same parties has been adjudicated on by a court in a Member State and a final decision has been taken. This is the so-called ‘triple-identity’ requirement.
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Although Article 56(3) CTMR refers only to final decisions of national courts, the same applies, by analogy and taking into account Articles 83 and 100(2) CTMR, to cases where there is a final decision of the Office or the Court of Justice of the European Union on another cancellation application on the same subject and cause of action involving the same parties (decision of the Cancellation Division of 30/09/2009 in Case 3458 C, para. 10).
The defence of res judicata only applies where there is a previous final decision on the substance in a counterclaim or cancellation application. The bar to admissibility does not apply, for instance, when a cancellation application was withdrawn before the corresponding decision became final (decision of 12/05/2014, R 1616/2013-4, para. 13) or when the previous final decision declared the application inadmissible (e.g. because the contested CTM was not yet registered) and did not adjudicate on the substance.
(i) Same subject matter Res judicata does not apply to a request for revocation where the previous final decision refers to another request for revocation submitted on a different date. This is because the points in time at which the circumstances leading to the revocation have to be established (lack of use, CTM becoming generic or subject to misleading use) are different and the subject matter cannot therefore be deemed to be the same (decision of the Cancellation Division of 31/01/2014 in Case 7333 C).
(ii) Same cause of action A prior decision by the Office in opposition proceedings between the same parties and relating to the same mark does not preclude a later cancellation request based on the same earlier rights (judgment of 14/10/2009, T-140/08, ‘TiMiKinderjoghurt’, para. 36, appeal to the Court dismissed, and judgment of 23/09/2014, T-11/13, ‘MEGO’, para. 12), since the cause of action is different. However, a different outcome in invalidity or revocation proceedings is unlikely to arise except where one or more of the following conditions is fulfilled.
New facts are proven (e.g. proof of use or reputation of the earlier mark, not made available during opposition proceedings).
The manner in which key legal assessments are made has changed (e.g. with regard to the standards for assessing likelihood of confusion), for example as a result of intervening judgments of the Court of Justice of the European Union.
(iii) Same parties The triple identity required by res judicata also means that the parties to both proceedings (the one in question and the one that led to the previous final decision) have to be the same.
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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 1
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 ................................................................ 12
4 Changes in Collective Trade Mark Regulations.................................... 13 4.1 Registration of the amended regulations ...............................................14
5 Division..................................................................................................... 14 5.1 General provisions...................................................................................14 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 ..............................................................................................16 5.4 New file, publication.................................................................................17
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 surrendered by its proprietor in respect of some or all of the goods and services. 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 p artial 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) 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 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 ongoing revocation or invalidity proceedings against the validity of the CTM 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 s ubstance. After the decision on t he 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, R 0463/2009-4 –
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‘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
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 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).
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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.
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.
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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, such as the indication of the percentage of alcohol on a label of a bottle of wine.
Furthermore, Article 48(2) CTMR does not allow for the alteration of the list of goods and services (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 s ervices 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 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
CTM 3 115 532
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MARK AS REGISTERED PROPOSED ALTERATION
CTM 7 087 943
CTM 8 588 329
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.
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.
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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 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. 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.
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4.1 Registration of the amended regulations
Article 67(2), Articles 68 and 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.
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.
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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 CTM 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
• 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 registration 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
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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 CTM. 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 CTM, 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 CTM. 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 original CTM, 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 CTM 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.
Changes in a Registration
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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 t he payment of the fee for its registration was received by the Office prior to the declaration of division, the licence will be r ecorded in the Register of both the original and the divisional CTM if the licence covers goods and/or services in the original and divisional CTM. 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.
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.
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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 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).
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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
• 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
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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).
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
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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 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).
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For full details of Office practice in relation to identity between trade marks filed in black and white and/or greyscale as compared to those filed in colour for the purposes of seniority claims, please see the Guidelines, Part B, Examination, Section 2 Formalities, paragraph 14.2.1, in relation to priority claims, which applies by analogy.
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, 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.
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).
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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.
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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
1.1.1 Assignment ..................................................................................................... 5 1.1.2 Inheritance ...................................................................................................... 5 1.1.3 Merger ............................................................................................................ 5 1.1.4 Applicable Law ............................................................................................... 5
1.2 Application to record a transfer ................................................................6
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 ..............................................8
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.......................................................................10 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........................................................................14 3.7 Procedure to remedy deficiencies ..........................................................14
4 Partial Transfers ...................................................................................... 14 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 ................................16
5 Transfer During the Course of Other Proceedings and Fees Issues .. 17 5.1 Specific issues of partial transfers .........................................................17 5.2 Transfer and inter partes proceedings ...................................................19
6 Entry in the Register, Notification and Publication .............................. 19 6.1 Entry in the Register ................................................................................19 6.2 Notification................................................................................................19 6.3 Publication................................................................................................20
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7 Transfers for Registered Community Designs ..................................... 21 7.1 Rights of prior use for an RCD ................................................................21 7.2 Fees...........................................................................................................22
8 Transfers for International Trade Marks ................................................ 22
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1 Introduction
Articles 1(2), Article 17(1) and 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), Article 24 and Article 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 CTM 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).
1.1.1 Assignment
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.
1.1.2 Inheritance
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.
1.1.3 Merger
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.
1.1.4 Applicable Law
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
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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.
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 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 f ound 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
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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.
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 c hange of country (see, however, decision of 24/10/2013, R 546/2012-1 - ‘LOVE et al’).
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) and (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
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to record a change of name will be rejected. The party concerned may file an appeal against this decision. (See Decision 2009-1 of 16 June 2009 of the Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
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 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) and Rule 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.
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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 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. The party concerned may file an appeal against this decision.
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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(s) (the CTM owner(s) as appearing in the Register or the CTM applicant(s) as appearing in the CTM application file) or by the new proprietor(s) (the ‘successor in title’, i.e. the person(s) who will appear as the proprietor(s) 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.
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
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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.
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
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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.
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. In the case of co-ownership, all co-owners must sign or appoint a common representative.
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:
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• 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
• 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 mark has been subject to multiple successive transfers and/or changes of the owner’s name and t hese have not been pr eviously recorded in the register, it is sufficient to submit the chain of evidence showing the events leading to the relationship between the old proprietor and the new proprietor without the need to file separate individual recordal applications for each change.
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.
When the transfer of the mark is a consequence of a right in rem, levy of execution or insolvency proceedings, the original proprietor will not be able to sign the application. In these cases, the application must be a ccompanied by a final court judgment transferring the ownership of the mark to the beneficiary.
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.
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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. 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 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. The party concerned may file an appeal against this decision.
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
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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.
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
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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. The party concerned may file an appeal against this decision.
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 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. The party concerned may file an appeal against this decision.
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
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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.
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.
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Article 26(2) CTMR Rule 4, Rule 9(3), (5) CTMIR Article 2 (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.
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
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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.
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.
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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).
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.
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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.
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.
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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.
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/).
Licences
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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
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Table of Contents
1 Introduction................................................................................................ 4 1.1 Licence contracts.......................................................................................4 1.2 Applicable Law ...........................................................................................4 1.3 Advantages of the registration of a licence..............................................5
2 Registration of a Licence for a CTM or CTMA......................................... 6 2.1 Form, requests for more than one licence................................................6 2.2 Languages ..................................................................................................6 2.3 Fees.............................................................................................................7 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.............................................................11 2.6 Examination of the request for registration............................................12
2.6.1 Fees.............................................................................................................. 12 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 ...........................16 3.2 Person making the request......................................................................16
3.2.1 Cancellation of a licence............................................................................... 16 3.2.2 Modification of a licence ............................................................................... 17
3.3 Contents of the request ...........................................................................17 3.4 Fees...........................................................................................................18
3.4.1 Cancellation of a licence............................................................................... 18 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........................................................................................20
5 Registration of Licences for Registered Community Designs ............ 20
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5.1 Registered Community designs ..............................................................20 5.2 Multiple applications for registered Community designs...................... 21
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.
1.2 Applicable Law
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
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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.
1.3 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 us e 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.
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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.
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.
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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.
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(s) of the CTM, or b) the proprietor(s) of the CTM jointly with the licensee(s), or c) the licensee(s).
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:
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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 licensee’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 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. In the case of co-ownership, all co-owners must sign or appoint a common representative.
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).
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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 the case of co-ownership, all co-owners must sign or appoint a common representative.
In this case, the signature of both parties constitutes proof of the licence.
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
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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.
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.
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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 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.
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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.
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. The party concerned may file an appeal against this decision. (See Decision 2009-1 of 16 June 2009 of the
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Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
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.
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.
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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.
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.
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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:
• 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.
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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.
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.
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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.
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.
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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 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.
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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 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.
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 transfer of 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 change of ownership is implied (see the Guidelines, Part E, Section 3, CTMs as Objects of Property, Chapter 1, Transfer).
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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).
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.
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.
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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 the 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.
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.
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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
1 Introduction................................................................................................ 4 1.1 Applicable Law ...........................................................................................4 1.2 Advantages of the registration of a right in rem ......................................5
2 Requirements for a Request for the Registration of a Right in Rem..... 6 2.1 Application form and requests for more than one right in rem...............6 2.2 Languages ..................................................................................................6 2.3 Fees.............................................................................................................7 2.4 Applicants and mandatory content of the application.............................7
2.4.1 Applicants ....................................................................................................... 7 2.4.2 Mandatory indications concerning the CTM and the pledgee ........................ 7 2.4.3 Requirements concerning the person who submits the request –
signature, proof of the right in rem, representation ........................................ 8 2.4.3.1 Request submitted by the CTM proprietor alone .........................................8 2.4.3.2 Request submitted jointly by the CTM proprietor and the pledgee..............9 2.4.3.3 Request submitted by the pledgee alone ....................................................9 2.4.3.4 Proof of the right in rem...............................................................................9
2.4.4 Representation ............................................................................................. 10
2.5 Examination of the request for registration............................................10 2.5.1 Fees.............................................................................................................. 10 2.5.2 Examination of the mandatory formalities .................................................... 10
2.6 Registration procedure and publications ...............................................12
3 Procedure for the Cancellation or Modification of the Registration of a Right in Rem ......................................................................................... 13 3.1 Competence, languages, submission of the request.............................13 3.2 Person submitting the request ................................................................13
3.2.1 Cancellation of the registration of a right in rem........................................... 13 3.2.2 Modification of the registration of a right in rem ........................................... 14
3.3 Contents of the request ...........................................................................14 3.4 Fees...........................................................................................................15
3.4.1 Cancellation of the registration of a right in rem........................................... 15 3.4.2 Modification of the registration of a right in rem ........................................... 15
3.5 Examination of the request......................................................................15 3.5.1 Fees.............................................................................................................. 15 3.5.2 Examination by the Office............................................................................. 15
3.6 Registration and publication ...................................................................16
4 Procedure for the Transfer of a Right in Rem ....................................... 16 4.1 Provision for the transfer of a right in rem .............................................16 4.2 Applicable rules........................................................................................16
5 Rights in Rem for Registered Community Designs.............................. 17
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5.1 Multiple applications for registered Community designs...................... 17
6 Rights in Rem for International Trade Marks ........................................ 18
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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: 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).
1.1 Applicable Law
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
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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 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.
1.2 Advantages of the registration of a right in rem
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(s) of the CTM, or b) the proprietor(s) of the CTM jointly with the pledgee(s), or c) the pledgee(s).
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.
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.
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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. In the case of co-ownership, all co-owners must sign or appoint a common representative.
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). 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).
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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 the case of co-ownership, all co-owners must sign or appoint a common representative.
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.
• 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
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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.
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).
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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. The party concerned may file an appeal against this decision. (See Decision 2009-1 of 16 June 2009 of the Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
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.
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
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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 right 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. The party concerned may file an appeal against this decision.
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.
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.
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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 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.
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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.
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.
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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. 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.
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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.
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).
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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.
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:
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• 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.
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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................................................................................................ 4 1.1 Applicable Law ...........................................................................................4 1.2 Advantages of the registration of a levy of execution .............................4
2 Requirements for a Request for the Registration of a Levy of Execution ................................................................................................... 5 2.1 Application form and requests for more than one levy of execution .....5 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 CTM and the beneficiary ................... 7 2.4.3 Requirements concerning the person who submits the request –
signature, proof of the levy of execution, representation ............................... 8 2.4.3.1 Request submitted by the CTM proprietor...................................................8 2.4.3.2 Request submitted by the beneficiary .........................................................8 2.4.3.3 Request submitted by a Court or Authority..................................................8 2.4.3.4 Proof of the levy of execution ......................................................................9
2.4.4 Representation ............................................................................................... 9
2.5 Examination of the request for registration............................................10 2.5.1 Fees.............................................................................................................. 10 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 Levy of Execution................................................................................. 11 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 levy of execution.................................. 12 3.2.2 Modification of the registration of a levy of execution .................................. 12
3.3 Contents of the request ...........................................................................13 3.4 Fees...........................................................................................................13
3.4.1 Cancellation of the registration of a levy of execution.................................. 13 3.4.2 Modification of the registration of a levy of execution .................................. 13
3.5 Examination of the request......................................................................13 3.5.1 Fees.............................................................................................................. 13 3.5.2 Examination by the Office............................................................................. 14
3.6 Registration and publication ...................................................................14
4 Levy of Execution for Registered Community Designs ....................... 14 4.1 Multiple applications for registered Community designs...................... 15
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5 Levy of Execution for International Trade Marks.................................. 15
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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.
1.1 Applicable Law
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.
1.2 Advantages of the registration of a levy of execution
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:
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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:
• 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
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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.
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).
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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.
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(s) 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 t he 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. In the case of co-ownership, all co-owners must sign or appoint a common representative.
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 f iled 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 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. The party concerned may file an appeal against this decision. (See Decision 2009-1 of 16 June
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2009 of the Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
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 the International Register. The use of this form is strongly recommended to avoid
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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 must 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 1.1 Applicable law ............................................................................................3 1.2 Advantages of the registration of insolvency proceedings.....................4
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.............................6
2.4.1 Applicants ....................................................................................................... 6 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............................................. 7 2.4.4 Representation ............................................................................................... 7
2.5 Examination of the request for registration..............................................8 2.6 Registration procedure and publications .................................................9
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 ................................................................10
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...........................................................................................................11
3.4.1 Cancellation of the registration of insolvency proceedings .......................... 11 3.4.2 Modification of the registration of insolvency proceedings........................... 11
3.5 Examination of the request......................................................................11 3.6 Registration and publication ...................................................................11
4 Insolvency Proceedings for International Trade Marks ....................... 12
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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 l iquidator (for terminology in other territories, please see Council Regulation (EC) No 1346/2000 of 29 May 2000 on insolvency proceedings).
1.1 Applicable law
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.
Insolvency Proceedings or Similar Proceedings
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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 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.
1.2 Advantages of the registration of insolvency proceedings
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
Insolvency Proceedings or Similar Proceedings
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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.
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.
Insolvency Proceedings or Similar Proceedings
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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, 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 i ndicated; the indication of the address may be replaced by the indication of the ID number allocated by the Office.
Insolvency Proceedings or Similar Proceedings
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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.
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).
Insolvency Proceedings or Similar Proceedings
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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.
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. The party concerned may file an appeal against this decision. (See Decision 2009-1 of 16 June 2009 of the Presidium of the Boards of Appeal regarding Instructions to Parties in Proceedings before the Boards of Appeal).
Insolvency Proceedings or Similar Proceedings
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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. 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.
Insolvency Proceedings or Similar Proceedings
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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.
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.
Insolvency Proceedings or Similar Proceedings
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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.
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
Insolvency Proceedings or Similar Proceedings
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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 must 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 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....................................................... 4 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 3.3.3.4 Vague terms ..............................................................................................21
3.4 Absolute grounds for refusal...................................................................22 3.5 Third-party observations .........................................................................23 3.6 Opposition ................................................................................................23
3.6.1 Timing ........................................................................................................... 23 3.6.2 Receipt and informing the international holder............................................. 24 3.6.3 Fees.............................................................................................................. 24 3.6.4 Admissibility check ....................................................................................... 24 3.6.5 Language of proceedings ............................................................................. 25 3.6.6 Representation of the IR holder.................................................................... 25
3.6.6.1 Opposition receipts....................................................................................25 3.6.6.2 Notification of commencement of opposition proceedings ........................25
3.6.7 Provisional refusal (based on relative grounds) ........................................... 26
International Marks
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3.6.8 Suspension of opposition where there is a pending provisional refusal on the specification of goods and services and/or absolute grounds................ 26
3.7 Cancellation of the IR or renunciation of the EU designation............... 27 3.8 Limitations of the list of goods and services .........................................27 3.9 Confirmation or withdrawal of provisional refusal and issue of
Statement of Grant of Protection ............................................................28 3.10 Second republication ...............................................................................28 3.11 Transfer of the designation of the EU.....................................................29 3.12 Invalidity, revocation and counterclaims................................................29 3.13 Fee management ......................................................................................30
4 Conversion, Transformation, Replacement .......................................... 30 4.1 Preliminary remarks .................................................................................30 4.2 Conversion................................................................................................31 4.3 Transformation .........................................................................................31
4.3.1 Preliminary remarks...................................................................................... 31 4.3.2 Principle and effects ..................................................................................... 32 4.3.3 Procedure ..................................................................................................... 32 4.3.4 Examination .................................................................................................. 33
4.3.4.1 Application for transformation of IR designating the EU where no particulars have been published................................................................33
4.3.4.2 Application for transformation of IR designating the EU where particulars have been published................................................................33
4.3.5 Transformation and Seniority ....................................................................... 34 4.3.6 Fees.............................................................................................................. 34
4.4 Replacement .............................................................................................34 4.4.1 Preliminary remarks...................................................................................... 34 4.4.2 Principle and effects ..................................................................................... 35 4.4.3 Procedure ..................................................................................................... 35 4.4.4 Fees.............................................................................................................. 36 4.4.5 Publication .................................................................................................... 36 4.4.6 Replacement and seniority ........................................................................... 36 4.4.7 Replacement and transformation ................................................................. 36 4.4.8 Replacement and conversion ....................................................................... 36
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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.
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
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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 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
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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 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);
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• 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.
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.
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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. For full details of the Office practice in relation to the identity of trade marks filed in black and w hite and/or greyscale as compared to those filed in colour please see Part B Section 2 Formalities, paragraph 14.2.1, in relation to priority claims which applies by analogy. 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 s ound mark, only the graphic representation, for example, 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 proposal 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 I R 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.
Where the above occurs as a r esult of a decision (by OHIM or a C TM court), the decision must be final.
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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 t aken 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 aln( � • 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 forwarded 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 filed 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 • the holder is either not cooperating with its licensee or (even more likely) is the
beneficiary of an enforcement measure.
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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 IR in 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 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.
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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, required to be represented (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 consulted for further information. For more details, reference is made to the CTM Bulletin on OHIM’s website.
1 IRs are published first in the International Gazette and then ‘republished’ by OHIM.
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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 indicated, whether the application is for a collective mark, whether there are any seniority claims and whether the list of goods and/or services meets the requirements of clarity and precision as described in Part B.3 Classification.
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. 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
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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 required 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 Article 92 and 93 CTMR. This notification will be recorded in the international register, published in the Gazette and sent 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. 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
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the deficiency. Where the IR holder is required 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 r epresentative in compliance with Article 92 and 93 CTMR. This notification will be recorded in the international register, published in the Gazette and sent 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 must 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. 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 required to be represented in proceedings before the OHIM and its representative before WIPO
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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 required 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 Article 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 required 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 months within which to lodge an appeal. In such cases, WIPO is not informed. The same applies if the seniority claim is abandoned.
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3.3.3.4 Vague terms
Article 36 and Article 145 CTMR Rule 2 and Rule 9 CTMIR
International registrations designating the EU must be examined for the specification of broad or vague terms in the list of goods and services in the same way as direct CTMAs (for details please consult the Guidelines, Part B, Examination, Section 3, Classification).
Where the IR contains vague terms in the list of goods and/or services that lack clarity or precision, the Office 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 2 and Rule 9 CTMIR to remedy the deficiency. Where the IR holder is required 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 Article 92 and Article 93 CTMR. This notification will be r ecorded in the international register, published in the Gazette and sent to the IR holder. The reply to the provisional refusal must be addressed to OHIM.
Once the provisional refusal has been sent, further examination is the same as for a direct CTMA; there will be direct exchanges with the holder or its representative as often as is required. The terms that need to be clarified by the IR holder should always be in the same class as the original wording in the International Register.
If, after re-examining the case, the objection is waived or 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 Office will issue an interim status of the mark to WIPO, provided that no other provisional refusal is pending and that the opposition period is still running; the IR will then proceed.
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 fails to respond to the objection, the provisional refusal will be confirmed. In other words, if the provisional refusal concerned only some of the goods and services, only those goods and services will be refused but the remaining goods and services will be accepted. The IR holder will be given two months within which to lodge an appeal.
Once the decision is final and provided that there is a total refusal, OHIM will inform WIPO that the provisional refusal is confirmed. If the refusal is only partial, the communication to WIPO will be issued once all the other procedures (absolute grounds/oppositions) have been completed or the opposition period is over without any opposition being received (see paragraph 3.9 below).
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3.4 Absolute grounds for refusal
Article 154(1) CTMR, Rule 18 bis (1) CR Rule 112 (1),(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, and provided that no other provisional refusal is pending, it will send an interim status of the mark to WIPO, indicating that the ex-officio examination has been c ompleted, but that the IR is still open to 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 no other provisional refusal is pending and 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 ex Officio examination shall be considered concluded. An interim status of the mark will therefore be i ssued automatically. 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 fails to respond to the objection, the refusal will be confirmed. In other words, if the provisional refusal concerned only some of the goods and services, only those goods and services will be refused but the remaining goods and services will be accepted. The IR holder will be given two months within which to lodge an appeal.
Once the decision is final and provided that there is a total refusal, 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 (specification of goods and s ervices/oppositions) are terminated or the opposition period is over with no opposition received (see point 3.9 below).
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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.
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
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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. 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.
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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).
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 required to be represented before OHIM pursuant to Article 92(2) CTMR.
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• If the IR holder is not required 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 required 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 may be partial or total. It will contain the earlier rights invoked, the relevant list of goods and s ervices on which the opposition is based and, in the case of a partial refusal, the list of goods and services against which the opposition is directed.
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.
3.6.8 Suspension of opposition where there is a pending provisional refusal on the specification of goods and services and/or absolute grounds
Rule 18(2), 20 (7) CTMIR
If the opposition was filed after OHIM had already sent a notification of provisional refusal on the specification of goods and s ervices (see paragraph 3.3.3.4 above) and/or absolute grounds (see paragraph 3.4 above) in relation to the same goods and services, OHIM will inform WIPO of the provisional refusal and c ommunicate to the parties that, as from the date of the communication, the opposition procedure is
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suspended until a final decision on the specification of goods and services and/or absolute grounds is issued.
If the provisional refusal on the specification of goods and s ervices and/or 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 the specification of goods and services and/or 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 the specification of goods and services and/or 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 receipt 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 will 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 Article 9 bis iii MP, Rule 25 CR
OHIM cannot communicate limitations as such to WIPO.
Therefore, further to a p rovisional refusal on the specification of goods and services and/or 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 simply confirm 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. WIPO will record the limitation and forward it to OHIM for examination.
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
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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 withdrawal of provisional refusal and issue of Statement of Grant of Protection
Rules 113(2)(a), 115(5)(a), 116(1) CTMIR, Rule 18ter (1) (2) (3) CR
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 conclusion 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.
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.
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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 must still be ef fective when the transformation is requested, that is, it must not
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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(2)(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 des ignated, 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 s ervices. 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
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(Rule 21 CR). The purpose of this procedure is to ensure that the relevant information 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 nar rower. If the list is narrower a de ficiency will be issued. This deficiency may normally be overcome by partially surrendering the goods and services of the CTM falling outside the scope of the IR.
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.
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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 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................................................................... 9 2.1 Introduction ................................................................................................9 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 .........................................................13 2.7.1 Registration................................................................................................... 13 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 ..........................31 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 ..............................................................................34
5.6.1 Repeating surface patterns .......................................................................... 34 5.6.2 Typographic typefaces ................................................................................. 35
6 Additional Elements that an Application Must or May Contain........... 35 6.1 Mandatory requirements..........................................................................35
6.1.1 Identification of the applicant and its representative .................................... 36 6.1.2 Specification of the languages...................................................................... 36 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...........................................37 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 ....................................................................................41 6.2.1 Priority and exhibition priority ....................................................................... 42
6.2.1.1 Priority .......................................................................................................42 6.2.1.2 Exhibition priority .......................................................................................47
6.2.2 Description.................................................................................................... 49 6.2.3 Indication of the Locarno Classification........................................................ 49
6.2.3.1 General principles .....................................................................................49 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...............................................................................51 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..........................58
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.................................................................69 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............................................................................71 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.............................................72 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), amended 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 6/2002 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 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).
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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.
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)
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(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.
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).
4 https://oami.europa.eu/ohimportal/en/forms-and-filings
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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. 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.
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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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.
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).
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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 dee med 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.
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.
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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 debi ted from a current account with the Office or paid by credit
card • no deficiency is found in the application.
2.7.2 Examination report and informal communication on p ossible 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 the 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 date, unless a copy of the previous application(s), or a declaration that the priority claim is withdrawn, is received earlier.
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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.
If the applicant does not respond to the Office’s communication, and the payment remains incomplete, a deficiency letter will be sent.
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The above also applies to credit card payments where the transaction fails due t o reasons not attributable to the Office. In such cases, the applicant will have to use another method of payment.
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 neutral 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 • submitting new views on a neutral background
or • 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 leaves doubt as to whether the visible correction is or not an ornamental feature
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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 c onsidered ‘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. Even if the shape at issue deviates from that of the common corresponding living organism, the design should be refused if nothing suggests prima facie that the shape is the result of a manual or industrial process (see by analogy decision of 18/02/2013, R 0595/2012-3 – ‘Groente en fruit’, para. 11). 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 be aring 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 seven 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:
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.
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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.
RCD 164611-0004, courtesy of Valio Oy (designer: Aki Liukko)
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RCD 2038216-0001 courtesy of BMC S.r.l.
5.3.3 Colour shading and blurring
Colour shading and blurring 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).
RCD 1868753-0001, courtesy of Viskadalens Produktion AB (designer: Johan Larsson)
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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).
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.
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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.
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).
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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.
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.
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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) 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.
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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).
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.
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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 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.).
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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’.
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.
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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 subclass 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 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);
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• 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.
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
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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 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;
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• 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, 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.
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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 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.
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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’.
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) 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.
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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.
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 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).
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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;
• 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).
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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 des cription 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.
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
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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
(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).
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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).
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 e ven 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.
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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 (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).
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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 deemed not to have been f iled (Article 15(3)(b) 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).
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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).
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).
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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 des ign 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.
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).
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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).
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.
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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.
For the fee payable with respect to an international application designating the European Union see paragraph 12.1.2.3 Fee.
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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.
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 r efund of fees paid are explained in the Guidelines for examination on Community trade marks, Part A, General rules, Section 3, Payment of fees, costs and charges.
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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 multiple 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 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.
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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:
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.
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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; (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;
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(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.
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.
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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 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)
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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.
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.
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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 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).
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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).
However, a request for renunciation of an international 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).
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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; 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.
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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. Changes in the representatives are published in Part B.9 of the Community designs Bulletin.
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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.
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.
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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 Geneva Act of 02/07/1999 of the Hague Agreement concerning the international registration of industrial designs.
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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).
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
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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.
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:
6 See www.wipo.int/hague/en/fees
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• 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).
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).
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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 holder can inform the Office by submitting a c orresponding statement (Article 11a(6) CDIR).
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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 or does not withdraw the application, 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 language, an application for a declaration of invalidity against such an international registration must be filed in this language.
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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 5.1). 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 grace period (see paragraphs 5.5 and 5.6 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 5.4).
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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.
OFICINA DE ARMONIZACIÓN DEL MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS)
El Presidente
DECISIÓN Nº EX-15-2 DEL PRESIDENTE DE LA OFICINA De 8 de julio de 2015
por la que se adoptan las 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
EL PRESIDENTE DE LA OFICINA DE ARMONIZACIÓN DEL MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS)
Visto el Reglamento (CE) nº 207/2009 del Consejo, de 26 de febrero de 2009, sobre la marca comunitaria (en lo sucesivo, «RMC») y, en particular, su artículo 124, apartado 2, letra a), y el Reglamento (CE) nº 6/2002 del Consejo, de 12 de diciembre de 2001, sobre los dibujos y modelos comunitarios (en lo sucesivo, «RDC») y, en particular, su artículo 100,
Previa consulta al Consejo de Administración, de conformidad con el artículo 126, apartado 4, del RMC y el artículo 101, letra b), del RDC.
HA ADOPTADO LA SIGUIENTE DECISIÓN:
Artículo 1
Quedan adoptadas las 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 que figuran en anexo a la presente Decisión.
Nuevas partes de las Directrices:
A) MARCA COMUNITARIA:
Parte A: Disposiciones generales Sección 1: Medios de comunicación, plazos Sección 2: Principios generales que han de respetarse en el procedimiento Sección 4: Lengua de procedimiento Sección 6: Revocación de resoluciones, anulación de inscripciones en el registro y correcciones de errores Sección 7: Revisión Sección 8: Restitutio in Integrum Sección 9: Ampliación
Parte B: Examen Sección 1: Procedimientos Sección 3: Clasificación
Sección 4: Motivos de denegación absolutos, artículo 7, apartado 1, letras f), g), h), i, j) y k); Marcas colectivas
Parte C: Oposición Sección 3: Solicitud presentada por el agente sin el consentimiento del titular de la marca (Artículo 8, apartado 3, del RMC) Sección 4: Derechos contemplados en el artículo 8, apartado 4 del RMC Sección 5: Marcas renombradas, artículo 8, apartado 5 del RMC
Parte D: Anulación Sección 2: Normas sustantivas Parte E: Operaciones de registro Sección 1:Cambios en un registro Sección 3: La marca comunitaria como objeto de propiedad
Capítulo 1: Cesión Capítulo 2: Licencias Capítulo 3: Derechos reales Capítulo 4: Ejecución forzosa Capítulo 5: Procedimientos de insolvencia o similares
Parte M: Marcas Internacionales
B) DIBUJO O MODELO COMUNITARIO REGISTRADO
Examen de las solicitudes de Dibujos y Modelos Comunitarios Registrados Renovación de Dibujos y Modelos Comunitarios Registrados
Artículo 2
Las prácticas de la Oficina recogidas en las Directrices anteriores, en la medida en que correspondan a las Partes mencionadas en el artículo 1, quedan derogadas.
Artículo 3
Las Directrices mencionadas en el artículo 1, apartado 1, se publicarán en el Diario Oficial de la Oficina.
Artículo 4
La presente Decisión se publicará en el Diario Oficial de la Oficina y entrará en vigor el 1 de agosto de 2015.
Hecho en Alicante, el 8 de julio de 2015
António Campinos Presidente
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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 telefax (fax) ..................................................................................... 4 3.1.2 Por medios electrónicos ................................................................................. 5 3.1.3 Por vía postal, servicio de mensajería o entrega directa ............................... 5
3.2 Notificación por la Oficina .........................................................................6 3.2.1 Mediante fax ................................................................................................... 6 3.2.2 Notificación por vía postal .............................................................................. 7 3.2.3 Notificación mediante depósito en un buzón de la Oficina ............................ 7 3.2.4 Notificación mediante entrega directa ............................................................ 7 3.2.5 Notificación a través del sitio web oficial de la Oficina ................................... 8 3.2.6 Notificación mediante notificación pública...................................................... 8
3.3 Destinatarios............................................................................................... 8
4 Plazos ......................................................................................................... 9 4.1 Plazos fijados por la Oficina......................................................................9
4.1.1 Duración de los plazos fijados por la Oficina ................................................. 9 4.1.2 Vencimiento de los plazos............................................................................ 10 4.1.3 Prórroga de los plazos.................................................................................. 10 4.1.4 Prosecución del procedimiento .................................................................... 11 4.1.5 Restitutio in integrum.................................................................................... 13
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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 parte, 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 y regla 83 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 la Oficina mediante correo 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 viernes, 8:30 – 13:30 y 15:00 – 17:00), o por fax. Las solicitudes de marcas comunitarias, las oposiciones y las renovaciones también se podrán presentar a través de la página web oficial de la 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 única 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 MM 4 de la Organización Mundial de la Propiedad Intelectual (OMPI) o utilizando la versión EM 2 o EM 4 de la Oficina. 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.
La fecha de notificación o de comunicación de un documento es la fecha en que el documento fue recibido o se considera haber sido recibido por el destinatario (incluida la Oficina) (sentencia de 30/01/2014, en el asunto C-324-P, «Patricia Rocha», apdo. 43). El momento exacto en el que se considerará que la recepción ha tenido lugar dependerá del modo de notificación o de comunicación.
3.1 Transmisiones hacia la Oficina
Regla 5, apartado 1, regla 79, regla 79bis y reglas 80 y 82 del REMC Decisión nº EX-13-2 del Presidente de la Oficina
3.1.1 Mediante telefax (fax)
Cuando se comunique un documento a la Oficina mediante fax, el original ha de ir firmado de forma que en el fax recibido por la Oficina aparezca la representación gráfica de la firma. Si un documento transmitido a la Oficina no va 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 por fax o presente el original firmado del documento en cuestión a la Oficina por vía postal, entrega directa u otros medios 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 04/07/2012, R 2305/2010-4, «Houbigant/PARFUMS HOUBIGANT PARIS et al»).
Para más información respecto a la fecha de presentación, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades.
En el caso de envíos de documentos 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 envío del fax, salvo disposición en contrario del RMC. En este caso, se
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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. La hora de recepción es la hora local de Alicante (España) en que la Oficina recibió el fax.
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 Oficina por elementos electrónicos, se considerará que la mención del nombre del remitente equivale a su firma.
La Decisión del Presidente de la Oficina resulta decisiva a la hora de determinar si, y en qué medida y en qué condiciones técnicas, las comunicaciones podrán enviarse por medios electrónicos a la Oficina. En la Decisión nº EX-13-2, según la cual la hora de recepción de las solicitudes, comunicaciones u otros documentos presentados de forma electrónica a través del sitio web oficial de la OAMI es la hora local de Alicante (España) en que se valide dicha recepción, se hace especial referencia a esta cuestión.
En el caso de que una comunicación electrónica sea incompleta o ilegible o de que la Oficina tenga dudas razonables sobre la precisión de la transmisión, se aplicará por analogía la regla 80, apartado 2, del REMC.
3.1.3 Por vía postal, servicio de mensajería o entrega directa
Los documentos enviados por vía postal, servicio de mensajería o mediante entrega directa 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.
La fecha de recepción es la fecha en que la Oficina recibe la comunicación. La hora de recepción se marca según la hora local de Alicante (España).
Para más información sobre las copias de los documentos presentados, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales, 4.2 Justificación.
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3.2 Notificación por la Oficina
Reglas 55 y 61-69 del REMC Decisión nº EX-97-1 del Presidente de la Oficina Decisión nº EX-05-6 del Presidente de la Oficina Decisión nº EX-13-2 del Presidente de la Oficina
Las comunicaciones escritas de la Oficina con la parte o las partes en un procedimiento serán «notificadas». Un documento se considera notificado cuando ha sido recibido o se ha considerado que ha sido recibido por el destinatario, con independencia de si se ha avisado o no al destinatario de ello. Por consiguiente, la fecha de notificación de un documento es la fecha en que dicho documento ha sido accesible para el destinatario o le ha llegado a este y no la fecha en que fue enviado ni la fecha en que el destinatario tiene conocimiento efectivo de la notificación. Sin embargo, el momento en que se considerará que se ha producido exactamente la recepción dependerá del modo de notificación.
Excepto en el caso de notificación pública, la Oficina podrá elegir libremente el medio de notificación (regla 61, apartado 3, del REMC) aunque algunos modos de notificación requieren el consentimiento previo de la parte interesada.
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. Si esto queda demostrado, la Oficina volverá a notificar el(los) documento(s) (sentencia de 13/01/2011, en el asunto T-28/09, «PINE TREE», apdo. 32). Por el contrario, en el caso de que no se siga el procedimiento adecuado de notificación, el documento se considerará notificado a pesar de todo si la Oficina puede demostrar que el destinatario recibió realmente el documento.
Toda comunicación o notificación de la Oficina indicará el departamento o la división de la Oficina y el(los) nombre(s) del(de los) funcionario(s) responsable(s). Estos documentos deberán ir firmados por el(los) funcionario(s) o, en su caso, llevar el sello imprimido o estampado de la Oficina. En el caso de los documentos transmitidos mediante fax, la información adicional se proporcionará con arreglo a lo dispuesto en el apartado 3.2.1.
3.2.1 Mediante fax
La Oficina puede hacer uso de la notificación mediante fax si la parte interesada ha indicado un número de fax, con la excepción de las notificaciones que incluyen elementos de color.
Se considerará que la notificación ha tenido lugar en la fecha en que el telefax del destinatario la recibe. La Oficina conservará los registros de fax a fin de poder demostrar la hora y el contenido de la transmisión. A falta de pruebas en contrario o información que plantee dudas sobre la correcta transmisión de la notificación, la fecha de recepción del fax podrá establecerse mediante el informe de transmisión de la Oficina (sentencia de 13/01/2011, en el asunto T-28/09, «PINE TREE», apdo. 32).
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Con arreglo a la Decisión nº EX-97/1 del Presidente de la Oficina, en caso de que los documentos se transmitan mediante fax, se considerará identificación suficiente el nombre del departamento o de la división que figura en el encabezamiento, junto con el nombre del(de los) funcionario(s) indicados al final del documento.
3.2.2 Notificación por vía postal
El procedimiento de notificación por vía postal dependerá de 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.
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 haya que notificar, la Oficina enviará los documentos por correo ordinario.
La notificación se considerará hecha el décimo día a partir 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. Las indicaciones que plantean una duda razonable sobre la correcta recepción se considerarán prueba suficiente (sentencia de 25/10/2012, en el asunto T-191/11, «Miura», apdo. 34). En caso de litigio, la Oficina deberá establecer que la notificación llegó a su destino o establecer la fecha en que fue entregada al destinatario.
La notificación mediante carta certificada se considerará realizada incluso si el destinatario rehusa aceptar la carta.
3.2.3 Notificación mediante depósito en un buzón de la Oficina
En el caso de los destinatarios que hayan decidido mantener un buzón en la Oficina, la notificación también podrá realizarse mediante el depósito en dicho 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 Notificación 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 excepción. Se conservará en el expediente una copia de dicho documento, con acuse de recibo fechado y firmado por el destinatario.
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3.2.5 Notificación 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. La fecha 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»).
Se considerará hecha la notificación del documento cinco días después de su colocación en el buzón de entrada del titular, independientemente de que el destinatario haya abierto y leído o no el documento (Artículo 4, apartado 4, de la Decisión del Presidente EX-13-2).
3.2.6 Notificación 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 la Oficina por el servicio de correos con la indicación «desconocido en la 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 mes después del día en que el anuncio se haya hecho público en Internet.
3.3 Destinatarios
Reglas 67 y 77 del REMC Artículos 92 y 93 del RMC
Todas las notificaciones se harán al representante (sentencias de 12/07/2012, T-279/09, «100% Capri» y de 25/04/2012, en el asunto T-326/11, «BrainLAB»), 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 ambas partes en un procedimiento inter partes, para que dicha persona acepte la representación. No será preciso presentar un poder para ser receptor de las notificaciones de la 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.
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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.
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 establecimiento industrial en la Unión Europea, los plazos no podrán ser inferiores a dos 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.
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4.1.2 Vencimiento de los plazos
Cuando se establece un plazo en una notificación 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 que 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.
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 (hora local de Alicante, (España)).
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 (los sábados, domingos y días festivos), se prorrogará hasta el primer día hábil siguiente. A ese respecto, el Presidente de la Oficina fijará los días en los que la Oficina está cerrada, antes del comienzo de cada año civil. 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 o de la conexión de la Oficina a los medios de comunicación electrónica autorizados, el plazo que venza en ese periodo se prorrogará hasta el primer día hábil siguiente al periodo de interrupción. Estos periodos serán determinados por el Presidente de la 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.
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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 contrario 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 a) le impidieron realizar la acción necesaria durante los dos plazos anteriores (es decir, el plazo original más la primera prórroga) y b) que todavía impiden al solicitante 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 campo (tal como se indica en los documentos adjuntos); como consecuencia de lo anterior, es necesaria una segunda 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.
Cuando una solicitud de prórroga de un plazo prorrogable presentada antes del vencimiento del mismo no es aceptada, se le concederá a la parte afectada al menos un día para cumplir el plazo, incluso si dicha solicitud de prórroga se realiza en el último día del plazo.
4.1.4 Prosecución del procedimiento
Artículo 82 del RMC Comunicación nº 06/05 del Presidente de la Oficina
Las expresiones «continuación del procedimiento» y «prosecución del procedimiento» son equivalentes.
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El artículo 82 del RMC establece la posibilidad de que prosiga el procedimiento cuando han expirado los plazos aunque excluye varios plazos previstos en algunos artículos del RMC y del REMC. La Comunicación nº 06/05 del Presidente de la Oficina de 16/09/2005 relativa al restablecimiento de plazos expirados indica que, con algunas pocas excepciones, la mayoría de estas excepciones se explican por sí mismas.
Los plazos excluidos son los siguientes:
Los plazos previstos en el artículo 81 del RMC, evitando la duplicación de los medios de reparación para un mismo plazo;
Los plazos contemplados en el artículo 112 del RMC, es decir durante los tres meses de que el solicitante o titular dispone para solicitar la transformación y pagar la tasa correspondiente;
El periodo de oposición y el plazo para pagar la tasa de oposición establecida en el artículo 41 del RMC;
Los plazos establecidos en el artículo 42 del RMC, es decir, los plazos establecidos por la Oficina para que las partes presenten observaciones en el marco del procedimiento de oposición. Esto comprende 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;
○ 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.
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Los plazos establecidos en el artículo 25, apartado 3, el artículo 27, el artículo 29, apartado 1, el artículo 33, apartado 1, el artículo 36, apartado 2, y el artículo 47, apartado 3, los artículos 60 y 62, el artículo 65, apartado 5, y el artículo 82, y los plazos establecidos en el REMC para reivindicar, después de que se haya presentado la solicitud, la prioridad en el sentido del artículo 30, la prioridad por exposición en el sentido del artículo 33 o la antigüedad en el sentido del artículo 34.
El artículo 82 del RMC no excluye 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 podrá 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 vía 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
Principios generales que han de respetarse en el procedimiento
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Índice
1 Motivación suficiente ................................................................................ 3
2 Derecho a ser oído .................................................................................... 3
3 Principios generales del Derecho de la UE ............................................. 4
4 Diligencias de instrucción ........................................................................ 5 4.1 Pruebas escritas......................................................................................... 6 4.2 Prueba oral..................................................................................................6 4.3 Diligencias de instrucción específicas ..................................................... 7 4.3.1 Prueba pericial............................................................................................ 7 por la Oficina ......................................................................................................7
4.3.2 Declaraciones juradas ............................................................................... 7 3.3 Diligencias de comprobación....................................................................8 4.4 Costes de la instrucción ............................................................................8
5 Procedimiento oral .................................................................................... 9 5.1 Apertura del procedimiento oral ............................................................... 9 5.2 Desarrollo del procedimiento oral........................................................... 10 5.3 Acta de las diligencias de instrucción y del procedimiento.................. 10
6 Resoluciones ........................................................................................... 10 6.1 Contenido ................................................................................................. 10 6.2 Reparto de gastos .................................................................................... 11
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Artículos 75 a 78 y artículo 85 del RMC
1 Motivación suficiente
Las resoluciones adoptadas por la Oficina deberán ser escritas y motivadas. Y ello por un doble motivo: explicar a las partes interesadas por qué se adoptó la medida de forma que puedan proteger 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 12/07/2012, T-389/11, «GUDDY», apartado 16, y sentencia de 22/05/2012, en el asunto T-585/10, «PENTEO», apartado 37, así como 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, entre otras, las sentencias de 18/01/2013, T-137/12, «VIBRATOR», apartados 41 y 42; de 20/02/2013, en el asunto T-378/11, «MEDINET», apartado 17; de 3/07/2013, en el asunto T-236/12, «NEO», apartados 57 y 58; de 16/05/2012, en el asunto T-580/10, «Kindertraum», apartado 28; o la sentencia de 10/10/2012, en el asunto T-569/10, «BIMBO DOUGHNUTS», apartados 42 a 46, confirmada por la sentencia de 8/05/2014, en el asunto C-591/12 P).
2 Derecho a ser oído
De acuerdo con el principio general del derecho de defensa, las personas cuyos intereses se ven afectados por una resolución adoptada por una autoridad pública deben tener la oportunidad de expresar su punto de vista. Por lo tanto, en todos los procedimientos ante la Oficina, las partes siempre dispondrán de la posibilidad de expresar sus posiciones y sus alegaciones.
Las resoluciones se basarán únicamente en motivos o pruebas respecto a los cuales las partes implicadas hayan tenido la oportunidad de presentar sus comentarios. El derecho de defensa exige, por tanto, que se reciba una comunicación (sentencia de 25/10/2012, en el asunto T-191/11, «Miura», apartado 25).
El derecho a ser oído se extiende a todos los elementos de hecho o de Derecho, junto con las pruebas que constituyen el fundamento de la resolución. Sin embargo, no se aplica a la posición final que se adoptará. Por lo tanto, la Oficina no está obligada a informar a las partes de su opinión jurídica antes de adoptar una resolución y les dará la posibilidad de presentar sus observaciones sobre dicha posición o incluso presentar pruebas adicionales (véase, entre otras, las sentencias de 14/06/2012, en el asunto T-293/10, «Color per se», apartado. 46 in fine; de 08/03/2012, en el asunto T-298/10, «BIODANZA», apartado 101; y la sentencia de 20/03/2013, en el asunto T-277/12, «Caffè Kimbo», apartados 45 y 46).
La Oficina examinará de oficio los hechos de los procedimientos presentados ante ella, aunque en los procedimientos sobre motivos de denegación relativos, limitará su examen a los medios alegados y a las solicitudes presentadas por las partes (esto también es aplicable a los procedimientos de anulación).
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Dicha limitación no impide que la Oficina tome en consideración, además de los hechos presentados expresamente por las partes, otros hechos bien conocidos, es decir, aquellos que probablemente conoce todo el mundo o que pueden ser conocidos a partir de fuentes accesibles al gran público o aquellos que resultan de la experiencia práctica generalmente adquirida de la comercialización de productos y que cualquier persona puede conocer y, en particular, los consumidores de dichos productos. Por consiguiente, la Oficina podrá utilizar como base de su razonamiento estos hechos conocidos.
No se exige a la Oficina que demuestre la exactitud de dichos hechos notoriamente conocidos y, por tanto, no está obligada a aportar ejemplos de dicha experiencia práctica, sino que es la parte afectada quien debe presentar pruebas que la refuten (véanse, entre otras, la sentencia de 20/03/2013, en el asunto T-277/12, «Caffè Kimbo», apartado 46; la sentencia de 11/07/2013, en el asunto T-208/12, «Rote Schnürsenkelenden», apartado 24; la sentencia de 21/02/2013, en el asunto T-427/11, «Bioderma», apartados 19 a 22; la sentencia de 08/02/2013, en el asunto T-33/12, «Medigym», apartados 20 y 25; la sentencia de 07/12/2012, en el asunto T-42/09, «Quadratum», apartado 73; y la sentencia de 19/09/2012, en el asunto T-231/11, «Stoffmuster», apartado 51).
Sin embargo, en los procedimientos ex parte, cuando la Oficina reúne de oficio hechos que no son notoriamente conocidos y que pretende utilizar como base para su resolución, tiene la obligación de notificar dichos hechos a la parte para que la parte pueda presentar su opinión al respecto.
Si se han presentado documentos o alegaciones después de que haya expirado el plazo establecido por la Oficina, estos se considerarán, en principio, presentados fuera de plazo y no se tendrán en cuenta. Para más información, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales, 4.5.1 Prueba adicionale de la prueba de uso y las Directrices, Parte C, Oposición, Sección 6, Prueba del uso, 3.3.1 Plazo para presentar la prueba de uso.
Sin embargo, la Oficina tomará en consideración las cuestiones jurídicas, con independencia de si han sido o no alegadas por las partes.
También se tendrán en cuenta las circunstancias que varían en el curso 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 se 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 (véanse, entre otras, la sentencia de 24/01/2012, en el asunto T-260/08, «VISUAL MAP», la sentencia de 23/01/2014, en el asunto T-68/13, «CARE TO CARE», apartado 51 y la sentencia de 10/03/2011, en el asunto C-51/10 P, «1000», apartado 73).
Por razones de seguridad jurídica y de buena administración, deberá realizarse un examen completo y exigente de todas las solicitudes de marcas para impedir que se registren marcas de forma no adecuada. Dicho examen se llevará a cabo en cada caso individual.
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La legitimidad de las resoluciones de la Oficina deberá evaluarse únicamente sobre la base de los reglamentos comunitarios, tal como han sido interpretados por la judicatura de la Unión Europea. En consecuencia, la OAMI no está obligada ni por su práctica anterior de adopción de decisiones ni por las resoluciones adoptadas en un Estado miembro o en un tercer país, de que el signo en cuestión pueda registrarse como marca nacional. Este es el caso incluso si dicha resolución se adoptó en un país que pertenece a un área lingüística en la que se originó el signo denominativo en cuestión (sentencia de 16/05/2013, en el asunto T-356/11, «Equipo», apartado 7).
Sin embargo, a la luz de los principios de igualdad de trato y de buena administración, la OAMI tendrá en cuenta las decisiones ya adoptadas en relación con solicitudes similares y deberá considerar cuidadosamente si decidir o no en el mismo sentido (sentencia de 10/03/2011, en el asunto C-51/10, «1000», apartados 74 a 75; sentencia de 27/02/2014, en el asunto T-225/12, «LIDL express», apartado 56; sentencia de 23/01/2014, en el asunto T-68/13, «CARE TO CARE», apartado 51; y sentencia de 12/12/2013, en el asunto T-156/12, «Oval», apartado 28).
Asimismo, el principio de igualdad de trato y de buena administración deberá aplicarse 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 (sentencia de 23/01/2014, en el asunto T-68/13, «CARE TO CARE», apartado 51; sentencia de 12/12/2013, en el asunto T-156/12, «Oval», apartado 29; sentencia de 02/05/2012, en el asunto T-435/11, «UniversalPHOLED», apartado 38; y la sentencia de 10/03/2011, en el asunto C-51/10, «1000», apartados 76 a 77).
4 Diligencias de instrucción
Artículos 77 y 78 del RMC Reglas 56 a60 del REMC Decisión nº EX-99-1, modificada por la Decisión nº EX-03/2 de 20/01/2003
En todos los procedimientos ante la Oficina, se podrán llevar a cabo 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; solicitudes de información; presentación de documentos y de muestras; audiencia de testigos; peritaje; declaraciones escritas prestadas bajo juramento, o declaraciones 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 documentos 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.
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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.
Si la Oficina deniega una solicitud de diligencia de instrucción solo podrá recurrirse junto con el recurso contra 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 las declaraciones escritas prestadas bajo juramento o las declaraciones solemnes o que, con arreglo a la 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.
Para más información sobre el procedimiento oral, véase el apartado 5.
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.
La Oficina solo decidirá practicar esas pruebas a título excepcional, debido, en particular, a su lentitud, que puede prolongar un procedimiento, y a sus costes, 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.
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 las partes, que podrán estar presentes y formular preguntas a la persona oída.
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4.3 Diligencias de instrucción específicas
4.3.1 Prueba pericial por la Oficina
El peritaje o las diligencias de comprobación solo deberán aplicarse en última instancia porque implican importantes gastos y prolongan el procedimiento.
La Oficina decidirá si procede pedir la opinión de un perito, y qué persona se nombra como perito. Sin embargo, la Oficina no tiene una lista de peritos, dado que el uso de peritos como diligencia de prueba tiene carácter excepcional.
En el mandato de dicho perito deberá indicarse:
la descripción precisa de su misión; el plazo para presentar el informe; los nombres de las partes en el procedimiento; los datos de los gastos que debe reembolsarle la Oficina.
Tan pronto como reciba el informe del perito, la Oficina transmitirá a las 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 perito por incompetencia, porque tenga un interés personal en el asunto, porque haya intervenido ya en el litigio o porque infunda 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.
4.3.2 Declaraciones juradas
Las declaraciones escritas bajo juramento o solemnes que produzcan efectos similares según la legislación del Estado en el que se efectúe la declaración se admiten igualmente como pruebas, siempre que las aporte una parte.
Para que una declaración se considere jurada o solemne, las partes deberán entender que la declaración falsa se considera delito penal con arreglo a la legislación del Estado miembro donde se redacta el documento. Cuando no sea este el caso, el documento se considerará simplemente otro documento o declaración escrita (sentencia de 28/03/2012, en el asunto T-214/08, «Outburst», apartado 32 y la jurisprudencia citada en la misma).
El valor probatorio de una declaración jurada es relativo (sentencia de 28/03/2012, T-214/08, «Outburst», ( apartado 33). Al apreciar el valor probatorio de dicho documento, la Oficina considerará, en primer lugar, la verosimilitud de la información
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que contiene. Será necesario que tenga en cuenta, en especial, el origen del documento, las circunstancias de su elaboración, así como su destinatario, y preguntarse si, de acuerdo con su contenido, parece razonable y fidedigno (sentencia de 07/06/2005, en el asunto T-303/03, «Salvita», apartado 42 y la jurisprudencia citada en la sentencia). Las declaraciones juradas que contienen información concreta y detallada y/o avalada por otras pruebas tienen un mayor valor probatorio que las declaraciones muy generales y redactadas en términos abstractos.
El mero hecho de que las declaraciones juradas de terceros se efectúen conforme a un borrador predeterminado preparado por la parte (partes) interesada(s), no afecta en sí mismo a su fiabilidad y credibilidad, y no pone en cuestión su valor probatorio dado que el signatario certifica la veracidad de sus contenidos (sentencia de 16/09/2013, en el asunto T-200/10, «Avery Dennison», apartado 73)
Si dichos documentos se elaboraron a partir de un borrador preparado por la parte (partes), esto no afectará por sí solo a la fiabilidad y credibilidad de los documentos (sentencia de 16/09/2013, en el asunto T-200/10, «AVERY DENNISON», apartado 73).
4.3.3 Diligencias de comprobación
Solo en circunstancias muy excepcionales, la Oficina considerará necesario proceder a diligencias de comprobación in situ. En ese caso, deberá adoptar, como en cualquier otra resolución de la Oficina, el tipo de diligencia con la que se pretende obtener pruebas (en este caso, las diligencias de comprobación), los hechos pertinentes que se desean probar, la fecha, la hora y el lugar de la diligencia de comprobación.
La fecha fijada de la diligencia de comprobación deberá conceder a la parte interesada un tiempo suficiente para prepararla. Si por alguna razón no pudiera practicarse la diligencia, el procedimiento continuará sobre la base de la prueba que obra en el expediente.
4.4 Costes 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 los costes.
Los testigos y peritos citados u oídos por la Oficina tendrán derecho al reembolso de los gastos de desplazamiento y de estancia, incluido un anticipo. Tendrán igualmente derecho a una indemnización apropiada por lucro cesante o a la remuneración de su trabajo.
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 la Oficina. Para más información, véase la Decisión nº EX-99-1 del Presidente de la Oficina, modificada por la Decisión nº EX-03-2, de 20/01/2003.
Cuando la Oficina acuerde una diligencia de instrucción que requiera la audiencia de testigos y de peritos, los costes correrán a cargo de la Oficina. En cambio, si la audiencia ha sido solicitada por una de las partes, los costes correrán a su cargo, sin perjuicio de la resolución sobre el reparto de costes en el caso de los procedimientos inter partes.
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5 Procedimiento oral
Artículos 77 y 78 del RMC Reglas 56 a 60
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 una parte del procedimiento cuando lo considere verdaderamente necesario. Esto quedará al arbitrio de la Oficina (sentencia de 20/02/2013, en el asunto T-378/11, «MEDINET», apartado 72 y la jurisprudencia citada en la misma). En la gran mayoría de los casos será suficiente que las partes puedan presentar sus observaciones por 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.
Cuando la Oficina considere necesario oír a la partes, a testigos o peritos, deberá adoptar una resolución en la que precise el tipo de diligencia que desee practicar, los hechos pertinentes que se deban probar y la fecha de la audiencia. 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, un resumen de dicha resolución e indicar los nombres de las partes en el procedimiento y detalles sobre los gastos que, llegado el caso, podría reembolsar la Oficina a los testigos o peritos.
Si resultara necesario, y a fin de facilitar la audiencia, la Oficina podrá invitar a las partes a que presenten observaciones escritas o pruebas antes de la vista. Al fijar el plazo para la recepción de dichas 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 caso de que dichas pruebas hubieran debido presentarse en una fase anterior del procedimiento, incumbirá exclusivamente a la Oficina pronunciarse sobre la admisibilidad de esos 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 Oposición y el departamento encargado del Registro no será público.
Los procedimientos orales, incluido el pronunciamiento de la resolución, se harán públicos ante la División de Anulación y las Salas de Recurso, en la medida en que el departamento ante el que se desarrollen los procedimientos no decida lo contrario en casos en los que la admisión del público pudiera comportar perjuicios graves e injustificados, en particular para una parte en los procedimientos.
Si una de las partes debidamente citada en un procedimiento oral no compareciese ante la Oficina, el procedimiento podrá proseguir en su ausencia.
En el caso de que 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 las partes afectadas, que podrán estar presentes y formular preguntas a la persona oída.
Al final del procedimiento oral, la Oficina concederá a las partes la posibilidad de presentar sus conclusiones definitivas.
5.3 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 contendrá 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).
6 Resoluciones
6.1 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 la 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.
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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.
6.2 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 los gastos. Las tasas abonadas a la Oficina no se 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 los costes o la fijación de la cuantía de las mismas se circunscriben a los procedimientos de oposición y anulación (incluidos los procedimientos de recurso o los procedimientos ante el Tribunal General o el Tribunal de Justicia). Los «costes» engloban los gastos sufragados por las partes en el procedimiento, principalmente i) los gastos de representación (aunque siempre sujetos a unos importes máximos) así como los gastos derivados de la participación en las audiencias. Los «costes de representación» comprenden 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); ii) 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, costes internos 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.
La resolución fijará los gastos que deben abonar la(s) parte(s) vencida(s), no siendo necesaria a estos efectos ninguna prueba de haber incurrido en estos gastos.
Esta parte de la 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 los costes. Recaerán en la parte que ponga fin al procedimiento las tasas y los gastos sufragados por la otra. En los casos
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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 pronósticos 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 los costes, la parte interesada podrá presentar una solicitud de modificación de la resolución. Esta solicitud deberá estar motivada e ir 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
MERCADO INTERIOR (MARCAS, DIBUJOS Y MODELOS) HABRÁ DE LLEVAR A CABO SOBRE LAS MARCAS COMUNITARIAS
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
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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 la segunda lengua se otorgará para cada expediente; 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, 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 declaración que no esté relacionada con el examen de la solicitud como tal, sino que inicie un procedimiento accesorio (consulta pública de expedientes, 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 procedimiento 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 declaración 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 MC, el titular de la marca comunitaria podrá presentar una solicitud de inscripción de una licencia 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 la anulación, en la primera o segunda 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 oposición 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.
Lengua de procedimiento
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5 Naturaleza invariable del régimen de lenguas
Los Reglamentos permiten en ocasiones 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 oposición 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
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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 de 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 ser 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 presentó dentro de plazo (si el solicitante ha contestado dentro del plazo, el examinador puede continuar con la tramitación de la solicitud, por ejemplo,
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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 enviadas 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 inscripción 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 que podrá recurrirse en el sentido del Artículo 58, apartado 2, del RMC 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 primer 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 interpuesto 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 la resolución. Esto implica que, incluso si el plazo ha expirado, podrá anularse la inscripción o revocarse la resolución si la Oficina tiene conocimiento por escrito de la existencia de un error 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 una inscripción no puede ser revocada/anulada si existe un recurso 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 resolución 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 cesión de titularidad también afectan a más de una 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 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.
Error notificado por la parte afectada
Si el solicitante/titular informa a la Oficina por escrito de un error que se entenderá como una solicitud de revocación/anulación, 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 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.
Error notificado por una de las partes
Si la parte adversamente afectada por el error informa por escrito a la Oficina de un error que se entenderá como una solicitud de revocación/anulación, 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 MC, 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 la 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 la 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 afecta 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 carta de rectificación, el examinador debe verificar si el error que debe corregirse 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 hacerse correcciones si todavía está pendiente una resolución ante las Salas, aunque las Salas deben ser informadas de la situación.
2.1.2.3 Procedimiento
Los errores lingüísticos, los errores de transcripción y los errores evidentes se corrigen enviando una rectificación 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 las 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 ó 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 oposición se publicarán en la 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 la representación de la marca o una ampliación de la lista de productos y servicios ya publicada. Respecto de otras 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 la 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 sección incorrecta del Boletín. De conformidad con la Comunicación nº 11/98 del Presidente de la 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 ó 27 del REMC, no existe 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 la revisión es evitar que las Salas de Recurso 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 procedimientos inter partes, esto es, en procedimientos de oposición (incluidas las resoluciones de inadmisibilidad de la oposición), los procedimientos relativos a solicitudes de caducidad o de nulidad, 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 la tasa no serán 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 la notificación de la 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 las objeciones del examinador y por lo tanto requiere un nuevo examen.
Un nuevo ejemplo es el caso en que la Oficina deniega una solicitud 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 hecho 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 tiene que conducir necesariamente a una 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 la 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 adopción de la resolución impugnada existía un vicio imputable a la Oficina. Si la resolución impugnada fuere considerada incorrecta en sí misma, se concederá la restitución. Si la citada resolución era correcta en la fecha de su 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
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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 son 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 La condición de «toda la diligencia necesaria teniendo en cuenta
las circunstancias» ..................................................................................... 3 2.2 Pérdida de derechos o vías de recurso causada directamente por
el incumplimiento de un plazo ...................................................................5
3 Procedimiento............................................................................................ 5 3.1 Procedimientos a los que resulta aplicable la restitutio .......................... 6 3.2 Partes ...........................................................................................................6 3.3 Plazo de que disponen las Oficinas nacionales para remitir una
solicitud a la Oficina.................................................................................... 6 3.4 Plazos excluidos de la restitutio in integrum ............................................7
Efecto de la restitutio in integrum.............................................................. 7
3.6 8 Plazo............................................................................................................. 8
3.7 Tasa.............................................................................................................. 8 3.8 Lenguas .......................................................................................................8 3.9 Pormenores y pruebas................................................................................ 9 3.10 Competencia................................................................................................ 9 3.11 Publicaciones .............................................................................................. 9 3.12 Resolución, papel de otras partes en el procedimiento de
restitutio..................................................................................................... 10
4 Procedimiento de tercería....................................................................... 10
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1 Principios generales
Artículo 81 del RMC Artículo 67 del RDC
Las partes en un procedimiento ante la Oficina que, aun habiendo demostrado toda la diligencia requerida por las circunstancias, no hubieran podido respetar un plazo con respecto a la Oficina, podrán ser restablecidas en sus derechos (restitutio in integrum) si la inobservancia del plazo hubiera tenido como consecuencia directa, en virtud de las disposiciones de los Reglamentos, la pérdida de un derecho o de una vía de recurso (véase la sentencia de 28/06/2012, en el asunto T-314/10, «Cook’s», apartados 16 y 17).
La observancia de los plazos es una cuestión de política pública, y la concesión de la restitutio in integrum puede minar la certidumbre jurídica. En consecuencia, las condiciones para la aplicación de la restitutio in integrum han de interpretarse de manera rigurosa (véase la sentencia de 19/09/2012, T-267/11, «VR», apartado 35).
La restitutio in integrum solo podrá obtenerse previa solicitud ante la Oficina. Dicha solicitud está sujeta al pago de una tasa.
Si la parte se encuentra representada, el incumplimiento del deber de diligencia requerida que incumbe a los representantes se atribuye a la parte a la que representa (véase la sentencia de 19/09/2012, T-267/11, «VR», apartado 40).
2 Criterios que rigen la concesión de la restitutio
Existen dos requisitos para la concesión de la restitutio in integrum (véase la sentencia de 25/04/2012, T-326/11, «BrainLAB», apartado 36):
a) que la parte haya actuado con toda la diligencia necesaria teniendo en cuenta las circunstancias,
b) que el incumplimiento (de un plazo) por la parte haya tenido la consecuencia directa de la pérdida de un derecho o de un recurso.
2.1 La condición de «toda la diligencia necesaria teniendo en cuenta las circunstancias»
Los derechos se reestablecerán únicamente en circunstancias excepcionales que no puedan predecirse con arreglo a la experiencia (véase la sentencia de 13/05/2009, T-136/08, «Aurelia», apartado 26) y que, por tanto, sean impredecibles e involuntarias.
a) Ejemplos de situaciones en las que se cumple el requisito de «toda la diligencia necesaria»
En principio, que un servicio postal o de mensajería incumpla una entrega, no conlleva la falta de la debida diligencia de la parte interesada (resolución de 25/06/2012, R -1928/2011-4, «Sun Park Holidays»). Sin embargo, corresponde a los representantes de las partes, al menos, consultar con anterioridad a las empresas
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encargadas cuáles son sus plazos de entrega habituales (en el caso de las cartas enviadas de Alemania a España, véase la resolución de 04/05/2011, R 2138/2010-1 - «Yellowline»).
El grado de diligencia de que deben dar muestras las partes para que sus derechos puedan serles restablecidos debe apreciarse en relación con todas las circunstancias pertinentes. Las circunstancias pertinentes pueden incluir un error relevante de la Oficina y sus repercusiones. Así, aún cuando la parte de que se trate no haya mostrado toda la diligencia debida, un error relevante cometido por la Oficina podrá dar lugar a la concesión de la restitutio (véase la sentencia de 25/04/2012, T-326/11, «BrainLAB», apartados 57 y 59).
Se considera que circunstancias tales como catástrofes naturales y huelgas generales cumplen el requisito relativo a «toda la diligencia necesaria».
b) Ejemplos de situaciones en las que NO se cumple el requisito de «toda la diligencia necesaria»
Los errores en la gestión de expedientes debidos a la actuación de los empleados del representante o del propio sistema informatizado son previsibles. En consecuencia, la «diligencia necesaria» exigiría un sistema de supervisión y detección de tales errores (véase la sentencia de 13/05/2009, T-136/08, «Aurelia», apartado 18).
«A este respecto, carecen de relevancia la excepcional carga de trabajo y los imperativos de organización que los demandantes alegan haber sufrido por la entrada en vigor del Reglamento n. 40/94» (véase la sentencia de 20/06/2001, T-146/00, «DAKOTA», apartado 62).
Una estimación errónea del plazo no constituye un suceso excepcional que no pueda predecirse según la experiencia (resolución de 05/07/2013, R 0194/2011-4 - «PayEngine»).
Un error del Director del Departamento de Renovaciones, que supervisa el desempeño del personal a diario, no constituye un suceso excepcional (resolución de 24/04/2014, R 1728/2012-3, «Parte de dispositivo de elevación»).
La ausencia de un miembro esencial del Departamento de Contabilidad no puede considerarse un suceso excepcional ni imprevisible (resolución de 10/04/2013, R 2071/2012-5 - «Starforce»).
Un error administrativo en la anotación de un plazo no puede considerarse un suceso excepcional ni imprevisible (resolución de 31/01/2013, R 0265/2012-1 - «Kansi»).
Una mala interpretación de la legislación aplicable, por principio, no puede considerarse como un «obstáculo» para el cumplimiento de un plazo (resolución de 14/06/2012, R 2235/2011-1 - «KA»).
La demora de un titular en la facilitación de instrucciones no constituye un suceso excepcional (resolución de 15/04/2011, R 1439/2010-4 - «Substral Nutri + Max»).
Los problemas financieros de la empresa de un propietario, su cierre o la pérdida de puestos de trabajo no pueden aceptarse como motivos para que el propietario no pueda cumplir el plazo de renovación de su marca comunitaria (resolución de 31/03/2013, R 1397/2010-1 - «Captain»).
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Los errores jurídicos cometidos por un representante profesional no justifican la restitutio (resolución de 16/11/2010, R 1498/20104, - «Regine's»). La supresión de un plazo por un asistente no es imprevisible (resolución de 28/06/2010, R 0268/2010-2 - «Orion»).
2.2 Pérdida de derechos o vías de recurso causada directamente por el incumplimiento de un plazo
Artículo 81, apartado 1, del RMC
El incumplimiento del plazo debe haber tenido la consecuencia directa de causar la pérdida de derechos o vías de recurso (véase la sentencia de 15/09/2011, T-271/09, «Romuald Prinz Sobieski zu Schwarzenberg», apartado 53).
Artículos 42, apartado 2; 76, apartado 2, y 77, apartado 1 del RMC, Regla 19 y reglas 20, apartados 1 a 5, y 40, apartados 1 y 3 del REMC
Este no es el caso en el que el Reglamento ofrece opciones procesales que las partes en los procedimientos son libres de utilizar, como la petición de una audiencia oral, el requerimiento de que el oponente demuestre el uso genuino de su marca anterior, o la solicitud de una ampliación del período de reflexión, con arreglo a la regla 19 del REMC. El período 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 Reglas 9, apartados 3 y 4; 10 y 11, apartados 1 y 3 del REMC
Por otro lado, la restitutio in integrum sí procede en el supuesto de una contestación tardía a la notificación de un examinador en la que se anuncia la denegación de la 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 caso de alegación 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 pérdida de derechos consiste en este caso en la 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 procedimiento inter partes fuera del plazo establecido a tal fin.)
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
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3.1 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 los 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.
3.2 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 caducidad o de nulidad, o el presunto infractor que intervenga como parte en un procedimiento de nulidad, de conformidad con lo dispuesto en el artículo 54 del RDC.
El incumplimiento del plazo debe ser imputable a la parte interesada o a su representante.
3.3 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 solicitud 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 la 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
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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.
3.4 Plazos excluidos de la restitutio in integrum
Artículo 81, apartado 5, del RMC Artículo 67, apartado 5, del RDC
En aras de la seguridad jurídica, la restitutio in integrum no es aplicable a los siguientes plazos:
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 prioridad, es decir, el plazo de seis meses previsto para la presentación de una solicitud en la 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 oposición de conformidad con el artículo 41, apartado 1, del RMC, incluyendo el plazo previsto para el pago de la tasa de oposición a la que se refiere el artículo 41, apartado 3 del RMC.
Artículo 81, apartados 2 y 5, del RMC Artículo 67, apartados 2 y 5, del RDC
Los plazos previstos para la propia restitutio, a saber:
○ un plazo de dos meses a partir del cese del impedimento que imposibilitaba la presentación de la solicitud de restitutio in integrum;
○ un plazo de dos meses a partir de dicha fecha para completar el acto omitido;
○ un plazo de un año a partir del vencimiento del plazo incumplido para presentar la solicitud de restitutio in integrum.
3.5 Efecto de la restitutio in integrum
La concesión de la restitutio in integrum tendrá como consecuencia jurídica, con efecto retroactivo, que el plazo que no se cumplió se tenga por respetado, y que cualquier pérdida de derechos acaecida durante el período provisional se tenga por no
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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 que, una vez concedida la restitutio, ya no será necesario interponer un recurso contra dicha resolución de la Oficina para obtener su revocación. La restitutio reestablece de manera efectiva al solicitante en todos sus derechos.
3.6 Plazo
Artículo 47, apartado 3, y artículo 81, apartado 2, del RMC Artículo 13, apartado 3, y artículo 67, apartado 2, del RDC
Los solicitantes deberán pedir la restitutio in integrum por escrito y enviar la solicitud a la Oficina.
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 este mismo periodo. La fecha de cese de la 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 enfermedad 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.
3.7 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 la restitutio in integrum (véase el apartado 3.6). Si el solicitante no abona la tasa antes de que concluya el plazo, la petición de restitutio in integrum se tendrá por no presentada.
3.8 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 ser lengua de procedimiento en el que haya tenido lugar el incumplimiento del plazo. Así, por ejemplo, en el procedimiento de registro, la primera
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lengua indicada en la solicitud; en el procedimiento de oposición, la lengua del procedimiento de oposición; y en el procedimiento de renovación, cualquiera de las cinco lenguas de la Oficina.
3.9 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.
3.10 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.
3.11 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.
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No se publicará mención alguna sobre la recepción de una petición de restitutio.
3.12 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 integrum el solicitante de la misma, aun cuando el incumplimiento del plazo hubiera tenido lugar en un procedimiento inter partes.
La decisión sobre la restitutio deberá adoptarse , siempre que sea posible, 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 recurso que tendría la otra parte consistiría en instar 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 desde la pérdida del derecho hasta la publicación de la mención de restablecimiento de los derechos
hubiere, de buena fe, comercializado productos o prestado servicios bajo un signo idéntico o similar a la marca comunitaria, o
en el caso de un dibujo o modelo comunitario, hubiere, de buena fe, comercializado productos en los que hubiere incorporado o aplicado un dibujo o modelo comprendido en el ámbito de protección del dibujo o modelo comunitario registrado o al que se aplica,
podrá interponer tercería contra la resolución que restablezca en sus 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 la 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 nuevos Estados miembros a la Unión Europea y las consecuencias para los titulares de marcas 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 extensión 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 denegación absoluto si este resulta aplicable meramente por la adhesión de un nuevo 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 la MC frente a ninguna modificación de la legislación aplicable a su 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 la adhesión de nuevos Estados miembros. La conclusión inversa de que los términos que son descriptivos en una lengua o en el territorio de un nuevo Estado miembro podrán, en cualquier 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 que el engaño o incumplimiento 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 la fecha de presentación de la 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 tiene 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 la fecha de adhesión 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 relación con las «solicitudes de mala fe» únicamente cuando se presente una solicitud de declaración de nulidad (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 derecho 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 presentación 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 nuevo 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 nuevo 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 adhesión de un nuevo 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 la Unión Europea. La reivindicación de antigüedad 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 partir de la fecha de adhesión, la reivindicación de antigüedad solo tiene sentido cuando la marca nacional previa tenga una fecha de presentación 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 la 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 partir de la 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 declaración de nulidad, basada en un derecho nacional anterior existente en un nuevo 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 presentación, y no la fecha de prioridad, 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 nuevo 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 presentar una oposición contra una solicitud de MC presentada antes del 1/1/2013 (la fecha de prioridad es irrelevante en este contexto) en base a un derecho nacional anterior en un nuevo Estado miembro bajo ninguna circunstancia;
b) Una marca croata puede presentar una oposición 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 la 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 adquirido en un 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 posterior, pero con una fecha de prioridad 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 presentar una oposición y no incluye el derecho a presentar una solicitud de cancelación por motivos relativos. Lo anterior significa que una vez vencido el plazo de oposición 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 presentación sea anterior a la fecha de adhesión de un nuevo Estado miembro en virtud de los 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 marca nacional presentadas en los nuevos Estados miembros, condicionadas a su posterior registro;
los derechos no registrados 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 la 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 nuevo Estado miembro, la cuestión de saber si puede invocarse válidamente como motivo de oposición contra una solicitud de MC es una cuestión concerniente al fundamento de la 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 duda la buena fe, incumbe a la otra parte en el procedimiento (el solicitante de la 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 uso efectivo de la 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 nuevo 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 haber sido objeto de un 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 cuenta si el Estado en cuestión era ya un Estado miembro de la 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 adhesión, los nuevos Estados no son «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 se 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
Procedimientos
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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 las observaciones de terceros 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 ............................................................................... 11 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
Procedimientos
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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 sobre la marca comunitaria (RMC) 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 inmediato a la Oficina. El solicitante solo podrá corregir los datos que repercutan en la fecha de presentación, como el nombre del solicitante, la representación de la marca y la lista de productos 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 a continuación y las Directrices, Parte B, Examen, Sección 2, Examen de formalidades.
Una vez que se ha expedido el recibo, la Oficina lleva a cabo una comprobación 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 procedimiento 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. Todas estas fases del examen pueden llevarse a cabo en paralelo, dado que no existe una secuencia estricta en los procedimientos 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 parcial o totalmente 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 la 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.
Procedimientos
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FINAL VERSION 1.0 01/08/2015
La última fase del 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 la notificación de los informes de búsqueda (búsqueda comunitaria y 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 búsqueda 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 comunitarias 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 prioridad anteriores a las de la 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 presentación, 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 o bien electrónicamente. 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 las oficinas nacionales participantes una vez que se ha acordado la fecha y se ha validado la clasificación. Una petición es válida si se realiza en el momento de la presentación y se ha abonado la tasa pertinente.
Procedimientos
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Los informes de búsquedas nacionales 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. Este enfoque basado en el principio de «todo o nada» significa que el solicitante no puede elegir qué oficinas participantes en particular desea que lleven a cabo la búsqueda.
Los titulares de registros internacionales (RI) que designan a la UE y que deseen solicitar búsquedas nacionales deben enviar la petición y abonar la tasa pertinente a la OAMI en el plazo de un mes a partir de la fecha de notificación del RI de la Organización Mundial de la Propiedad Intelectual (OMPI).
Las oficinas nacionales son responsables del formato y contenido del informe de búsqueda nacional. 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, Marcas colectivas, Carácter distintivo adquirido.
El RMC tiene como objetivo permitir a los propietarios registrar un derecho con validez en toda la Unión Europea siempre 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 la solicitud. La Oficina tiene que tener en cuenta la naturaleza de la 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 las 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 solicitud, terceras partes pueden plantear observaciones relativas a la 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 los 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: alemán, español, francés, inglés o italiano.
Procedimientos
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La Oficina expide un recibo a la parte que presentó las observaciones (el observador), confirmando que las observaciones se han recibido y han sido remitidas al solicitante. El autor de las observaciones no pasa a ser una parte del proceso ante la Oficina pero puede consultar las herramientas de búsqueda en línea para comprobar el estado de la solicitud de marca comunitaria pertinente. La Oficina no informa al autor de las observaciones de ninguna de las medidas adoptadas, en concreto de si las observaciones han dado lugar a una objeción o no.
Todas las observaciones son remitidas al solicitante, al que se invita a presentar 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 solicitud, no es probable que plantee serias dudas después de la 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 la 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 los 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 documento 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
Procedimientos
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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 entrada 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 Tribunal General (TG) o al Tribunal de Justicia de la Unión Europea (TJUE) por una acción emprendida 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 las marcas denominativas, por ejemplo
marcas figurativas, marcas tridimensionales, hologramas, marcas sonoras, marcas de color per se y 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.
Procedimientos
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Una vez que el examinador ha comprobado que todos estos elementos son correctos y que la Oficina ha recibido la traducción a todas las lenguas oficiales de la UE, la solicitud se remitirá al Equipo responsable de Publicaciones.
5 Modificaciones a la solicitud de marca comunitaria
Esta parte de las Directrices solo cubre las cuestiones pertinentes relativas a las 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; artículo 65, apartado 5 y artículo 119, del RMC Artículo 101 y artículo 102, apartado 2, del Reglamento Interno del Tribunal General (RPTG) Artículo 51 del Reglamento Interno del Tribunal de Justicia (RPTJ)
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» y la resolución de 23 de abril de 2014. R 0451/2014-1 – «SUPERLITE», apdo. 18).
A nivel del Tribunal General (TG), una solicitud puede retirarse dentro del plazo de recurso de dos meses prorrogado por un periodo de diez días (por razón de la distancia), conforme al artículo 102, apartado 2, del RPTG. A nivel del Tribunal de Justicia de la Unión Europea (TJUE), el plazo prescrito de dos meses para presentar una acción ante el TJUE contra una resolución de las Salas de Recurso podrá prorrogarse en función de la distancia por un único periodo de diez días (auto de 19 de julio de 2003, en el asunto T-15/03, «BLUE»). La resolución de las Salas de Recurso no se considerará definitiva durante dicho periodo. La solicitud también puede retirarse hasta que se complete el proceso de recurso ante el TG.
A nivel del TJUE, una solicitud se puede retirar dentro del plazo de dos meses para la presentación de un recurso ante el TJUE, prorrogado por un periodo de diez días (en función de la distancia) con arreglo al artículo 51 del RPTJ o hasta que el TJUE haya dictado una decisión final y vinculante (auto de 18/9/2012, C-588/11, «OMNICARE»).
Cuando el asunto esté pendiente ante el TG o ante el TJUE, el solicitante debe solicitar a la Oficina (no al TG ni al TJUE) que la retire. 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»).
Procedimientos
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Cualquier declaración de retirada presentada después de expirado el período de recurso resultará inadmisible.
La declaración de retirada no está sujeta a ninguna tasa pero debe realizarse por escrito. La Oficina no proporciona ningún formulario especial. .
La declaración de retirada se puede realizar en la primera o segunda lengua indicada por el solicitante en su solicitud de marca comunitaria. Lo mismo es aplicable durante los procedimientos de oposición. Sin embargo, para obtener más detalles de procedimiento cuando se hace una restricción en una lengua distinta a la lengua del procedimiento de oposición, véanse las Directrices, Parte C, Oposición, Sección 1, Aspectos procesales.
Para los detalles sobre restricciones, véase el apartado 5.2 siguiente.
Aunque el artículo 43, apartado 1, del RMC hace referencia únicamente a la retirada de una solicitud de marca comunitaria, el Tribunal ha declarado que las oposiciones también pueden retirarse tal como se ha descrito anteriormente (resolución de 7 de julio de 2014, R-1878/2013-1 - «HOT CHILLYS», apdo. 15).
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 las 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 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 los productos y servicios restantes o si la lista modificada de productos y servicios es una propuesta o una contrapropuesta por parte del solicitante, sujeta al 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 total en el Boletín, si la solicitud de marca comunitaria ya está
Procedimientos
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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 parcial en el procedimiento de oposición, véanse las Directrices, Parte C, Oposición, Sección 1, Asuntos procesales.
Para más información sobre la devolución de las tasas de solicitud véanse las Directrices, Parte A, Normas Generales, Sección 3, Pago de las tasas y costas.
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 su 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 vista 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 productos y servicios y aplicarse a productos o servicios aceptables que aparecen en la 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.
Si dichos requisitos no se cumplen, la Oficina deberá rechazar la limitación propuesta y la lista de productos y servicios no se modificará (resolución de 14 de octubre de 2013, R 1502/2013-4 − «DARSTELLUNG EINES KREISES», apdos. 12 a 16).
Procedimientos
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5.3 Otras modificaciones
Artículo 43, apartado 2, 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 solicitante por iniciativa propia, y no a las modificaciones o limitaciones que se realicen a raíz de un examen, un procedimiento de oposición o recurso en virtud de la resolución de un examinador, de la División de Oposición o de la Sala de Recurso.
Tampoco se aplica este apartado a las correcciones de errores en las publicaciones de la Oficina, que se efectúan ex officio conforme a la regla 14 del REMC.
Las modificaciones requieren una petición a este efecto realizada por escrito de acuerdo con el régimen lingüístico (para más información, véanse las Directrices, Parte B, Examen, Sección 2, Examen de formalidades). 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 solicitante o del representante designado pueden modificarse a voluntad, siempre que
todo cambio en el nombre del solicitante 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 persona jurídica también puede modificarse libremente, siempre que no sea consecuencia de una cesión.
Procedimientos
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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 caso 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 propiedad, Capítulo 1, Cesión.
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 divorcio) o cuando cambia la denominación de una asociación 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 nombre, 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 tener 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 idóneo 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.
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Para más detalles sobre estos cambios, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades.
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 puede abrir un nuevo plazo de oposición de tres meses.
Las demás modificaciones no se 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 cesión 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 solicitud 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 relación con registros internacionales en virtud 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;
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el nombre y la dirección, o el nombre y el número de identificación del solicitante;
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 productos y servicios que se mantengan en la 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 nueva 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 división 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 dividir un procedimiento de oposición, y frustraría a los terceros que deben basarse en el Boletín de Marcas 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 registrar 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 inscripción 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 esa 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 la 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 la nueva solicitud. La consulta pública de este expediente no estará sujeta a limitaciones.
Si la declaración de división se refiere a una solicitud de marca comunitaria que todavía no está 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 división se refiere a una solicitud de marca comunitaria que ya está publicada, el hecho de que se ha producido una división 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 oposición pero no se 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 expresiones (por ejemplo, «en concreto», «en particular») para
determinar el alcance de la lista de productos o servicios ............................. 6 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 servicios 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 ..................................................................................... 17
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 presentación (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 la 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 los principios establecidos en las Directrices. Cuando el solicitante seleccione un término de las herramientas disponibles, no se continuará 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 examen de la lista de productos y servicios.
En resumen, al examinar la clasificación de una lista de productos 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 acuerdo con la clasificación del Arreglo de Niza, cada grupo irá precedido del número de la 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 aparecen en los títulos de clase 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 solicitud electrónica a través 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 base de datos armonizada y se aceptarán automáticamente a efectos de clasificación. 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 todas las 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 través de la herramienta TMclass de la Oficina (http://tmclass.tmdn.org/ec2/). Esta herramienta reúne las bases de datos de clasificación de las oficinas participantes tanto de dentro como de fuera de la UE y muestra si un término puede ser aceptado por la Oficina en cuestión. Dentro de la herramienta TMclass, los productos y servicios se agrupan con arreglo a las 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 protección de una marca 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 clase 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 laboratorio (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 productos y servicios precisa ser o no especificada con mayor detalle.
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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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. 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 impreciso puede ser admisible siempre que se especifique con más detalle, por ejemplo, utilizando «en concreto» y una lista 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
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servicios mencionados quedan comprendidos dentro de una misma clase. Por ejemplo:
Productos químicos/bioquímicos Productos químicos y/o bioquímicos químicos de uso industrial/científico 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 categoría 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 base de cereales, 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 textiles; máquinas agrícolas de la clase 9. En esta lista de productos y servicios, la inclusión de un punto y coma significa que el término máquinas agrícolas debe considerarse una categoría de productos independiente. Sin embargo, estas máquinas son adecuadas para la clase 7, con independencia de si la intención eraproteger un programa informático que debe utilizarse en el ámbito de las máquinas textiles y máquinas agrícolas.
Otro ejemplo serían servicios de venta minorista de prendas de vestir; calzado; 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, los términos deberán ir separarados por comas.
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 lo 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
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extendida o si puede escribirse como sigla o acrónimo, seguida de la sigla entre corchetes (siguiendo el ejemplo de la OMPI).
Ejemplo
Clase 45 Servicios de asesoramiento sobre la solicitud y el registro de MC.
Esto podría escribirse in extenso:
Clase 45 Servicios de asesoramiento sobre la solicitud y el registro de marcas 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 los títulos de clase de la Clasificación de Niza, que no se consideran lo suficientemente claras y precisas
En colaboración con las Oficinas de marcas de la Unión Europea, otras organizaciones, oficinas (inter)nacionales y asociaciones de usuarios, la Oficina ha establecido una lista de indicaciones generales de los títulos de clase de la Clasificación de Niza que no se 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 especificar 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 estas 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 comprendidos en otras clases
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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
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 qué 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 claridad 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 estas materias o chapados no comprendidos en otras clases A la luz de la necesidad de claridad 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 qué productos son. Comprende una amplia gama de productos 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 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 amplia gama de productos que pueden tener
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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 17 Caucho, gutapercha, goma, amianto, mica y productos de estas materias no comprendidos en otras clases A la luz de la necesidad de claridad y precisión, el término productos de estas materias [caucho, gutapercha, goma, amianto y mica], no comprendidos en otras clases, no ofrece una indicación clara de qué productos comprende ya que sólo indica de qué están hechos los productos y no qué 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 18 Cuero y cuero de imitación, productos de estas materias no comprendidos en otras clases A la luz de la necesidad de claridad 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 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 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 qué 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 qué 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
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servicio con distintos niveles de capacidades 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. Como los productos que deben instalarse pueden tener características distintas, los servicios de instalación serán llevados a cabo por proveedores de servicio con distintos niveles de capacidades y conocimientos técnicos y pueden estar 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 amplia gama de actividades 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 marca comunitaria que incluyan una de las once indicaciones generales citadas anteriormente serán susceptibles de objeción 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 chapado (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 caucho, gutapercha, goma, amianto y mica (clase 17) Anillos de caucho (clase 17)
Productos de estas materias [cuero e imitaciones Carteras [marroquinería] (clase 18)
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de cuero] (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)
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 serían 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 especificarse 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 todos los productos o servicios de esta 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 la clase X, todos los productos o servicios de esta clase o todos los productos o servicios de la lista alfabética de esta clase (o similares). Dicha
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especificación no cumple con el artículo 26, apartado 1, letra c), del RMC que exige una lista de los productos o servicios 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 esta clase o y todos los productos/servicios de la lista alfabética en esta clase (o similares). En dichos casos, 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 otros números de clase dentro de una clase no son admisibles a efectos de clasificación. Por ejemplo, las descripciones (en la clase 39) servicios de transporte de todos los productos de las 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 qué 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 otras 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 lista de productos y servicios como si fueran un término genérico o una categoría de productos. 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 transmisión de sonidos e imágenes; lectores de vídeo; reproductores de discos compactos; iPods.
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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 disco compacto portátil), Band-Aid™ (emplastos), discos de Blu Ray™ (discos de almacenamiento 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.
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 forma incorrecta, esto no lleva a que 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 propuesta de clasificación correcta. Si el solicitante presenta una larga lista de productos o servicios que no está agrupada con números de clase 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.
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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 identificado 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.
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 asignado correctamente un número de clase a un término 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 modificar 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, apartados 1 y 2, del RMC permite la modificación de una solicitud. Esto incluye la modificación de la lista de productos y servicios siempre que «tal rectificación no afecte sustancialmente a la marca ni amplíe la lista de productos o servicios».
La modificación puede realizarse tanto en términos positivos como negativos. Se consideran admisibles los siguientes ejemplos:
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Bebidas alcohólicas siendo todas whisky y ginebra; Bebidas alcohólicas ninguna de ellas whisky y ginebra.
Dado que la modificación no puede ampliar la lista de productos y servicios, deberá tener carácter de limitación o de supresión de algunos 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 podrán reintroducirse ni podrá ampliarse la lista de productos y servicios restante.
La limitación deberá respetar ciertos criterios:
1. El solicitante no podrá excluir productos y servicios que no queden cubiertos por la solicitud y/o que no queden cubiertos por la clase pertinente.
Por ejemplo, no será admisible lo siguiente:
Clase 32: Siropes (solicitud original) a siropes con la excepción de los zumos de fruta.
Clase 3: Cosméticos con la excepción de sustancias desinfectantes (Clase 5).
2. La limitación deberá ser comprensible y proporcionar una indicación lo suficientemente clara y precisa (véase asimismo el apartado 4.2.) de los productos o servicios que quedarán excluidos de la lista o una indicación lo suficientemente clara y precisa de aquellos productos o servicios que permanecen tras la limitación.
Por ejemplo, lo siguiente no sería admisible:
Clase 16: Máquinas de escribir, únicamente relacionadas con los servicios financieros.
3. La limitación no deberá incluir referencias a marcas.
Por ejemplo, lo siguiente no sería admisible:
Clase 9: Aparatos para la reproducción de sonido, en concreto iPods.
4. La limitación no deberá incluir una limitación territorial que contradiga el carácter unitario de la marca comunitaria.
Por ejemplo, no sería admisible lo siguiente:
Clase 7: Lavadoras únicamente para su venta en Francia.
Una limitación podrá 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 combinaciones de bebidas que contienen elementos de whisky o ginebra.
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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 servicios incluidos en la solicitud original hayan sido 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 productos 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 asociación o servicios prestados por una asociación 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 Productos ambientadores perfumados y para refrescar el aire ............................ 32
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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 ........................................................................................... 37 Juegos....................................................................................................................... 37 Servicios de conexión en red social ....................................................................... 37 Publicación de software........................................................................................... 37 Energía solar............................................................................................................. 37 Servicios de almacenamiento.................................................................................. 38 Suministro de............................................................................................................ 38 Sistemas.................................................................................................................... 38 Billetes (de viaje, entretenimiento, etc.) .................................................................. 39 Videojuegos .............................................................................................................. 39 Entorno virtual .......................................................................................................... 39
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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 determinados términos problemáticos. También se proporcionan notas sobre la práctica de clasificación (que incluyen palabras o frases que no deberían utilizarse).
La base de datos de clasificación TMclass de la Oficina está disponible en http://tmclass.tmdn.org
Servicios de publicidad
En principio, los servicios de publicidad pertenecen a la clase 35. Las principales entradas en los servicios de publicidad 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 material 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 la Clasificación de Niza 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 estos dispositivos de la clase 28 vienen cargados con juegos. Sin embargo, estos juegos no están cargados en los dispositivos, sino que se graban en soportes de datos o pueden ser descargados. En estos casos, los juegos se 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.
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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 especificaciones admisibles:
Clase 35: Servicios de asociación del tipo de administración de negocios.
Clase 45: Servicios prestados por una asociación a sus miembros en forma 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 aparatos y sistemas de comunicación). 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 listas de] corretaje de futuros, créditos de carbono, 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 principio, 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 beneficencia 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.
Clase 36: Organización de colecciones benéficas; recaudación de fondos de beneficencia.
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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 beneficencia, en concreto servicios de protección del medio ambiente.
Clase 43: Servicios de beneficencia, en concreto facilitación de comida 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 datos, ya sea en forma 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 hospedaje de sitios web de la clase 42. El suministro de servicios de almacenamiento de datos y de computación 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 la pantalla», (traducción al español de la definición en inglés del diccionario Collins English Dictionary).
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
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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 exterior metálicas como parte de un edificio 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 tipo de técnica de construcción relacionada con los edificios y los productos asociados son los materiales de construcción y son
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adecuados para la clase 6 (para productos metálicos) o la 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, sino 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 los 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 otros 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 jardines 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 la 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 llamada, imágenes, fotografías, películas o extractos de películas. El resultado de la descarga es que el material queda almacenado en unidades o en la memoria de un ordenador, teléfono o PDA, donde funcionará con independencia de la fuente de donde proceda. También pueden denominarse productos virtuales. Todos estos productos descargables pueden ser 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 instrumentos de conducción, 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 cuenta 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 electrónicas de estos 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 son admisibles en estas clases y, habitualmente, pertenecen a la clase 9.
Franquicias
El verbo «franquiciar» hace referencia a la concesión o venta de una franquicia a otra parte. Como nombre, «franquicia» significa «la autorización concedida a una persona 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 aclaración. 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 ejecutan 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 mudanzas de flete que dan un seguimiento a sus vehículos a través de los mismos dispositivos.
Los sistemas de GPS también pueden utilizarse junto con otras tecnologías, para localizar la fuente de una señal de teléfono móvil. Si esto se lleva a cabo como parte del servicio de telecomunicaciones 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 los 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 telecomunicaciones 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 información 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 utilidad 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 mano no eléctricos]; tenacillas de rizar 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 Internet no queda claro ni es preciso para ser aceptado en ninguna clase, por lo que debe ser definido con más detalle.
Existe una gama 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 sitios 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.
Clasificación
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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 tener una función que no queda definida a través de los productos individuales. Estos grupos de productos a veces tienen nombres colectivos como conjunto o juego. 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 juego 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 conjunto o juego, es necesario entender para qué se va a utilizar el conjunto o, en su caso, si se va a construir 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 reparación de ruedas (para la reparación de una parte 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 como 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 servicio cuando la realizan terceros y debe ser 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 dicho ámbito sería adecuado para la clase 40. La construcción 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.
Clasificación
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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 historias, guiones o fotografías). No realizan ninguna otra función, como servicios de edición o verificación.
Los servicios de reporteros son adecuados para la clase 41. Las noticias no tienen 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 negocios o trabajo de oficina. 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 servicio) 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 preparaciones 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:
Clasificación
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Clase 3: Productos para perfumar el ambiente. Incienso. Potpurrí. 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 perfume es una característica 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 indicación lo suficientemente clara y precisa y no será admisible para la Oficina (véase asimismo el apartado 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 para la Oficina (véase asimismo el apartado 4.2). El solicitante deberá especificar el texto del término.
Al clasificar los productos hechos con metales preciosos se debe actuar con precaución.
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Tradicionalmente, casi todos los productos que estaban fabricados con metales preciosos o chapados con los mismos se agrupaban en la clase 14, ya que se 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 realizado una reclasificación de muchos de los 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 la 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 dichos productos de protección 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 son adecuados para la clase 9 sino para la clase 25, ya que son prendas de vestir en general. Los artículos de deporte de protección (excepto los cascos) son adecuados para la clase 28, ya que ninguno de ellos protege contra la pérdida de la vida o de un miembro.
Servicios de alquiler
Los servicios de alquiler o de arrendamiento se clasifican, en principio, en la misma clase que los servicios que se prestan. Por ejemplo, el alquiler de vehículos 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 los servicios de arrendamiento que pueden encontrarse en la herramienta TMclass en todas las clases de servicios.
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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 la clase 35 de la Clasificación de Niza hay una indicación de que la expresión el agrupamiento, en beneficio de terceros, de productos diversos (excepto su transporte), para que los consumidores puedan examinarlos y comprarlos a su conveniencia es admisible en la clase 35. Los servicios de venta 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 envío por correo y los servicios de comercio electrónico, la Oficina aplica lo establecido en la sentencia de 07/07/2005, en el asunto C-418/02, «Praktiker»: el término servicios de comercio al por menor solo es admisible si el tipo de productos o servicios que se venden o agrupen en beneficio de terceros se indican con la suficiente claridad y precisión (véase el apartado 4.1). El término servicios de venta minorista de un supermercado y, por extensión, servicios de venta al por menor en relación con grandes almacenes y términos similares no son 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 preparaciones farmacéuticas, veterinarias y sanitarias, así como suministros médicos, lo cual muestra cómo pueden expresarse los términos.
Entre los ejemplos de categorías de productos que no cumplen los requisitos de claridad y precisión se incluyen:
Artículos de comercialización. Productos del comercio equitativo. Accesorios de estilo de vida. Artículos de regalo. Recuerdos. Artículos coleccionables. Artículos de menaje.
Los servicios de venta al por menor de indicaciones generales no aceptables de los títulos de clasificación (véase al apartado 3.4.2) no son aceptables. Por ejemplo, la Oficina no aceptará servicios de venta al por menor para máquinas. Sin embargo, servicios de venta al por menor en relación con máquinas agrícolas sería suficientemente preciso y aceptable.
Por lo que respecta a los «servicios de venta al por menor» (es decir, los servicios que consisten en el agrupamiento, en beneficio de terceros, de servicios diversos, para que los consumidores puedan examinarlos y comprarlos a su conveniencia), el Tribunal ha establecido que éstos deberán formularse con suficiente claridad y precisión, de manera que permita a las autoridades competentes y a los demás operadores económicos conocer cuáles son los servicios que el solicitante tiene la
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intención de agrupar (véase la sentencia de 10/07/2014, en el asunto C-420/13, «Netto Marken-Discount»).
Esta decisión confirma que el agrupamiento de servicios» es una actividad con derecho a protección. El Tribunal ha puesto mayor énfasis en la importancia de definir los servicios que se reagrupan que en definir la acción en sí de «reagrupar» (revalidando así su anterior sentencia de 07/07/2005, C-418/02, «Praktiker»).
Los términos que lo expresen deben satisfacer dos requisitos, primero usar la expresión conocida de «reagrupar, en beneficio de terceros … para que los consumidores puedan examinar y comprar…» para «enmarcar» los servicios que se reúnen y describir la actividad de venta minorista real, y, segundo, describir los servicios que se reúnen, utilizando términos inteligibles y sean aceptables por derecho propio (p.ej., servicios jurídicos, servicios de difusión, servicios de un club de adelgazamiento, etc.). Para cumplir los requisitos fundamentales de claridad y precisión que se confirman en el asunto IP Translator, cualquier reivindicación de venta al por menor o ‘agrupamiento’ de servicios debe expresarse de este modo.
A continuación figuran ejemplos de especificaciones que ahora se consideran aceptables:
El agrupamiento, en beneficio de terceros, de una variedad de servicios jurídicos para que los consumidores puedan examinar y adquirir a conveniencia dichos servicios.
El agrupamiento, en beneficio de terceros, de servicios de un club de adelgazamiento, de servicios de video a petición, y de una agencia de detectives, para que los consumidores puedan examinar y adquirir a conveniencia dichos servicios.
El agrupamiento,, en beneficio de terceros, de una variedad de servicios de difusión, para que los consumidores puedan examinar y adquirir a conveniencia dichos servicios.
En el caso del agrupamiento de servicios, las expresiones tales como «venta al por menor de servicios relacionados con…», «venta al por menor de servicios asociados a la venta de…’ y «servicios de venta electrónica al por menor en relación con…» no ofrecen una distinción clara entre la venta al por menor de servicios y la prestación de dichos servicios en sí.
Por consiguiente, los siguientes ejemplos no serán aceptados, siendo sometidos a objeción:
Servicios de venta al por menor relacionados con servicios de venta a domicilio. Servicios de venta al por menor relacionados con la venta de servicios jurídicos. Servicios de venta al por menor por correo relacionados con la venta de servicios de una agencia de detectives.
La jurisdicción del TJUE no debe interpretarse como un medio para obtener doble protección de los servicios que se pretende prestar por derecho propio (tanto si son de la Clase 35 como si no). Ni tampoco deben concebirse un medio alternativo para
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ofrecer protección para el anuncio de los propios servicios. Así, si una solicitud engloba «el agrupamiento, en beneficio de terceros de servicios de telecomunicación que permiten a los consumidores examinar y comprar a conveniencia dichos servicios» estos servicios no cubren la prestación real de servicios de telecomunicación (que pertenecen a la clase 38), sino solo la agrupamiento de diversos proveedores de servicios de telecomunicación que permita a los consumidores examinar y adquirir a conveniencia dichos servicios.
Por último, la especificación de los productos o servicios 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 principio, «por ejemplo». No limitan los productos o servicios 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 conexión en red social es un término admisible en la 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 software pertenece a la clase 41. Un editor de software es una editorial de software sectorial entre el desarrollador y el distribuidor. La publicación, según su definición, incluye la publicación de periódicos y la publicación de software.
Energía solar
La energía solar es la energía que se deriva del sol y se convierte en calor o electricidad.
Clasificación
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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 algunas 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 comidas (en la clase 43), porque se ha especificado tanto el material suministrado como la naturaleza del servicio.
En el término suministro de software informático (en la clase 42) no está 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: Clase 7: Tubos de escape.
Clase 9: Sistemas de telecomunicaciones. Sistemas informáticos.
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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.
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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 intensificación 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 incluido 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 incluido 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
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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 4
MOTIVOS DE DENEGACIÓN ABSOLUTOS
Motivos de denegación absolutos
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Índice
2.7 El orden público y las buenas costumbres (artículo 7, apartado 1, letra f), del RMC) ............................................................................................. 4
2.7.1 «Orden público» ...................................................................................................... 4 2.7.1.1 Concepto y categorías ......................................................................................4 2.7.1.2 Denominaciones de variedades vegetales........................................................5
2.7.2 Buenas costumbres ................................................................................................ 7
2.8 Posibilidad de inducir a error: Artículo 7, apartado 1, letra g), del RMC ............................................................................................................... 10
2.8.1 Examen del carácter engañoso.............................................................................10 2.8.2 La realidad del mercado y los hábitos y percepciones de los consumidores....12 2.8.3 Marcas con connotaciones geográficas relativas a la ubicación del solicitante
o el lugar de origen de los productos o servicios ..................................................13 2.8.4 Marcas que hacen referencia a una aprobación, estado o reconocimiento
«oficial» .................................................................................................................14 2.8.5 Relación con otras disposiciones del RMC...........................................................14
2.9 Protección de banderas y de otros símbolos – artículo 7, apartado 1, letras h) e i), del RMC ................................................................................... 16
2.9.1. 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........................................................................17
2.9.1.1 Examen de marcas que consistan en una bandera de Estado o que la contengan .......................................................................................................20
2.9.1.2 Examen de las marcas que consistan en escudos de armas y otros emblemas de Estado o que los contengan......................................................25
2.9.1.3 Examen de las marcas que consistan en signos y punzones oficiales de control y de garantía o que los contengan ..................................29
2.9.2. 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..................................................29
2.9.3. 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 ....................................................................................................36
2.10 Artículo 7, apartado 1, letra j), del RMC....................................................... 42 2.10.1 Introducción...........................................................................................................42 2.10.2 La aplicación del artículo 7, apartado 1, letra j), del RMC.....................................44
2.10.2.1 DOP/IGP pertinentes.......................................................................................44 2.10.2.2 Situaciones contempladas por el artículo 103 del Reglamento (UE)
nº 1308/2013 y el artículo 16 del Reglamento (CE) nº 110/2008. ....................45 2.10.2.3 Productos pertinentes .....................................................................................53
2.10.3 DOP/IGP no protegidas con arreglo a los Reglamentos nº 1308/2013 y nº 110/2008 ...............................................................................................................55
2.10.3.1 DOP/IGP protegidas a escala nacional en un Estado miembro de la UE........55 2.10.3.2 DOP/IGP de terceros países...........................................................................55
2.11 Artículo 7, apartado 1, letra k), del RMC...................................................... 57 2.11.1 Introducción...........................................................................................................57 2.11.La aplicación del artículo 7, apartado 1, letra k), del RMC........................................60
2.11.2.1 DOP/IGP pertinentes.......................................................................................60 2.11.2.2 Situaciones contempladas en el artículo 13, apartado 1, del Reglamento
(UE) nº 1151/2012...........................................................................................61 2.11.2.3 Productos pertinentes .....................................................................................69
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2.11.3 DOP/IGP no protegidas conforme al Reglamento (UE) nº 1151/2012 .................72 2.11.3.1 DOP/IGP protegidas a escala nacional en un Estado miembro de la UE........72 2.11.3.2 DOP/IGP de terceros países...........................................................................73
2.12 Marcas comunitarias colectivas .................................................................. 74 2.12.1 Carácter de las marcas colectivas ........................................................................74 2.12.2 Titularidad..............................................................................................................76 2.12.3 Particularidades respecto de los motivos de denegación absolutos ....................77
2.12.3.1 Signos descriptivos .........................................................................................77 2.12.3.2 Carácter engañoso en cuanto a su naturaleza................................................78 2.12.3.3 Reglamento de uso contrario al orden público y a las buenas costumbres.....78
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2.7 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 monopolio contravendría el Estado de derecho 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 marca es contraria o no al orden público o a las buenas costumbres debe atenderse a las cualidades intrínsecas de la marca solicitada y no a circunstancias 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 la Unión, sino también a «las circunstancias particulares de los 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.
2.7.1 «Orden público»
2.7.1.1 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 entendimiento común de ciertos principios y valores básicos, como los derechos humanos. Tal como se ha indicado anteriormente, la legislación nacional también podrá ser tenida en cuenta, no por su valor normativo, sino como prueba de los hechos que hacen posible demostrar la percepción del público pertinente en dichos Estados miembros.
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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 (§ 86a dt. StGB (Código penal alemán), BGBl. Nr. I 75/1998) y en Austria (§ 1 öst. Abzeichengesetz (Ley austríaca sobre insignias), BGBl. Nr. 84/1960, en conjunción con el § 1 öst. Verbotsgesetz (Ley austríaca 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.
2.7.1.2 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 dar una denominación 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 la Unión. Con arreglo al artículo 20, apartado 1, de dicho 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
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denominación en relación con la variedad, incluso después de la terminación del derecho de obtentor.
Por lo tanto, tanto el RPCVV como el Convenio de la 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 variedades permite a la 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 la denominación de la 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 la 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, apartado 1, letra 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 variedades 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
1 http://www.cpvo.europa.eu/main/es/home/databases/cpvo-variety-finder.
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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 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 la denominación de la variedad (ya sea en una palabra o en una marca figurativa), el examinador debe formular una objeción de conformidad con el artículo 7, apartado 1, letra 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 variedad 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 productos tendrá que ser limitada a fin de excluir 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, puede resultar aplicable el artículo 7, apartado 1, letra c) y letra d), (ver secciones 2.3 y 2.4).
2.7.2 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
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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, 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
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la actividad empresarial (sentencia de 9/3/2012, en el asunto T-417/10, «¡QUE BUENU YE! HIJOPUTA», apartado 26).
Ejemplos de solicitudes de marcas comunitarias desestimadas (orden público y buenas costumbres)
Signo Consumidores
relevantes 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 Consumidores generales
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 solicitudes de marcas comunitarias aceptadas
Signo Consumidores
relevantes 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
2.8 Posibilidad de inducir a error: Artículo 7, apartado 1, letra g), del RMC
2.8.1 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 contradictoria, por ejemplo, con la naturaleza o la calidad o la procedencia geográfica de los productos.
Motivos de denegación absolutos
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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; construcciones 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 está 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, tendría 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 uso 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).
Motivos de denegación absolutos
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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).
2.8.2 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, preparaciones para usar como sucedáneos del café, café artificial, achicoria, aromatizantes de achicoria; 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 del té. 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
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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.
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.
2.8.3 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
Motivos de denegación absolutos
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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 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.
2.8.4 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 están aprobados por un órgano público o una 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
2.8.5 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 pesar de que se ha tratado en las correspondientes secciones de las Directrices, en el contexto del examen de los
Motivos de denegación absolutos
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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 limitación en un intento de salvarla, y siempre 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 el 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.
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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 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.
2.9 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).
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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 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).
2.9.1. 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:
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Escudo de armas búlgaro – base de datos del artículo 6 ter nº BG2
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
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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 «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
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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 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).
2.9.1.1 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
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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?
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 Solicitud de MC 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.
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Bandera Solicitud de MC denegada
Bandera canadiense Solicitud de MC 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; así lo confirma la denegación por la Sala de Recurso de solicitud MC 10 502 714.
Bandera Signo
Las banderas, por ejemplo, de Bélgica, República Checa, Francia, Italia, Letonia, Austria, Finlandia y Suecia..
Solicitud de MC 10 502 714, R 1291/2012-2
«… las banderas … están todas representadas en la marca y serán inmediatamente reconocidas por las personas que procedan de esa partes de la UE, así como por muchas otras personas del territorio relevante ... no aparecen fusionadas entre sí de un modo que disipe sus características individuales. Debe observarse además que las banderas que aparecen al fondo de la marca... no están al revés, sino que se presentan exactamente como son normalmente.
Como observó el Tribunal en la sentencia de 16 de Julio de 2009, asuntos C-202/08 P y C-208/08 P, ‘Representación de una hoja de arce’, en su apartado 59, 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. Por consiguiente, basta que un solo elemento de la marca solicitada represente tal emblema o una imitación de éste para que se deniegue el registro como marca comunitaria… Por ello, falla la argumentación del solicitante en el sentido de que, aunque la marca contiene varias banderas nacionales, esto es solo una pequeña parte de la marca que queda superada por la presencia de los elementos adicionales y estos elementos son más dominantes y distintivos (apartados 18 19).
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:
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Bandera Solicitud de MC aceptada
Solicitud de MC 5 851 721
Bandera italiana Solicitud de MC 5 514 062
Bandera suiza Solicitud de MC 6 015 473
Bandera finlandesa MC 7 087 281
Bandera Solicitud de MC aceptada
Bandera sueca Solicitud de MC 8 600 132
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Bandera danesa Solicitud de MC 8 600 173
Bandera francesa Solicitud de MC 4 624 987, asunto T-41/10
Cabe señalar la distinción entre los casos examinados en la SOLICITUD DE MC nº 8 426 876 (se han formulado objeciones) y la SOLICITUD DE MC 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 SOLICITUD DE MC 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 SOLICITUD DE MC nº 6 015 473 tiene una sombra.
R-1291/2012-2 (Solicitud de MC 10 502 714)
Argumentos de la Sala:
18 Tal como indicó correctamente la resolución impugnada, la marca incluye claramente diversos elementos de bandera. Cada uno de estos elementos puede percibirse como tal y, para el consumidor medio de la Unión Europea, la mayoría de estos elementos, si no todos, son evidentes y muy reconocibles. Aunque podría argumentarse que, por ejemplo, la bandera escocesa o británica no son tan
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notablemente conocidas como la bandera «Union Jack» de Gran Bretaña, las banderas de, por ejemplo, Italia, Letonia, Francia, Suecia, Finlandia, República Checa, Austria y Bélgica están representadas en la marca y serán inmediatamente reconocidas como tal por el público procedente de dichas partes de la UE, así como por muchos otros en el territorio de referencia. Las banderas se juntan de forma evidente para formar un límite circular, aunque no se fusionan las unas con las otras de forma que se disipan sus características individuales. Cabe destacar asimismo que las banderas que aparecen en la parte inferior de la marca (las banderas de Escocia, Bélgica, República Checa, Francia, Inglaterra y Suecia) no están boca abajo sino que se presentan exactamente como estarían normalmente.
19 Tal como ha destacado el Tribunal en la sentencia de 16 de julio de 2009, C-202/08 P y C-208/08 P, «RW hoja de arce» en el apartado 59, 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. Por consiguiente, basta que un solo elemento de la marca solicitada represente tal emblema o una imitación de este para que se deniegue el registro como marca comunitaria... Por tanto, no progresaron las alegaciones del solicitante de que, aunque la marca incluye diversas banderas nacionales, esto es solo una pequeña parte de la marca que queda superada por la presencia de elementos adicionales y que dichos elementos son dominantes y distintivos.
21 De lo anterior se deduce que debe denegarse la marca solicitada sobre la base de la falta de permiso por parte de las autoridades competentes con arreglo al artículo 7, apartado 1, letra h), del RMC conjuntamente con el artículo 6 ter del Convenio de París.
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.
2.9.1.2 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.
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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 Solicitud de MC 5 627 245, asunto T- 397/09
.
Emblema canadiense: Número 6 ter: CA2
Solicitud de MC 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 SOLICITUD DE MC nº 5 627 245 eran casi idénticos a aquellos incluidos en el emblema 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
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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).
En el ejemplo que se reproduce a continuación, el examinador consideró que existía una «imitación heráldica» de emblemas de Estado. Sin embargo, la resolución fue anulada por la Sala, la cual consideró que el signo solicitado no es idéntico al emblema nacional de Irlanda. No incluye una imitación de los emblemas nacionales de Irlanda ni reproduce los rasgos heráldicos característicos de dichos emblemas (R 0139/2014-5, apdo. 16):
Emblema de Estado Solicitud de MC
Emblemas de Estado de Irlanda: 6 ter Números: IE 11 - IE 14 Solicitud de MC 11 945 797
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:
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Emblema protegido Solicitud de MC denegada
Emblema del Departamento de Justicia de los EE.UU.;
número 6 ter: US40 SOLICITUD DE MC 4 820 213
En el siguiente ejemplo no existe una imitación heráldica de un emblema de Estado:
Emblema protegido Solicitud de MC aceptada
Número 6 ter: AT10 SOLICITUD DE MC 8 298 077
La solicitud de marca comunitaria SOLICITUD DE MC 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.
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2.9.1.3 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).
2.9.2. 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.
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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.
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
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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.
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:
Motivos de denegación absolutos
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SOLICITUD DE MC 2 305 399
SOLICITUD DE MC 448 266
SOLICITUD DE MC 6 449 524
SOLICITUD DE MC 7 117 658
SOLICITUD DE MC 1 106 442 (asunto T-127/02)
CTM 4 081 014 (1640 C)
SOLICITUD DE MC 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 blanco 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 SOLICITUD DE MC 1 106 442 supra).
Motivos de denegación absolutos
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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:
Los dos casos siguientes no se consideran imitaciones heráldicas de la bandera de la Unión Europea porque no reproducen doce estrellas en un círculo (es decir, ambas marcas fueron aceptadas):
SOLICITUD DE MC 5 639 984 SOLICITUD DE MC6 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:
Motivos de denegación absolutos
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- 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 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
Motivos de denegación absolutos
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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.
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
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 36
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2.9.3. 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», apartado 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
Motivos de denegación absolutos
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Europea, e incluso si dicha actividad afectaba solo a algunos de los Estados de la UE (véase ibídem, apartados 45 y 46).
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».
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.».
Motivos de denegación absolutos
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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.
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 SOLICITUD DE MC 2 966 265
SOLICITUD DE MC 5 988 985
Motivos de denegación absolutos
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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.
Solicitudes de MC aceptadas
SOLICITUD DE MC 8 986 069
SOLICITUD DE MC 9 019 647
SOLICITUD DE MC 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.
Motivos de denegación absolutos
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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).
Por ejemplo, el Tribunal General (en el asunto T-3/12) confirmó que la siguiente marca (SOLICITUD DE MC 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».
Motivos de denegación absolutos
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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.
Motivos de denegación absolutos
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2.10 Artículo 7, apartado 1, letra j), del RMC
2.10.1 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, apartado 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 la denominación de origen o indicación 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.
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).
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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.
2.10.2 La aplicación del artículo 7, apartado 1, letra j), del RMC
2.10.2.1 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/legal-content/ES/TXT/PDF/?uri=CELEX:32012R0164&from=EN. 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 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. 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
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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 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 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.
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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 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)
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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.
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).
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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.
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».
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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.
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.
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.
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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.
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.
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DOP/IGP Marca comunitaria Aclaración
COGNAC KONJAKKI
Se considerará que una MC que contiene el término «Konjakki» evoca «Cognac» en finés.
BOURGOGNE
MC 2417269
«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.
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
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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.
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.
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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 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 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.
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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.
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»).
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2.10.3 DOP/IGP no protegidas con arreglo a los Reglamentos nº 1308/2013 y nº 110/2008
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». 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 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.
2.10.3.2 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.
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
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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 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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2.11 Artículo 7, apartado 1, letra k), del RMC
2.11.1 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 estén compuestas por una DOP/IGP de productos agrícolas o alimenticios registrada de conformidad con el Reglamento (UE) nº 1151/2012 5 , 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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FINAL VERSION 1.0 01/08/2015
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) cualquier otro tipo de indicación falsa o falaz en el envase o en la información sobre el producto; (iv) 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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 59
FINAL VERSION 1.0 01/08/2015
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 60
FINAL VERSION 1.0 01/08/2015
2.11.La aplicación del artículo 7, apartado 1, letra k), del RMC 2.11.2.1 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?locale=es .
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».
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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 61
FINAL VERSION 1.0 01/08/2015
2.11.2.2 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 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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 62
FINAL VERSION 1.0 01/08/2015
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)
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.
DOP/IGP Marca comunitaria
WELSH BEEF
(UK/PGI/0005/0057)
(MC nº 10 513 729)
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 63
FINAL VERSION 1.0 01/08/2015
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
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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 64
FINAL VERSION 1.0 01/08/2015
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.
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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 65
FINAL VERSION 1.0 01/08/2015
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)
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:
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 66
FINAL VERSION 1.0 01/08/2015
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 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:
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 67
FINAL VERSION 1.0 01/08/2015
DOP/IGP Marca comunitaria
(ejemplos inventados) Aclaración
JAGNIĘCINA PODHALAŃSKA
(PL/PGI/0005/00837) JAGNIĘCINA Z PODHALA Adjetivo en la IGP→ sustantivo en
la MC.
MEL DO ALENTEJO
(PT/PDO/0017/0252) MEL ALENTEJANA Nombre en la DOP→ adjetivo en la
MC.
SCOTTISH WILD SALMON
(GB/PGI/0005/00863)
WILD SALMON FROM SCOTLAND
Adjetivo en la IGP→ sustantivo 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 (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».
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 68
FINAL VERSION 1.0 01/08/2015
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 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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 69
FINAL VERSION 1.0 01/08/2015
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).
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).
2.11.2.3 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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 70
FINAL VERSION 1.0 01/08/2015
Aunque en las presentes Directrices no es posible consignar todos los supuestos posibles, los que siguen son algunos ejemplos de productos comparables.
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».
Motivos de denegación absolutos
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FINAL VERSION 1.0 01/08/2015
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.
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».
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.
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 72
FINAL VERSION 1.0 01/08/2015
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.
2.11.3 DOP/IGP no protegidas conforme al Reglamento (UE) nº 1151/2012
2.11.3.1 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:
«Para poder ser protegidas en el territorio de los Estados miembros, las denominaciones de origen y las indicaciones geográficas solo tienen que registrarse a escala 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
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 73
FINAL VERSION 1.0 01/08/2015
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.
2.11.3.2 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).
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
Motivos de denegación absolutos
Directrices relativas al Examen ante la Oficina, Parte B, Examen Página 74
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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 (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.
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).
2.12 Marcas comunitarias colectivas
2.12.1 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».
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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 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 comunitaria 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.
Motivos de denegación absolutos
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El reglamento de uso de su marca comunitaria colectiva que aporte el solicitante debe abarcar el uso para todos los productos y servicios incluidos en la lista de la solicitud de MC. El solicitante puedo hacerlo, por ejemplo, reproduciendo la lista de productos y servicios en el reglamento de uso o remitiendo a la lista de productos y servicios de la solicitud de la MC colectiva.
En lo que respecta a las marcas comunitarias colectivas que entran en conflicto con indicaciones geográficas protegidas o denominaciones de origen protegidas, los reglamentos de uso de esas marcas deben reflejar de forma precisa cualquier limitación que se haya incluido para superar tal conflicto. Por ejemplo, el reglamento de uso de la marca comunitaria colectiva «XYZ Denominación de origen» para «vinos» debe reflejar con precisión el hecho de referirse al uso de la marca para vinos que cumplan la denominación de origen «XYZ».
La lista de productos o servicios solicitada con la marca comunitaria colectiva deberá reflejar de forma precisa los productos y servicios mencionados en el reglamento de uso de su marca proporcionado por el solicitante.
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 una 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.
2.12.2 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, 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
Motivos de denegación absolutos
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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.
2.12.3 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 signo habitual. Si, por ejemplo, una marca no posee 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.
2.12.3.1 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),
Motivos de denegación absolutos
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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).
2.12.3.2 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.
2.12.3.3 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.
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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 C
OPOSICIÓN
SECCIÓN 3
SOLICITUD PRESENTADA POR EL AGENTE SIN EL CONSENTIMIENTO DEL TITULAR DE
LA MARCA (ARTÍCULO 8, APARTADO 3, DEL RMC)
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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 .......................................................................6
4 Condiciones de aplicación ....................................................................... 7 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................................................................. 13 4.3 Presentación de la solicitud sin el consentimiento del titular .............. 15 4.4 Ausencia de justificación del solicitante ................................................ 17 4.5 Aplicabilidad al margen de la identidad de los signos – productos y
servicios.................................................................................................... 19
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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 ser 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 Lisboa de 1958. La protección que confiere al titular de una marca 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 su propio nombre, en uno o varios de estos 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 su favor del citado registro, a menos que este agente o representante 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 marca 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 anular 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 invocarse en el procedimiento de oposición. En consecuencia, cualquier pretensión del oponente de que se prohíba el uso de la marca del agente o de que se le ceda la solicitud misma, será declarada inadmisible.
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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 su relación comercial con el titular y, de este 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 Recurso 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 prohibir el registro de las 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 las transacciones mercantiles. El artículo 52, apartado 1, letra b), del RMC, el cual permite declarar la nulidad de una marca 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 efectos 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 sancionarse en virtud 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 contradicción 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 presentar oposición se 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 presentar oposición contra una solicitud de marca comunitaria basada en el artículo 8, apartado 3, del RMC, lo ostentan exclusivamente los titulares de las marcas anteriores, las
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oposiciones presentadas en nombre de terceros, sean los licenciatarios o personas 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 agencia/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 las oposiciones basadas en este 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 base a una oposición 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 la 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 no hay nada en esta 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 París 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 registradas están amparadas por esta disposición, siempre que la legislación del país de origen reconozca derechos de este último tipo.
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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 fundamento a una acción de nulidad 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 las 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 el artículo a las «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 prioridad 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 la fecha de presentación de la MC impugnada, e incluso a su fecha de registro, y no pudieron utilizarse para establecer que el solicitante de la 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 denegación por motivos relativos o una declaración de nulidad en derechos que son posteriores a la MC impugnada» (apartado 53).
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 la 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 la fecha de presentación de la solicitud de MC en la Oficina.
3.2 Origen de la marca anterior
Habida cuenta de que 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 la protección conferida por este último artículo. En ausencia de cualquier otra mención del «territorio de referencia» en el artículo 8,
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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 esta 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 dichos actos. Ni que decir tiene que las marcas comunitarias o las 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 países 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 referencia” en el artículo 8, apartado 3, del RMC, la División de Anulación debe suponer que las marcas anteriores registradas en países fuera de la UE pueden constituir el fundamento de una solicitud de nulidad con arreglo al artículo 8, apartado 3, del RMC» (párrafo 33).
Resolución de 26/1/2012, en el asunto R 1956/2010-1 «HEATSTRIP» (confirmada mediante la sentencia T-184/12)
La oposición se basó en una marca no registrada protegida en Australia entre otros países. 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 sus 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;
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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 distribuidores 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).
N° de asunto Observaciones
Sentencia de 09/07/2014, T-184/12 «Heatstrip»
La Sala de Recurso concluyó que, aunque no existe un acuerdo de cooperación entre las partes, su relación en la fecha de la solicitud de la MC fue, a la luz de la correspondencia comercial entre ellos, más que la de un simple comprador y vendedor. Existía, más bien, un acuerdo de cooperación tácito que llevaba a la obligación fiduciaria sobre la parte del solicitante de la MC (apartado 67).
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 formas que las relaciones comerciales pueden revestir en la 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 cuestión 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.
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No obstante, ha de existir algún tipo de acuerdo de cooperación entre las partes. Si el solicitante actúa de forma totalmente independiente, sin mantener ningún tipo de relación con el titular, no puede considerársele un agente 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 establecer una relación 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.
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 la 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 sostener 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 exclusividad entre las partes, o una mera relación comercial de carácter no exclusivo.
De hecho, puede existir un acuerdo de cooperación comercial que suponga una obligación de lealtad incluso cuando no hay una cláusula de exclusividad (véase la sentencia de 09/07/2014, T-184/12 «Heatstrip», apartado 69).
El artículo 8, apartado 3, del RMC también se aplica a formas análogas de relaciones profesionales que generan una obligación de lealtad y confidencialidad entre el titular de la marca y el profesional, como es el caso de los abogados en
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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 las 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 representante legal de la 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 contrato escrito. Como es lógico, la existencia de un acuerdo 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 acuerdo 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 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 empresa 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 cánones, o la fabricación de los productos amparados por la marca bajo licencia o la asistencia en la creación de una red de distribución local, constituyen indicios sólidos de una relación comercial del tipo contemplado en el artículo 8, apartado 3, del RMC.
El Tribunal decidió asimismo que la cooperación activa entre un solicitante de MC y un oponente en la propaganda del producto, con el fin de optimizar su comercialización, podría dar lugar a la relación fiduciaria en virtud del artículo 8, apartado 3, del RMC.
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N° de asunto Observaciones
Resolución de 26/1/2012, R 1956/2010-1 «HEATSTRIP» (recurrida y confirmada mediante la sentencia T-184/12)
El Tribunal confirmó las conclusiones de la Sala que consideró que podía establecerse la existencia de una relación contractual vinculante mediante las cartas comerciales intercambiadas por las partes, también por correo electrónico. La Sala 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 la correspondencia por correo electrónico denotaba la existencia de un acuerdo de cooperación comercial entre las partes, de un tipo que da lugar a una relación de confianza (apartado 56). El Tribunal General no aceptó el argumento del solicitante según el cual no existía cooperación entre las partes (porque el solicitante no estaba integrado en la estructura de ventas del oponente, no estaba sujeto a una cláusula de no competencia y tenía que soportar los gastos de venta y promoción) y confirmó la resolución de la Sala (apartado 67 y siguientes).
Por otro lado, el mero deseo del solicitante de establecer una relación comercial con el oponente no puede reputarse de acuerdo entre las partes. Los agentes o representantes potenciales no están 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 la 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.
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 aprovecharse mejor de la 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
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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 poder 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 revocación tuvo efectos ex nunc (y no afecta a la 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 la fecha de presentación de la solicitud, cabe todavía deducir de las 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.
Por otra parte, el acuerdo entre las partes no tiene que estar todavía técnicamente en vigor al presentar la solicitud. La referencia a una solicitud presentada por un «agente o representante» no debería interpretarse como un requisito formal que debe satisfacerse al tiempo de la presentación de la solicitud de marca 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 las obligaciones de confianza poscontractuales, ninguna de las 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 solicitud 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 marcas en un país B, y al que se ha encargado que
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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 acuerdo, pero el representante lo rescinde para aprovecharse y presentar una marca por los mismos motivos. No obstante, esto no genera derechos absolutos para que el mandante obtenga la protección de sus marcas en otros países. El mero hecho de que el mandante sea titular de una marca 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 este principio, y únicamente en la medida en que 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 los conocimientos y contactos adquiridos gracias a su posición.
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 permitió a Gallant presentar una solicitud de MC, pero casi un año después de la 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 debe 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 la persona que figura en la 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 la relación existente entre la persona que presenta la solicitud y el agente, la situación es efectivamente la misma que si la
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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.
Resolución de 28/5/2003, en el asunto B 413 890 «CELLFOOD»
Si bien es evidente que debido a la naturaleza de la 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 agencia en nombre de la 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 la observancia de las obligaciones contractuales asumidas por el agente, habrá de considerarse un nuevo indicio de que 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 nombre de la 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 su 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 la empresa licenciataria también se encontraba obligada por los términos del acuerdo.
Solicitud presentada por el agente sin el consentimiento del titular de la marca
Guidelines for Examination in the Office, Part C, Opposition Page 15
FINAL VERSION 1.0 01/08/2015
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 dirigidas 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 estaba autorizado a presentar la solicitud de marca comunitaria. Una mera declaración de que la solicitud se presentó sin su consentimiento suele ser suficiente. Esto obedece a que no cabe esperar que el oponente acredite un hecho «negativo», como la ausencia de consentimiento. En estos casos se invierte la carga de la prueba e incumbe al solicitante probar que estaba autorizado a presentar la solicitud o justificar su actuación de cualquier otro modo.
En vista de la necesidad de proporcionar al titular legítimo una protección 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 la solicitud de marca 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 efectos 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 las que un agente o representante 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 su consentimiento expreso, o si el solicitante ha sobrepasado los límites de sus poderes.
Solicitud presentada por el agente sin el consentimiento del titular de la marca
Guidelines for Examination in the Office, Part C, Opposition Page 16
FINAL VERSION 1.0 01/08/2015
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 que 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. 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 que el titular tampoco pondrá objeciones a la 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 los 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 ser inequívoco, específico e incondicional (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 el 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 sus productos, y no demuestra ningún abandono del signo que facultara a alguien para presentar una solicitud de registro de dicho signo (o de su elemento dominante), como MC (apartado 27).
Solicitud presentada por el agente sin el consentimiento del titular de la marca
Guidelines for Examination in the Office, Part C, Opposition Page 17
FINAL VERSION 1.0 01/08/2015
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.
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 la MC había sobrevivido a la adquisición de los activos del antiguo titular de la marca y si, en la fecha de la 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 la 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 justificación para presentar la solicitud de marca comunitaria en su 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 la solicitud por el agente en su 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 le ha manifestado de forma 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 al agente el derecho de actuar por propia iniciativa, ya que el titular puede conservar todavía un interés en utilizar su marca en el territorio aunque no esté registrada. Dicha decisión empresarial no puede reputarse 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
Guidelines for Examination in the Office, Part C, Opposition Page 18
FINAL VERSION 1.0 01/08/2015
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 promocionar 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.
Finalmente, si el solicitante no presenta ninguna justificación de sus actos, no incumbe a la Oficina realizar especulaciones en ese sentido (véase la sentencia de 09/07/2014, T-184/12 «Heatstrip», apartados 73 y 74).
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 la 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 el signo disfrute de protección a escala de la 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 registro 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 se considera una justificación para las finalidades del artículo 8, apartado 3, del RMC. Lo anterior 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 la 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
Guidelines for Examination in the Office, Part C, Opposition Page 19
FINAL VERSION 1.0 01/08/2015
4.5 Aplicabilidad al margen de la identidad de los signos – 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 interpretación literal del artículo 8, apartado 3, del RMC, llevaría a la conclusión de que 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 relación 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 que permitiría al solicitante escapar a sus consecuencias introduciendo pequeñas modificaciones bien en la marca anterior bien en la lista de productos y servicios. En un caso semejante, los intereses del titular quedarían gravemente lesionados, en particular 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 sus representantes, debe evitarse 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 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, 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
Guidelines for Examination in the Office, Part C, Opposition Page 20
FINAL VERSION 1.0 01/08/2015
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
Guidelines for Examination in the Office, Part C, Opposition Page 21
FINAL VERSION 1.0 01/08/2015
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 la clase 13 se incluían en las 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 equivalentes 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
Guidelines for Examination in the Office, Part C, Opposition Page 22
FINAL VERSION 1.0 01/08/2015
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 interpretación 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
FINAL VERSION 1.0 01/08/2015
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
FINAL VERSION 1.0 01/08/2015
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.................................................................................... 16 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 ......................................................................... 27
4 Prueba del Derecho aplicable que regula el signo ............................... 28 4.1 La carga de la prueba............................................................................... 28 4.2 Prueba y grado de la prueba ................................................................... 29
4.2.1 Legislación nacional ........................................................................ 30 4.2.2 Legislación de la Unión Europea ..................................................... 32
CUADRO.......................................................................................................... 33
DERECHOS NACIONALES QUE CONSTITUYEN «DERECHOS ANTERIORES» A EFECTOS DEL ARTÍCULO 8, APARTADO 4, DEL RMC .......................................................................................................... 33
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 3
FINAL VERSION 1.0 01/08/2015
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 sistema 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 se 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 particular 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 oponerse 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 enumera ni expresa exhaustivamente los derechos específicos que pueden ser invocados con arreglo a esta disposición, sino que destaca un espectro amplio de derechos 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 el 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 la presentación de la 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 «protección 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 «uso 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.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 la presentación de la solicitud de marca 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 virtud 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 procedimiento 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 signo 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 la legislación de marcas, la legislación relativa a la 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 sería una base adecuada para una oposición contemplada en el artículo 8, apartado 4, del RMC porque el signo en cuestión no tiene condición de propiedad y, como tal, posee un carácter más público.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 pueden ser o no invocados 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 signos anteriores en los 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 «derechos 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 resulta decisiva, y es irrelevante si la legislación nacional que rige dicho signo o derechos 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;
○ indicaciones geográficas.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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La mayoría de identificadores 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 Estados 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 derechos, 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 dichos derechos en los Estados miembros y concede a los titulares de marcas no registradas la posibilidad de evitar el registro de una solicitud de marca comunitaria en los 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, y la resolución R-1446/2006-4 «RM2007», en la que se invocó una marca no registrada en Bélgica que se desestimó en la oposición por falta de fundamento, ya que en Bélgica las marcas no registradas no están protegidas.
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 asuntos 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).
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 procedimiento de anulación de la marca comunitaria de que se 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 signo que identifica y distingue a un establecimiento concreto. Además, los nombres comerciales están protegidos, como derechos exclusivos, en todos los Estados miembros.
A tenor de lo dispuesto en el artículo 8 del Convenio de París, los nombres
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 París. 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 requisito 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 dominio es una combinación de caracteres 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 propiedad intelectual. Estos registros no crean una situación de derecho de exclusividad. En su lugar, en este contexto «registro» se refiere a un acuerdo contractual entre el titular del nombre de dominio y el registrador del nombre de dominio.
Sin embargo, el uso de un nombre de dominio puede dar lugar a derechos en que puede basarse la oposición con arreglo al artículo 8, apartado 4, del RMC. Esto puede
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 invocaron derechos basados en el uso del nombre de dominio alemán «lucky-pet.de»; la resolución B 1 719 379 en la cual se invocaron derechos basados en el uso de un nombre de dominio francés «Helloresto.fr»; los asuntos T-321/11 y T-322/11, en los que se invocaron derechos basados en el uso del nombre de dominio italiano «partidodellaliberta.it» y en los que el Tribunal consideró que las referencias a este sitio en la prensa italiana no justificaban, por sí mismas, su uso en el contexto de una actividad comercial.
3.2.3.4 Títulos
Los títulos de revistas y otras publicaciones, o los títulos de categorías de obras similares tales como películas, series de televisión, etc., quedan comprendidos en el artículo 8, apartado 4, del RMC únicamente si en virtud de la 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 efectos 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 virtud 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 los productos y servicios de que se trate. Cuando un título 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
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 constituir 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 norma 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 causa de oposición válida, por cuanto permiten a su 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 los Reglamentos sobre productos alimenticios, vinos y bebidas espirituosas.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Para sustanciar su derecho, el oponente deberá presentar a la Oficina los hechos y pruebas relativos a la existencia de su 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 la 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 protección de las 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 pronunciado 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 las IGP de productos alimenticios, vinos y bebidas espirituosas.
Por consiguiente, las IGP de determinados productos alimenticios (7) y algunos productos agrícolas no alimenticios 8 (indicados en el anexo I del Tratado de Funcionamiento de la 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 oposición 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 que 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 particular o a una clase 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 la UE en los ámbitos pertinentes (actualmente productos alimenticios, vinos y bebidas espirituosas).
En la sentencia C-478/07 «BUD», el Tribunal analizó el carácter exhaustivo de la 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 la definición de esta 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 acuerdo internacional celebrado por un Estado miembro antes de su adhesión a la 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.
Derechos contemplados en el artículo 8, apartado 4, 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 el oponente haga referencia expresa a la excepción y la sustente mediante una línea argumental coherente y con pruebas 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 registro15 de una marca y que no constituyen un motivo de oposición con arreglo 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.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 los 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 los 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 las IGP no puede exceder de lo necesario para garantizar la función de la IGP, que es designar el origen geográfico de los productos y las 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 contexto no relacionado con el tráfico económico no se considera suficiente a efectos del artículo 8, apartado 4, del RMC.
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:
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 forma 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 su 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 Dinamarca se adquiere un derecho a una marca no registrada mediante el simple inicio del uso de la marca en territorio danés.
En Alemania, sin embargo, se adquiere el derecho a 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 la 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 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).
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 conformidad 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 comunitarias 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 Justicia ha declarado 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 Justicia también ha considerado que las entregas realizadas a título gratuito pueden tenerse 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 utilización 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).
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 particular, 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 los 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
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en el caso de que la oposición se base en el 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 ejemplo 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 se 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 la 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. 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 signo, 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 la 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).
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En función de la 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 la 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 sociedades 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.
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 los 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 explicaba el contenido de esta película, sus personajes, las cifras de negocio brutas, las ofertas de vídeo en Internet 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).
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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 (véase la sentencia de 18/04/2013, T-506/11 «Peek & Cloppenburg», apartados 19, 47 y 48).
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 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 incluso 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 signo 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 dicho signo puede considerarse no local, que tal utilización tenga lugar en una parte considerable de
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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:
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 muchas 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).
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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.
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 provincia. Dependerá de las circunstancias del caso (véase los ejemplos a continuación). La principal sentencia en este sentido es la que
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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:
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
BUD (denominación de origen)
T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, T- 309/06 RENV
Cuatro facturas de muy pequeña cuantía referidas únicamente a tres ciudades, sin ningún tipo de publicidad, no cumplían el requisito de uso comercial de un signo cuya importancia trascendiera el ámbito local (apartado 56). Se aplicó la misma conclusión a Austria, ya que el TG determinó que el uso se había limitado a entregas de 12 a 25 hectolitros anuales, correspondientes a una facturación marginal (de en torno a 1 200 EUR) y efectuadas casi exclusivamente en Viena (apartados 59- 61).
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 los documentos confirman el alcance geográfico de la 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).
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 signo 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:
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 alimentario cuya calidad o características se deben exclusiva o esencialmente al medio geográfico en que son elaborados, tratados o preparados. La oposición basada en el uso en España del nombre comercial «JAMÓN DE HUELVA » debe denegarse a la vista del hecho de que la prueba aportada no hace referencia a este 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 productos o servicios y una empresa 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).
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 los 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 (véase la sentencia de 07/05/2013, T-579/10 «makro», en la que el Tribunal confirmó el rechazo de la Sala de las pruebas presentadas por el solicitante de la anulación, las cuales se referían a periodos posteriores a la solicitud de la MC por parte del titular (apartado 70).
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 abstracto, derechos exclusivos exigibles a través de medidas 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 Oficina aplicará los Derechos de los Estados miembros, la legislación comunitaria o los acuerdos internacionales.
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 confusión y, por lo tanto, con arreglo a criterios
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 productos y servicios, la misma protección se concederá en virtud del artículo 8, apartado 4, del RMC.
4 Prueba del Derecho aplicable que regula el signo
4.1 La carga 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 alegación particular exponer a la Oficina las alegaciones, los hechos y los argumentos necesarios en apoyo de sus pretensiones. A diferencia de lo que sucede con otros motivos expuestos en el artículo 8 del RMC, el artículo 8, apartado 4, del Reglamento no especifica las condiciones que rigen la adquisición y el alcance de la protección del derecho anterior invocado. Se trata de una disposición marco en la que el oponente debe facilitar los datos relativos al Derecho aplicable.
La regla 19, apartado 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 REMC, el oponente deberá aportar una prueba de su adquisición, existencia continuada y ámbito de protección de dicho derecho.
De la interpretación que el Tribunal hace del Derecho se desprende que el oponente debe aportar la legislación nacional pertinente y demostrar que podría evitar el uso de una 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.
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… 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
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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).
El Tribunal dictaminó que, en las solicitudes de nulidad presentadas con arreglo al artículo 53, apartado 2, del RMC, corresponde a la parte que pretende invocar un derecho anterior protegido por el Derecho nacional
«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».
(Véanse las sentencias de 05/07/2011, C-263/09 P, «Elio Fiorucci», apartado 50, y de 27/03/2014, C-530/12 P, «Representación de una mano», apartado 34.)
Aunque estas sentencias se referían a procedimientos de nulidad con arreglo al artículo 53, apartado 2, del RMC, toda vez que el artículo 8, apartado 4, también se refiere a la invocación de derechos anteriores protegidos en virtud de la legislación de la Unión Europea o del Derecho del Estado miembro que regula el signo de que se trate, la jurisprudencia citada también se aplica a las oposiciones presentadas con arreglo al artículo 8, apartado 4, del RMC.
La información sobre el Derecho aplicable debe permitir que la Oficina comprenda y aplique el contenido de dicho Derecho, las condiciones para obtener la protección y el alcance de esta, y ha de permitir al solicitante ejercer su derecho de defensa. También puede resultar particularmente útil aportar pruebas referidas a jurisprudencia pertinente y/o a jurisprudencia que interprete el Derecho invocado.
La Oficina debe evaluar eficazmente la aplicabilidad del motivo de denegación invocado. Con objeto de garantizar la correcta aplicación del Derecho invocado, la Oficina tiene la facultad de comprobar, por todos los medios que estime apropiados, el contenido, las condiciones que rigen la aplicación y el alcance de la disposiciones del Derecho aplicable invocado por el oponente (véase la sentencia de 27/03/2014, C-530/12 P, «Representación de una mano», apartados 44 a 46), al tiempo que respeta el derecho de las partes a ser oídas. Si, después de haber comprobado las pruebas aportadas, la Oficina es de la opinión de que la interpretación propuesta por las partes o la aplicación del Derecho invocado no es exacta, podrá introducir elementos nuevos y/o adicionales. Al objeto de respetar el derecho de las partes a ser oídas, la Oficina les invitará a presentar observaciones sobre tales elementos, si procede.
Esta facultad de verificación se limita a garantizar la aplicación exacta del Derecho invocado por el oponente. Por consiguiente, no exime a este de la carga de la prueba ni puede ser sustituído el oponente en lo que concierne a su obligación de aportar el Derecho aplicable a los efectos del asunto de que se trate (véase la resolución de 02/06/2014, R-1587/2013-4 «GROUP», apartado 26 y la resolución de 30/06/2014, R-2256/2013-2 «ENERGY», apartado 26).
4.2 Prueba y grado de la prueba
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Con arreglo al artículo 8, apartado 4, del RMC, el Derecho aplicable puede ser el de un Estado miembro o la legislación de la Unión Europea.
4.2.1 Legislación nacional
lo que atañe al Derecho nacional, el oponente debe aportar:
a) las disposiciones del Derecho aplicable:
sobre las condiciones que rigen la adquisición de derechos (si existe un requisito de uso y, en caso afirmativo, el nivel de uso exigido; si existe un requisito de registro, etc.) y
sobre el alcance de la protección del derecho (si confiere el derecho de prohibición del uso; los perjuicios frente a los que se ofrece protección, a saber, riesgo de confusión, declaración falsa, ventaja desleal, evocación).
b) datos que demuestren el cumplimiento de las condiciones:
de adquisición (titularidad, adquisición anterior, si está en vigor o no, pruebas de uso si se basa en el uso, justificantes de registro si se basa en el registro, etc.) y
del alcance de la protección (hechos, pruebas y/o argumentos del cumplimiento de los requisitos establecidos por el Derecho aplicable en cuanto a una prohibición del uso, por ejemplo, la naturaleza de los productos, los servicios o la actividad comercial que protege el derecho anterior y su relación con los productos o servicios impugnados; un argumento contundente sobre la existencia de un riesgo de perjuicio).
En primer lugar, en lo que concierne a las disposiciones del Derecho aplicable (véase la letra a) supra), el oponente debe aportar la referencia al Derecho aplicable invocado y su contenido. El oponente debe aportar la referencia a la disposición jurídica pertinente (número de artículo y número y título de la legislación) y el contenido (texto) de la disposición jurídica, bien incluyéndola en los documentos presentados o bien señalándola en otra publicación adjunta a aquellos (por ejemplo, extractos de un boletín oficial, un comentario jurídico o una resolución judicial). Si la disposición pertinente se refiere a otra disposición jurídica, esta también debe aportarse, de modo que el solicitante y la Oficina puedan comprender el significado íntegro de la disposición invocada y determinar la posible pertinencia de esta otra disposición.
Toda vez que el oponente está obligado a demostrar la validez del contenido del Derecho aplicable, debe aportar el Derecho aplicable en la lengua original. Si tal lengua no es la del procedimiento, el oponente también tendrá que aportar una traducción completa de las disposiciones jurídicas invocadas de conformidad con las normas de justificación ordinarias. Sin embargo, una mera traducción del Derecho aplicable no constituye por sí misma una prueba y no puede sustituir al original; por ende, la traducción por sí sola no se considera suficiente para demostrar la validez del Derecho invocado. Véanse la regla 19, apartado 2, letra d), que exige la presentación de pruebas, y la regla 19, apartado 3, del REMC, que exige que las traducciones se presenten dentro de los plazos fijados para la presentación del documento original.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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En caso de que el oponente desee remitirse a la jurisprudencia nacional que interprete la legislación invocada, debe aportar la información pertinente con un grado de detalle suficiente (a saber, una copia de la resolución invocada o extractos de publicaciones jurídicas) y no sólo referirse a una publicación. Las normas de traducción se aplican igualmente a tales pruebas.
En segundo lugar, en lo que concierne a los pormenores que demuestran el cumplimiento de las condiciones del Derecho aplicable (véase la letra b) supra), aparte de aportar pruebas adecuadas de la adquisición del derecho invocado, el oponente presentará pruebas de que se cumplen realmente las condiciones de protección frente a la marca impugnada y, en concreto, expondrá una línea argumental contundente de por qué el oponente puede evitar el uso de la marca impugnada, en virtud del Derecho nacional específico. No se considerará suficiente una simple referencia al Derecho aplicable, ya que no corresponde a la Oficina realizar la alegación en nombre del oponente.
Por otra parte, en una oposición con arreglo al artículo 8, apartado 4, del RMC, lo que importa es si las disposiciones pertinentes del Derecho que confiere al oponente el derecho a prohibir el uso de una marca posterior se aplicarían a la marca impugnada en abstracto, y no si el uso de la marca impugnada podría impedirse realmente. Por lo tanto, no ha lugar el argumento del solicitante que defiende que el oponente no ha invocado el Derecho aplicable hasta entonces o no ha sido capaz de impedir el uso real de la marca impugnada en el territorio de que se trate (véase la sentencia de 29/03/2011, C-96/09 P «BUD», apartados 191 y-193).
Al final de esta Sección de las Directrices, se incluye un cuadro que contiene una visión general con las características fundamentales de la legislación nacional aplicable en los Estados miembros, que se incluye en las presentes Directrices solo a efectos informativos. Dado que este cuadro contiene una descripción de las disposiciones jurídicas a título exclusivamente informativo, la sola referencia a aquel no exime al oponente de la obligación de probar la validez de la legislación aplicable que regula el signo y que le confiere el derecho a prohibir el uso de una marca posterior, tal como se ha descrito anteriormente (véase la resolución de 22/01/2013, R-1182/2011-4, «Crown Lounge (marca fig.)», apartados 48 a 50).
Basándose en las explicaciones expuestas, la Oficina rechazará la oposición si:
el oponente invoca un derecho pero no incluye una referencia a una legislación y/o disposición jurídica nacional específica que proteja tal derecho (es decir, si el oponente se limita a indicar que la oposición se basa en una denominación comercial en Alemania o que la oposición basada en una denominación comercial en Alemania está protegida con arreglo a la Ley de marcas alemana); o
el oponente aporta una referencia al Derecho y las disposiciones jurídicas nacionales aplicables pero tal referencia es incompleta: la disposición jurídica sólo indica las condiciones que rigen la adquisición del derecho pero no el alcance de su protección (o viceversa) (es decir, el oponente indica que la oposición se basa en una denominación comercial en Alemania protegida por el artículo 5 de la Ley de marcas alemana, que establece las condiciones para la adquisición del derecho, pero falta la referencia a las condiciones relativas al alcance de la protección, el artículo 15 de dicha Ley); o
el oponente aporta la referencia a la disposición jurídica pertinente, pero no facilita el contenido (texto) de aquella (por ejemplo, los documentos
Derechos contemplados en el artículo 8, apartado 4, del RMC
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presentados por el oponente se refieren a la Ley de marcas alemana pero no incluyen su contenido); o
el oponente facilita el contenido de la disposición jurídica únicamente en la lengua del procedimiento pero no en la lengua original (por ejemplo, la lengua del procedimiento es el inglés y el texto de la Ley de marcas alemana solo se presenta en inglés, no en alemán) o
el oponente no facilita prueba alguna o aporta pruebas insuficientes de la adquisición del derecho invocado o no aporta argumentos de por qué cumple las condiciones que rigen el alcance de la protección (es decir, el oponente se refiere a las disposiciones jurídicas pertinentes y aporta su contenido tanto en la lengua original como traducidas a la lengua del procedimiento pero no aporta prueba alguna o facilita pruebas insuficientes de la adquisición de protección o bien no indica si cumple las condiciones relativas al alcance de la protección).
4.2.2 Legislación de la Unión Europea
Los requisitos expuestos también se aplican a la legislación de la Unión Europea, salvo que el oponente no esté obligado a facilitar el contenido (texto) de la legislación invocada. Sin embargo, el oponente habrá de aportar datos que demuestren el cumplimiento de las condiciones con arreglo a las disposiciones pertinentes de la legislación de la Unión Europea (letra b) supra).
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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................................................................................................... 35 2 Bulgaria .................................................................................................. 36 3 República Checa .................................................................................... 37 4 Dinamarca............................................................................................... 38 5 Alemania................................................................................................. 40 6 Estonia.................................................................................................... 41 7 Irlanda ..................................................................................................... 42 8 Grecia...................................................................................................... 44 9 España .................................................................................................... 46 10 Francia .................................................................................................... 47 11 Croacia.................................................................................................... 49 12 Italia......................................................................................................... 50 13 Chipre ..................................................................................................... 51 14 Letonia .................................................................................................... 51 15 Lituania ................................................................................................... 52 16 Hungría ................................................................................................... 53 17 Malta........................................................................................................ 53 18 Austria .................................................................................................... 54 19 Polonia.................................................................................................... 56 20 Portugal .................................................................................................. 57 21 Rumanía.................................................................................................. 59 22 Eslovenia ................................................................................................ 60 23 Eslovaquia .............................................................................................. 60 24 Finlandia ................................................................................................. 61
20 El contenido de la tabla se basa en gran medida en la información y retroinformación facilitada por 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
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25 Suecia ..................................................................................................... 63 26 Reino Unido............................................................................................ 64
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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 la «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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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 comprender productos o servicios idénticos o similares. 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 similares. 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 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.
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 determinadas empresas comerciales
Requisitos para la protección
La protección de la 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 sentido amplio y abarca, con arreglo a la 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
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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 la 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 la 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 signo que utiliza el comerciante para identificar su empresa o actividad como tal y que sirve de nombre de la empresa o actividad.
Los títulos de las obras son nombres o designaciones especiales de publicaciones, obras cinematográficas, obras musicales, obras de teatro u otras obras similares impresos. Esta puede ser una obra individual, una serie de obras o una publicación periódica. Esto también incluye títulos de radio o series de televisión, juegos de
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 su uso como signo de empresa 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 las 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 tiene 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 la
designación de una empresa 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
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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 similitud que induzca a
confusión con el nombre de especialidad 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
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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 usurpación («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 como consecuencia de las 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, siempre que pueda demostrarse que se posee una reputación o clientes en Irlanda. 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. Este régimen se explica en Intellectual Property in Ireland de Robert Clark, Shane Smyth, Niamh Hall, Bloomsbury Professional, 3ª edición 2010 (véase http://www.bloomsburyprofessional.com/1155/Bloomsbury-Professional-Intellectual- Property-Law-in-Ireland-3rd-edition.html ). 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; en el asunto «Guiness Ireland Group/Kilkenny Brewing Co Limited» [2000] Fleet Street Reports 112; en el asunto «Allergan Inc. contra Ocean Healthcare Ltd» [2008] IEHC 189; en el asunto «Jacob Fruitfield Food Group Ltd contra United Biscuits (UK) Ltd» [2007] IEHC 368; y en el asunto «McCambridge contra Brennan Bakeries Ltd» [2012] IESC 46.
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).
Derechos contemplados en el artículo 8, apartado 4, del RMC
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Requisitos para la protección
Los mismos que se indican en el apartado 7.1 anterior.
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 la 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
Derechos contemplados en el artículo 8, apartado 4, del RMC
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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 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 el 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 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) Uso anterior, riesgo de confusión respecto al origen.
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 incluidos en las disposiciones antes citadas (por ejemplo, protección de signos renombrados para productos distintos: dilución de su carácter distintivo o de su 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
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Requisitos para la protección
No es necesario que los nombres estén registrados ni solicitados en la Oficina Española de Patentes 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 la escritura de constitución de la 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.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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(b) Debe existir un riesgo de confusión entre el público.
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.
Derechos contemplados en el artículo 8, apartado 4, del RMC
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(b) Debe existir un riesgo de confusión o un daño al primer usuario.
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 similar y debe haberse 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 ser idénticos o similares, salvo si el solicitante poseía un nombre idéntico o similar 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 50
FINAL VERSION 1.0 01/08/2015
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 establecimiento, 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.
(b) Signos idénticos o similares, productos o servicios idénticos o similares y riesgo de confusión, incluido el riesgo de asociación.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 51
FINAL VERSION 1.0 01/08/2015
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 registrada 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 un 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 52
FINAL VERSION 1.0 01/08/2015
Requisitos para la protección
El nombre comercial debe adquirirse a través de un uso leal y lícito en el tráfico económico en Letonia antes de la fecha de presentación/prioridad de una marca posterior utilizada en un sector comercial idéntico o similar. El nombre comercial «notoriamente conocido» debe serlo 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 si 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 53
FINAL VERSION 1.0 01/08/2015
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 la Ley LVII de 1996 sobre la prohibición de prácticas 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 origen) 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 54
FINAL VERSION 1.0 01/08/2015
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 notoriedad 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 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. 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 55
FINAL VERSION 1.0 01/08/2015
Signos de empresas («Unternehmenskennzeichen»), es decir, nombres, empresas (nombres comerciales) («Firma») o designaciones específicas de una empresa («besondere Bezeichnung eines Unternehmens»), o designaciones 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 indemnización 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 la marca] y el derecho a solicitar 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 56
FINAL VERSION 1.0 01/08/2015
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 protección 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 conferidos (a) y requisitos (b)
(a) Derecho a prohibir la presentación de una marca.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 57
FINAL VERSION 1.0 01/08/2015
(b) Debe haber existido un uso anterior de la denominación de la 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 asociación con el titular del derecho anterior; la parte interesada debe haber solicitado el registro de la marca notoriamente conocida.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 58
FINAL VERSION 1.0 01/08/2015
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 la marca de prestigio anterior o es 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 conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de signos posteriores.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 59
FINAL VERSION 1.0 01/08/2015
(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 Rumanía, 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 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.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 60
FINAL VERSION 1.0 01/08/2015
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 similar a una marca o signo no registrado, en la República de Eslovenia 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.
Requisitos para la protección
Las marcas no registradas deben haber 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.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 61
FINAL VERSION 1.0 01/08/2015
(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 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.
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)
Requisitos para la protección
Uso que comporte el establecimiento de la marca no registrada en el mercado. Se considera establecida si es conocida generalmente en los correspondientes círculos empresariales o de consumidores de Finlandia como símbolo específico de los productos o servicios de su titular.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 62
FINAL VERSION 1.0 01/08/2015
Derechos conferidos (a) y requisitos (b)
(a) Derecho a prohibir el uso de marcas (registradas) posteriores. (b) El ámbito de protección 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 jurídica en actividades comerciales), incluyen los nombres comerciales secundarios («aputoiminimi, bifirma»: una persona física o jurídica puede desempeñar parte de sus actividades con un nombre 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. (b) Los signos deben hacer referencia a productos o servicios idénticos o similares y
debe existir un riesgo de confusión.
Derechos contemplados en el artículo 8, apartado 4, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 63
FINAL VERSION 1.0 01/08/2015
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 establecido en el mercado cuando es conocida, por una parte 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 64
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26 Reino Unido
Nota general para los signos no registrados: la usurpación («passing-off») no constituye en modo alguno un «derecho 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 lo 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
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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 derecho 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 situaciones 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 característica 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;
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);
Derechos contemplados en el artículo 8, apartado 4, del RMC
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c) el daño (real o potencial) mediante la creencia errónea generada por la representación falsa del demandado.
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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 C
OPOSICIÓN
SECCIÓN 5
MARCAS RENOMBRADAS ARTÍCULO 8, APARTADO 5, DEL RMC
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 Riesgo de perjuicio .................................................................................. 50 3.4.1 Objeto de la protección................................................................................. 50 3.4.2 Apreciación del riesgo de perjuicio............................................................... 52 3.4.3 Tipos de perjuicio ......................................................................................... 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 ........................................................................65
3.4.4 Prueba del riesgo de perjuicio ...................................................................... 71 3.4.4.1 Criterios aplicables a la prueba y carga de la prueba................................71 3.4.4.2 Medios de prueba......................................................................................74
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3.5 Uso sin justa causa.................................................................................. 74 3.5.1 Ejemplos de justa causa ............................................................................ 76
3.5.1.1 Justa causa confirmada.............................................................................76 3.5.1.2 Justa causa desestimada..........................................................................77
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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 las marcas anteriores en cuanto a productos o servicios idénticos o similares, sino también a los productos o servicios no similares sin exigir riesgo de confusión, a condición de que los signos sean idénticos o similares, de que la marca anterior goce de renombre y de que la utilización sin justa causa de la marca solicitada se aprovechara indebidamente del carácter distintivo o de la notoriedad de la marca anterior o fuera perjudicial para los mismos.
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 las 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 carácter distintivo o de la notoriedad de la marca anterior o fuera perjudicial para los mismos.. 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 o a perjuicios contra el carácter distintivo o de la notoriedad 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 marca comunitaria anterior, esta fuera notoriamente conocida en la Comunidad, y,
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 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 la aproximación de las legislaciones de los 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 cada 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 servicios no similares. 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 adquirir notoriedad en el territorio de referencia, en particular, teniendo en cuenta que la protección de las marcas notoriamente conocidas frente a productos y servicios no similares.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 aplicación 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 los 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 París (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 la marca registrada y a condición de que 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 registrada. Concluir que estas últimas disposiciones se refieren exclusivamente a las marcas no registradas 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 registradas 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 previsto la protección de las 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 similares, 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 alguno 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 París) 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 si 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 las 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 este 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 renombre y las marcas registradas notoriamente conocidas tiene repercusiones a la hora de plantear el motivo de la oposición, en el sentido de que para hacer aplicable el artículo 8, apartado 5, del RMC no debe influir el hecho de que 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 confusión («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 servir 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 motivos 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 servicios que no sean similares a aquellos para los que se haya registrado la marca anterior» (resaltado añadido.
Sin embargo, esta interpretación ha sido objeto de fuertes 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 aplicar el artículo 8, apartado 1, letra b), porque no existe 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 señalado que el artículo 8, apartado 5, del RMC debería aplicarse también, directamente o por 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 Justicia para una decisión prejudicial (sentencia de 09/01/2003, en el asunto C-292/00, «Davidoff»).
En el asunto «Davidoff», el Abogado General propuso atenerse a la 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 los 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 los productos no similares y que no existía 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 servicios idénticos o similares a los cubiertos por ésta» (resaltado añadido, apartado 30).
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 tal modo que se otorgue a las 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 interpretación ampliada del concepto de confusión.
El pronunciamiento del Tribunal en el asunto «Davidoff», otorgando también la protección ampliada prevista en el artículo 4, apartado 4, letra a), y en el artículo 5, apartado 2, de la DM a los productos o servicios idénticos o similares, ha sido 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 similares, 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 relación con el auténtico significado de la 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 la 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 acontecimiento 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 considerarse 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 la marca no tiene que ser conocida por un determinado 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 proporción 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 la marca entre el público pertinente, en el caso del renombre existe un umbral mínimo por debajo del cual no se 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 servicio 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 saber, 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 revistas científicas y en la 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 los 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 los productos en cuestión (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 vistos 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 múltiples 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 gran 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 diversos 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 determinado 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 llegar a su destino definitivo (distribuidores, minoristas, usuarios finales). En tales casos se plantea la cuestión de si el renombre debe valorarse dentro de cada grupo por separado o si 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 sido registrada para productos o servicios 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 público que debe tenerse 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 aprovechamiento 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 gozaban 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 son idénticos a los productos de la 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 extensa gama de productos y servicios destinados a diferentes tipos de público, será preciso examinar el renombre separadamente para cada categoría de productos. 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 algunos, mientras que en otros 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 algunos de los 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 cuenta 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 los productos y servicios impugnados, para los que no se pudo demostrar la existencia de un elevado carácter distintivo o de 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 incluían 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 registrado. 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 parte sustancial de éste. En el caso concreto del territorio del Benelux, el Tribunal consideró que puede tratarse de una parte de uno de los países que lo integran (sentencia de 14/09/1999, en el asunto C-375/97, «General Motors», apartados 28 y 29).
El Tribunal 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 los 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 sustancial, será preciso tener en cuenta tanto las dimensiones de la 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 marca 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 pertenecientes a la 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 era titular de una marca 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 forma que no incluía 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 presentación de la solicitud de MC objeto de oposición, teniendo en cuenta 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
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 las solicitudes anteriores al hacer referencia al artículo 8, apartado 2, del RMC. Aunque en la 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 marca 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 los efectos del registro tienen carácter retroactivo, la aplicabilidad del artículo 8, apartado 5, del RMC a las solicitudes anteriores no puede considerarse como una excepción a la regla según la cual dicha disposición se aplicaría exclusivamente a los 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 determinado 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 la 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 demostrar 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 fecha añadida posteriormente (por ejemplo con fechas manuscritas sobre documentos impresos), no son 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 Polonia, 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
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 la 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 pudo 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 la 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 que surja la discrepancia, será preciso examinar dichas pruebas basándose en su 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 realizar el sondeo los niveles de ventas y de gasto publicitario no habían 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 fecha posterior no carecerán de valor probatorio cuando permitan extraer conclusiones respecto a la 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 la proximidad a la fecha de presentación del período contemplado en el mismo (véanse, por analogía, el auto de 27/01/2004, en el asunto C-259/02, «La Mer
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 consideración 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 específico, 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 la 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 parte 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 saber, el grado de conocimiento de la 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 efectos 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 cuenta 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 conocimiento, menor el número de elementos de prueba adicionales que será necesario para demostrar el renombre, y viceversa.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 fruta. El conocimiento con apoyo (respuestas a un cuestionario en el 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 moderado, conviene no presuponer 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 sector concreto del mercado. Para definir el sector del mercado relevante, es preciso tener en cuenta 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.
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
«[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 verificables que permitiesen 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 falta 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 usuario, 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 como ocurre con los artículos de lujo 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 2007 (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 tres 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).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 24
FINAL VERSION 1.0 01/08/2015
En estos casos pueden ser pertinentes otros indicadores similares, como los índices de audiencia televisiva, por ejemplo cuando se trata de carreras 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 vistos en toda 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 la cuota de mercado (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 prensa, cifras de ventas, encuestas) demostraban que la marca anterior «CIALIS» se había utilizado con mucha regularidad antes de la fecha de solicitud de la MC, que los 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 facturación o un volumen de ventas determinados, conviene tener en cuenta 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 cifra de facturación determinados sean o no suficientemente importantes dependerá del tipo de producto considerado. Por ejemplo, será mucho más fácil alcanzar un gran volumen de ventas para productos cotidianos de gran consumo que cuando se trata de productos de lujo 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 cuestión deberá tomarse en consideración a la hora de determinar la importancia de un volumen de ventas o una cifra de facturación determinados.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 25
FINAL VERSION 1.0 01/08/2015
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 los que en general suele ser más difícil que una marca individual represente una fracción sustancial del total de las ventas.
Por el contrario, cuando no se indica separadamente la cuota de mercado de los 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 la cuota de mercado de los productos del oponente. La información sobre la cuota de mercado es especialmente importante en el 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 productos (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 estado en contacto con la marca. Por consiguiente, no cabe excluir que una proporción sustancial de la facturación o del volumen de ventas pueda, en determinadas 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 sus 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 01/08/2015
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 entredicho 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 apreciación global de todos 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 la disponibilidad de los productos o servicios. 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 que la marca ha alcanzado el umbral requerido, mientras que toda indicación que atestigüe un uso 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 los 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 incluían 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 01/08/2015
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 nuevo producto o, en el caso de que el comercio transfronterizo sea importante, de diferencias significativas de los precios en los 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 la 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 la marca «ARENA» particularmente notable (más de 30 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» (recurso desestimado en C-294/12 P)
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 coinciden necesariamente, ya que en la 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 ocasiones servir como indicio indirecto de una presencia 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 oposición. 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 01/08/2015
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 la solicitud de MC 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 las 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 campaña de promoción larga, intensa y amplia puede ser un sólido indicio de que la marca ha adquirido renombre entre los compradores reales o potenciales de los productos en cuestión, y de que ha llegado a ser 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 «BOTOX» en la prensa científica y generalista en lengua 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 las 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 sus 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 01/08/2015
referencia a las ventas. En situaciones como estas, el único medio de prueba de que dispone el oponente son las encuestas de opinión o procedimientos 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 las 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 medios 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 audiencia o de circulación. De manera similar, el patrocinio de actos deportivos o culturales prestigiosos puede constituir un indicio complementario de la intensidad de la promoción, ya que este tipo de programas implica a menudo inversiones considerables.
Asunto Comentarios
R 1673/2008-2, «FIESTA»
Las diversas campañas publicitarias de Ferrero en la televisión italiana (incluyendo la RAI) evidencian que la 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 la 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 las 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
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 30
FINAL VERSION 1.0 01/08/2015
3.1.3.7 Otros factores
El Tribunal ha precisado que la lista de factores presentada anteriormente no tiene sino carácter indicativo, y ha subrayado la necesidad de tomar en consideración, 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 través del uso, o de la Recomendación de la OMPI relativa a la protección de las marcas notoriamente conocidas. Así pues, dependiendo de su relevancia para cada asunto, a los factores antes indicados podemos añadir los siguientes: los antecedentes de ejercicio 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 que 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 esta índole sean numerosas (acerca del valor probatorio de las 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 la 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 testimonio indirecto sobre la difusión de la marca a nivel 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
FINAL VERSION 1.0 01/08/2015
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 explotación de la 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 una 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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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 Recurso, 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 primer 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 Oficina, 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 pruebas presentados en el curso de otro procedimiento de oposición, a condición de que se
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 la lengua de procedimiento dentro del plazo indicado de cuatro 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 los 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 la Oficina, y en menor medida al solicitante, comprobar la exactitud de tales 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 fuente 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 datos, 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 la documentación aportada no demuestra claramente que la marca anterior goce de notoriedad. Dicha documentación proviene, en su mayor parte, de la propia parte recurrida y contiene información tomada de sus catálogos comerciales, de su propia publicidad y de documentos 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).
Marcas renombradas, artículo 8, apartado 5, del RMC
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Asunto Comentarios
T-500/10, «doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS» (fig.)
Por lo que respecta a los 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 cuenta, en particular, 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 información 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 diferencia, por ejemplo, de la prueba del uso a que 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 pruebas pueden aportarse 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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Declaraciones juradas o solemnes
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 de dichas pruebas respecto al asunto examinado. Para más información sobre el peso y el valor probatorio de las declaraciones, véanse las Directrices, Parte C, Oposición, Sección 6, Prueba del uso.
Asunto Comentarios
R 0729/2009-1, «SKYBLOG»
La declaración presentada por una empresa de consultoría especializada en el sector de la estrategia de los medios digitales del Reino Unido atestigua que el oponente «es el principal proveedor de televisión 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 la marca han sido defendidos con éxito, convendrá examinar y determinar su relevancia. Los criterios que se aplicarán en este sentido serán el tipo de procedimientos de que se trata, el objeto de la 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 los 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
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que la Oficina atribuye a las pruebas no coincide necesariamente con el que les atribuyen los procedimientos nacionales. Por otra parte, las instancias nacionales pueden estar facultadas para examinar de oficio hechos de los 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 las resoluciones nacionales aumentará considerablemente si se esclarecen perfectamente las características de la legislación y los hechos en que se fundamentan. Ello obedece a que, en ausencia 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 referirse también a resoluciones anteriores de la 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 utilizarse 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 fin de que 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 las 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 las resoluciones anteriores de la 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 no haya tenido ocasión de comentarlos, o cuando el período de tiempo 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 cuero, maletas y calzado (resolución de 17/03/2011, R 543/2010-1, «G» (fig.) / «G» (fig.) y otros) (apartado 18).
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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 las encuestas de opinión 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 sido 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 cuestión. 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.
A falta de las indicaciones anteriores, los resultados de un estudio 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 las 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
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 España. 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 las 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. Auditorías e inspecciones
Las auditorías e inspecciones en la empresa del oponente pueden aportar informaciones útiles sobre la intensidad de uso de la marca, ya que por lo general incluyen datos relativos a los resultados económicos, volúmenes de ventas, facturación, beneficios, etc. Sin embargo, las pruebas de este tipo solo se considerarán pertinentes cuando se refieran específicamente a productos 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 las auditorías e inspecciones oficiales será muy superior, teniendo en cuenta que suelen realizarse por un organismo público, o por una empresa de auditoría reconocida, y que se basan en normas y principios generalmente aceptados.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 sus 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 distinciones 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, 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 factor 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).
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Asunto Comentarios
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 diccionario (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.
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 los informes anuales), su valor probatorio se verá incrementado considerablemente.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 41
FINAL VERSION 1.0 01/08/2015
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 correspondencia 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 distribución o de patrocinio o en correspondencia comercial son más apropiadas como señales indicadoras del alcance geográfico o de los aspectos promocionales de las actividades del oponente que como indicación del éxito de la 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 molde ascendió en 2004 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 ser 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 local) y los índices de audiencia o cifras de circulación registrados por los anuncios o publicaciones en cuestión, en caso, naturalmente, de que se disponga de esta información.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 42
FINAL VERSION 1.0 01/08/2015
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 los que aparece un gallo 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 las marcas a las 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.
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
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 43
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disposiciones, el que los signos sean similares (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 cuenta 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 este 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 aplicar el mismo criterio de similitud de los 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 los productos o servicios afectados, mientras que el apartado 5 tiene como finalidad impedir el registro de una marca posterior cuyo uso podría aprovecharse indebidamente del carácter distintivo o del renombre de la marca anterior o fuera perjudicial para los mismos.
La relación entre el concepto de «similitud» correspondiente a cada uno de estos apartados fue analizada por el Tribunal en el asunto TiMi KINDERJOGHURT: «la existencia de una similitud entre la marca anterior y la marca controvertida constituye un requisito de aplicación 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 rasgos gráficos, fonéticos o conceptuales 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 similitud requerido. Mientras que la protección contemplada en el artículo 8, apartado 1, letra b), del RMC 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
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 44
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perjuicios a que hace referencia el artículo 8, apartado 5, del RMC pueden derivarse de un grado de similitud 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 la 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 confusión 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 que 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 dicho 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 aplicarse 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 la luz de los 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 01/08/2015
3.3 Vínculo entre los signos
El Tribunal 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 la existencia de un riesgo de perjuicio.
El concepto de vínculo entre los signos fue abordado por el Tribunal en su sentencia de 27/11/2008, en el asunto C-252/07, «Intel Corporation», apartado 30 (y en la jurisprudencia citada en la misma), la cual, aunque se refiere a la 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 Tribunal 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 vínculo entre ambas, aunque no las confunda» (véanse, en relación con el artículo 5, apartado 2, de la 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 vínculo 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 que la marca posterior evoque en la 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 servicios 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
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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 conflicto 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 confusión en el 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 Tribunal 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 la 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 renombre de la marca anterior, un riesgo 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 los 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 «Riesgo de perjuicio», antes de determinar 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
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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 en C-100/11P)
En la fecha de solicitud de las marcas impugnadas, que se refieren a una serie de productos 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 conflicto de las 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
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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 la 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 restauración, ya sea durante la representación o en los 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 01/08/2015
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 servicios para los que se registraron respectivamente las marcas en conflicto sean los mismos o coincidan en cierta medida, dichos productos o servicios pueden ser tan diferentes que no resulte 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 significa «tienda, almacén». Sin embargo, es más probable que la 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 toda 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 pueda 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 01/08/2015
Signo anterior renombrado Solicitud de MC Asunto
ONLY R 1556/2009-2(confirmado por T-586/10)
Los productos de la 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 significado 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 Riesgo de perjuicio2
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).
2 A los efectos de las presentes Directrices, el término «perjuicio» incluye «aprovechamiento indebido», aunque en tales casos no tiene por qué ser un «perjuicio» que vaya en detrimento del carácter distintivo o del renombre de la marca o, más generalmente, de su titular.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 51
FINAL VERSION 1.0 01/08/2015
El Tribunal no ha precisado en mayor detalle en qué consistiría exactamente el perjuicio o aprovechamiento 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», 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 que todos los productos procedentes de la misma empresa poseen idéntica calidad (función de garantía), 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 su 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 la 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, la protección conferida en virtud del artículo 8, apartado 5, del RMC es válida para 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 que disminuiría su atractivo (perjuicio para el carácter distintivo) o devaluaría la imagen que ha adquirido ante el público (perjuicio para el renombre) o el uso de la marca objeto de oposición resultaría probablemente en la apropiación indebida de su poder de atracción o en la 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 52
FINAL VERSION 1.0 01/08/2015
3.4.2 Apreciación del riesgo de perjuicio
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 el supuesto de que la marca sea conocida suficientemente, el público, confrontado con la 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 análisis exhaustivo de la existencia de un riesgo de perjuicio, 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 ser de tal índole y magnitud que, teniendo en cuenta 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 demostrar 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 algún 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 01/08/2015
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 camiseta, 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 la marca anterior por la marca posterior, mayor será el riesgo de que con el uso actual o futuro 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 puedan afectar negativamente a la marca anterior.
3.4.3 Tipos de perjuicio
El artículo 8, apartado 5, del RMC menciona las formas siguientes de tipos de perjuicio: «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, a saber, cuando el uso de la marca objeto de oposición:
se aproveche indebidamente el carácter distintivo o del renombre de la marca anterior;
provoque perjuicios para el carácter distintivo, o provoque perjuicios para el renombre.
Respecto a la primera modalidad de perjuicio, 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 marco de dicha disposición (véase, por ejemplo, la sentencia de 06/07/2012, en el asunto
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 54
FINAL VERSION 1.0 01/08/2015
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 confusión 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 las marcas hasta conseguir que sean renombradas, protegiéndolas frente a otras 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 este último, o explotando su reputación, imagen y prestigio. Este supuesto puede conducir a situaciones 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 los productos del solicitante en una proporción excesiva elevada respecto a su propia inversión en promoción.
En su sentencia de 18/06/2009, en el asunto C-487/09, «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 atracción, 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 01/08/2015
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 del 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 perjuicio consistente en la obtención de una ventaja desleal basada en el carácter distintivo o renombre de la marca anterior deberá examinarse en relación con los consumidores normales de los 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 signo supone un aprovechamiento indebido del carácter distintivo o del renombre de la marca, es necesario efectuar una apreciación global que tenga en cuenta todos los factores pertinentes del caso en cuestión (sentencia de 10/05/2007, en el asunto T-47/06, «Nasdaq», apartado 53, confirmada en la 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 tratar de beneficiarse de su 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 relación 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. De forma parecida, el Tribunal ha sostenido que ciertas bebidas (clases 32 y 33) comercializadas como potenciadoras de la capacidad sexual estaban relacionadas con las propiedades de los productos de clase 5 (sustancias y productos farmacéuticos y veterinarios), para las que ya había una marca anterior registrada, Viagra (sentencia de 25/01/2012, en el asunto T-332/10 «VIAGUARA», apartado 74). 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 sector de mercado 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 este 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 del 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 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
Marcas renombradas, artículo 8, apartado 5, del RMC
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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).
Por consiguiente, la mala fe no constituye por sí misma una condición 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 que exista aprovechamiento indebido. La constatación de mala 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 la 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 perjuicio para sus intereses económicos o para la imagen de su marca (a diferencia de lo que ocurre con el menoscabo de la marca, véase más abajo), puesto que en la mayoría de los casos la distinción o prestigio del signo «tomados en préstamo» afectarán, sobre todo, a los 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 los 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 la 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
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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 las 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 los clientes que ejercen 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 la gestión de cantidades de dinero y de bienes 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 las 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 réplica de los productos amparados por una marca renombrada. En virtud de la 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
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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 modernidad que puede trasladarse a los 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 que 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 este punto no procede 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 cierta 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).
Sino anterior renombrado Solicitud de MC Asunto
VIAGRA VIAGURA T-332/10
Aunque reconoce que la función principal de una marca es la de servir como indicador de origen, el Tribunal General sostuvo que una marca también podía transmitir otros mensajes relacionados con cualidades o características de los productos o servicios designados o de las imágenes e impresiones causadas por el propio producto, por ejemplo lujo, estilo de vida, exclusividad, aventura o juventud. En este sentido, una marca poseía un valor económico intrínseco autónomo y diferente del propio de los productos o servicios para los que estaba registrada (apartado 57).
El riesgo de aprovechamiento indebido incluye casos evidentes de explotación o parasitismo de una marca que goza de renombre, concretamente el riesgo de transferir la imagen de la marca renombrada o las características proyectadas por la misma a los productos de la marca solicitada, facilitando de este modo la comercialización de dichos productos gracias a la asociación con la marca anterior que goza de renombre (apartado 59)
El Tribunal concluyó que, incluso si las bebidas de la marca solicitada no producían en realidad el mismo beneficio que los «ampliamente conocidos» fármacos para el tratamiento de la disfunción eréctil, lo importante era que el consumidor, a causa de la transferencia de asociaciones positivas proyectadas por la imagen de la marca anterior, se sentiría inclinado a comprar dichas bebidas esperando que produjeran efectos similares, como el aumento de la libido (apartados 52 y 67).
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 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 los grandes riesgos y costes que conlleva la introducción en el mercado de una marca completamente desconocida (SdR, apartado 130).
El Tribunal General respaldó las conclusiones de la Sala de Recurso.
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 solapamiento en el 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 la marca solicitada designa únicamente el tipo de publicaciones a las que se refiere.
3.4.3.2 Perjuicio para el carácter distintivo
Naturaleza del perjuicio
El perjuicio para el carácter distintivo de la marca anterior (denominado igualmente «dilución», «menoscabo» o «difuminación») consiste en la debilitación de la capacidad de dicha marca para identificar como procedentes de un titular los productos o servicios para los que se registró y respecto de los cuales se ha utilizado, puesto que el uso de la marca posterior da lugar a una dispersión de la identidad de la 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 la 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 indicado en las Directrices, Parte C, Oposición, Sección 2, Identidad y riesgo de confusión, Capítulo 4, Carácter distintivo, dicho «carácter 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.
Aunque el artículo 8, apartado 5, del RMC se refiere únicamente a los conflictos entre productos o servicios 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 la marca Rolls Royce para identificar como procedentes de su titular los productos o servicios 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
Marcas renombradas, artículo 8, apartado 5, del RMC
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forjado su renombre. Esto se debe a que, para estos consumidores, la marca traerá ahora a su memoria pocas o muchas asociaciones «distintas», mientras que previamente solo evocaba una.
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 se puede considerar 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 concluir 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. 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 perjuicio efectivo sí deberá convencer a la 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 recurso por la sentencia de 14/11/2013, en el asunto C-383/12P, apartados 42 y 43).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 63
FINAL VERSION 1.0 01/08/2015
Primer uso
El perjuicio para el carácter distintivo se caracteriza por un «efecto en cascada», lo que significa que aunque es posible que el primer uso de una marca 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 desencadenar 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 oposición planteados ante la Oficina, es posible que no se 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 uso 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 la marca solicitada «se aprovechara indebidamente del carácter distintivo o de la notoriedad de la marca anterior o fuera perjudicial para los mismos».
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 una marca posterior idéntica o similar 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 carácter distintivo en el sentido de que los consumidores la deberán asociar con un único 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 variante 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 la marca solicitada pueda llevar a una dilución de la 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 64
FINAL VERSION 1.0 01/08/2015
En su sentencia de 25/05/2005, en el asunto T-67/04, «SPA-FINDERS», el Tribunal General confirmó la conclusión de que el uso de la 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 marca, 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 la 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 riesgo de dilución, porque será difícil aceptar que el atractivo de la marca anterior resulte diluido si no es particularmente único.
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).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 65
FINAL VERSION 1.0 01/08/2015
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 la marca anterior, en otras palabras, al riesgo de “dilución” y de “menoscabo gradual” de esta marca, tal como se explica en los apartados 37 y 38 supra, procede señalar que el 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 saber, 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 autos, el Tribunal de Primera Instancia observa que la demandante no aporta ningún elemento que permita concluir que el carácter distintivo de la marca SPA corre el riesgo de sufrir 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 vínculo 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.
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 66
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Puede considerarse como un nivel más elevado de dilución, en el sentido de que el vínculo que el público establece con la marca posterior no solo debilita a la 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 verse 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 su titular. El riesgo de ese perjuicio puede resultar, 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 que un tercero utilizara una marca de ginebra renombrada para designar a un detergente 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 nivel 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 deterioro 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 carácter 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 la marca, el oponente deberá probar que el uso de la marca solicitada provocaría asociaciones mentales
Marcas renombradas, artículo 8, apartado 5, del RMC
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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).
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 la 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 la degradación de la imagen de una marca a través de su asociación con algo inapropiado puede ocurrir cuando la marca se usa, o bien en un contexto desagradable, obsceno o degradante, o bien en una contexto que, sin ser intrínsecamente degradante, resulta incompatible con la imagen de la 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 Oficina 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 la calidad de los productos y servicios porque, además de ser sumamente subjetiva, no sería 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 Oficina 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 Oficina, los efectos perjudiciales del uso del signo impugnado en relación con los productos y 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 forma que evoca una marca anterior renombrada, esto supondría normalmente un aprovechamiento
Marcas renombradas, artículo 8, apartado 5, del RMC
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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
Productos a base de tabaco, cigarrillos y puros, entre otros
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 palabra (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).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 69
FINAL VERSION 1.0 01/08/2015
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, entre otros.
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 cuero selectos y de elaboración 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).
Signo anterior renombrado Solicitud de MC Asunto
EMILIO PUCCI
T-373/09 (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 existía un vínculo 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).
Marcas renombradas, artículo 8, apartado 5, del RMC
Directrices relativas al Examen ante la Oficina, Parte C, Oposición Página 70
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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 había 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).
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).
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 servicios poseen una característica o cualidad que puede ejercer una influencia 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 perjuicio que el uso de la 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 la 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 riesgo de perjuicio
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 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 cabe descartar totalmente esta posibilidad, y si existen indicios de uso o perjuicio real, deberán analizarse y sopesarse en función de su importancia.
Sin embargo, que el perjuicio o aprovechamiento indebido puedan ser únicamente potenciales no significa que la mera posibilidad sea suficiente a los efectos del artículo 8, apartado 5, del RMC. El riesgo de perjuicio o de aprovechamiento indebido
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 excluirse en general el riesgo de perjuicio o aprovechamiento indebido, o que se trata de una posibilidad remota. El titular de la marca anterior deberá aportar pruebas que permitan concluir prima facie que el riesgo de un aprovechamiento indebido o perjuicio en el futuro no es meramente 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 términos generales al aprovechamiento indebido o al 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 perjuicio potencial que no tenga 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 cuestión y de todas las circunstancias relevantes, demuestren específicamente que se puede producir este perjuicio. No es suficiente la mera exposición del renombre y buena imagen de las marcas anteriores, sin respaldarla con otros datos o razonamientos (resolución de 15/02/2012, en el asunto R 2559/2010-1, «GALLO», apartados 38 y 39, y jurisprudencia del Tribunal citada en la misma), tal como se detalla en los párrafos siguientes.
El nivel preciso de las pruebas necesarias para acreditar que el riesgo de perjuicio o aprovechamiento indebido es serio y no meramente 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 para establecer el renombre, 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.
Por consiguiente, dentro del plazo correspondiente a la fase contradictoria del procedimiento de oposición, el oponente soportará la carga de la prueba para demostrar que el uso, presente o futuro, de la marca solicitada ha causado, o es probable que cause, un perjuicio para el carácter distintivo o el renombre de la marca anterior, o bien que se ha aprovechado, o es probable que se aproveche, de los 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 gran renombre, el perjuicio o aprovechamiento indebido se deberán demostrar y/o argumentar adecuadamente, teniendo en cuenta ambas marcas y los productos y servicios relevantes, ya que de otro modo las marcas notoriamente conocidas recibirían una protección incondicional frente a los signos idénticos o similares, para prácticamente cualquier tipo de producto. Esto sería claramente incompatible con la letra y el espíritu del artículo 8, apartado 5, del RMC, porque en tal
Marcas renombradas, artículo 8, apartado 5, del RMC
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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 aprovechamiento 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 una variedad de indicios, dependiendo de la clase de perjuicio o aprovechamiento indebido denunciados, como una notable disminución de las ventas del producto que lleva la marca, o una pérdida de clientela, o un descenso del nivel de reconocimiento de la marca anterior por parte del público.
Sin embargo, en el supuesto de un perjuicio o de aprovechamiento 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 (recurso desestimado en C-294/12 P), 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).
A esta conclusión se puede llegar, en particular, apoyándose en las deducciones lógicas de un análisis de probabilidades y teniendo en cuenta 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); 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 estos casos el objeto de la prueba es la probabilidad de un suceso futuro y que, por definición, los argumentos del oponente no pueden equivaler por sí solos a una prueba, 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 este 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 perjuicio» (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 18/06/2009, 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).
Marcas renombradas, artículo 8, apartado 5, del RMC
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Estas presunciones 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 serio riesgo de que se producirá en el futuro.
3.4.4.2 Medios de prueba
Cuando el oponente alegue la existencia de un perjuicio o aprovechamiento indebido potencial deberá argumentar qué condiciones fácticas deberían darse en cada caso particular para que se produjera un riesgo, serio y no hipotético, de perjuicio o aprovechamiento indebido, aportando para ello medios de prueba como los indicados en el siguiente apartado sobre los medios de prueba de un perjuicio o aprovechamiento indebido real.
También es posible justificar las conclusiones relativas al riesgo de perjuicio en el futuro apoyándose en las deducciones lógicas de un análisis 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).
Cuando el oponente alegue la existencia de un perjuicio o aprovechamiento indebido real, podrá utilizar todos los medios de prueba enumerados en el artículo 78 del RMC. Por ejemplo, puede demostrar que se ha producido una disminución real del conocimiento de la marca haciendo referencia a encuestas de opinión o a otras pruebas documentales, o bien demostrar una caída de las ventas presentando estadísticas comerciale. 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 relación con las pruebas requeridas para demostrar el renombre.
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.
Marcas renombradas, artículo 8, apartado 5, del RMC
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Sin embargo, si se determina que no existe ninguno de estos tres tipos de perjuicio, no se podrá prohibir el registro y uso de la marca solicitada, ya que en tales circunstancias es irrelevante la presencia o ausencia 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 utilizar 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 la 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, recurso C-294/12 P desestimado). 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 situación similar podría presentarse cuando el solicitante haya estado usando el signo para designar productos no similares en el territorio de referencia antes de que el oponente solicitase su marca o de que esta última adquiriese renombre, especialmente cuando esta coexistencia no haya afectado en forma alguna al carácter distintivo o a la reputación de la marca anterior.
Interpretando el artículo 5, apartado 2 de la Directiva 89/104 (cuyo contenido normativo es esencialmente idéntico al del artículo 8, apartado 5, del RMC), el Tribunal determinó que el titular de una marca renombrada podría ser obligado, en virtud del concepto de «causa justa» en el sentido de dicha disposición, a aceptar que un tercerohiciera uso de un signo similar al de dicha marca en relación con un producto idéntico al aquel para el que se registró la marca, siempre y cuando se demostrara que el uso de ese signo en relación con el producto idéntico se efectuó de buena fe (sentencia de 06/02/2014, en el asunto C-65/12, «The Bulldog», apartado 60). El Tribunal proporcionó más detalles sobre los factores a tener en cuenta para la apreciación de causa justa debido a un uso 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 uso genérico del signo para designar el tipo de productos o servicios, por tratarse de elementos verbales o de elementos figurativos genéricos), o cuando le corresponda algún derecho específico a utilizar la marca para dichos productos o servicios (acreditando, por ejemplo, que existe algún acuerdo de coexistencia en vigor que le autoriza a usar el signo).
Marcas renombradas, artículo 8, apartado 5, del RMC
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En requisito de justa causa no se 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 la 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 razón 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 abreviatura adecuada para indicar, en muchas 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 la 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 usar 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.
Resolución de 25/08/2011 en el procedimiento de oposición B 1 708 398, «Posten AB v Ceská pošta s.p.»
Se confirmó que el 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).
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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 el solicitante no había 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 los 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 la conclusión de que el único argumento planteado ante la Sala de Recurso en relación con el supuesto de justa causa (a saber, que se 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.
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 una solicitud sobre la que la marca del oponente tenga prioridad.
Marcas renombradas, artículo 8, apartado 5, del RMC
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Asunto Comentarios
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 Sala 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.
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 cuestión, que prevalezca respecto a la 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 la 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 la coexistencia no constituía una justa causa a los efectos de autorizar el registro de una MC.
Marcas renombradas, artículo 8, apartado 5, del RMC
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Asunto Comentarios
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 serie de nombres 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
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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 D
ANULACIÓN
SECCIÓN 2
NORMAS SUSTANTIVAS
Normas sustantivas
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Índice
1 Generalidades............................................................................................ 4 1.1 Causas de anulación.................................................................................. 4 1.2 Procedimientos inter partes ......................................................................4 1.3 Efectos de la caducidad y de la nulidad ................................................... 4
2 Caducidad .................................................................................................. 5 2.1 Introducción................................................................................................ 5 2.2 Falta de uso de la MC – artículo 51, apartado 1, letra a), del RMC..........5
2.2.1 Carga de la prueba......................................................................................... 6 2.2.2 Uso efectivo .................................................................................................... 6 2.2.3 Período que debe tomarse en consideración................................................. 7 2.2.4 Causas justificativas de la falta de uso .......................................................... 7
2.3 Marcas comunitarias que se convierten en la designación usual (término genérico) – artículo 51, apartado 1, letra b), del RMC............... 7 2.3.1 Carga de la prueba......................................................................................... 7 2.3.2 Fecha pertinente............................................................................................. 8 2.3.3 Público destinatario ........................................................................................ 8 2.3.4 Designación usual .......................................................................................... 8 2.3.5 Defensa del titular........................................................................................... 9
2.4 Marcas comunitarias que induzcan a error – artículo 51, apartado 1, letra c), del RMC .....................................................................9 2.4.1. Carga de la prueba......................................................................................... 9 2.4.2 Fecha pertinente........................................................................................... 10 2.4.3 Criterios aplicables ....................................................................................... 10 2.4.4 Ejemplos ....................................................................................................... 10
3 Causas de nulidad absoluta ................................................................... 10 3.1 Marcas comunitarias registradas contrarias al artículo 7 –
artículo 52, apartado 1, letra a), del RMC................................................ 10 3.1.1 Carga de la prueba....................................................................................... 11 3.1.2 Fecha pertinente........................................................................................... 11 3.1.3 Normas aplicables ........................................................................................ 12
3.2. Defensa contra la alegación de falta de carácter distintivo .................. 12 3.3 Mala fe - artículo 52, apartado 1, letra b) del RMC.................................. 13
3.3.1 Fecha pertinente........................................................................................... 13 3.3.2 Concepto de mala fe .................................................................................... 13
3.3.2.1 Factores que podrían indicar la existencia de mala fe ..............................14
3.3.2.2 Factores que no supondrían la existencia de mala fe ...............................18
3.3.3 Prueba de la mala fe .................................................................................... 18 3.3.4 Relación con otras disposiciones del RMC .................................................. 19 3.3.5 Grado de nulidad .......................................................................................... 19
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4 Causas de nulidad relativa ..................................................................... 19 4.1 Introducción.............................................................................................. 19 4.2 Causas a tenor del artículo 53, apartado 1, del RMC ............................. 20
4.2.1 Normas aplicables ........................................................................................ 20 4.2.2 Fecha pertinente........................................................................................... 21
4.2.2.1 Para la apreciación del carácter distintivo elevado o renombre ................21
4.2.2.2. Solicitud basada en el artículo 53, apartado 1, letra c) en conexión con el artículo 8, apartado 4, del RMC ......................................................21
4.3 Causas contempladas en el artículo 53, apartado 2 del RMC – Otros derechos anteriores....................................................................... 22 4.3.1 Derecho al nombre/ Derecho a la imagen.................................................... 22 4.3.2 Derecho de autor .......................................................................................... 23 4.3.3 Otros derechos de propiedad industrial ....................................................... 25
4.4 Falta de uso de la marca anterior............................................................ 26 4.5 Defensa contra una solicitud de nulidad con base en causas
relativas..................................................................................................... 27 4.5.1 Consentimiento al registro............................................................................ 27 4.5.2 Solicitudes anteriores de declaración de nulidad o reconvenciones............ 28 4.5.3 Tolerancia ..................................................................................................... 28
4.5.3.1 Ejemplos en los que se desestima la reclamación de tolerancia...............29
4.5.3.2 Ejemplos en los que se estima (parcialmente) la reclamación de tolerancia...................................................................................................31
5 Cosa juzgada ........................................................................................... 31
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1 Generalidades
1.1 Causas de anulación
De conformidad con el artículo 56, apartado 1, del RMC, los «procedimientos de anulación» comprenden las solicitudes de caducidad y las solicitudes de nulidad.
El artículo 51 del RMC establece las causas de caducidad. Las causas de nulidad se encuentran reguladas en los artículos 52 (causas absolutas) y 53 del RMC (causas relativas). El REMC regula la caducidad y la nulidad en las reglas 37 a 41.
1.2 Procedimientos inter partes
La propia Oficina nunca inicia los procedimientos de anulación. La iniciativa corresponde al solicitante de la anulación, incluso en asuntos basados en causas absolutas de nulidad.
El artículo 56, apartado 1, del RMC establece la legitimidad activa que debe asistir al solicitante a fin de presentar la solicitud de caducidad o la declaración de nulidad. Para más detalles, véanse las Directrices, Parte D, Anulación, Sección 1, Procedimientos de anulación, apartados 2.1 y 4.1.
1.3 Efectos de la caducidad y de la nulidad
A tenor del artículo 55, apartado 1, del RMC, en el supuesto de caducidad, y en la medida en que los derechos del titular hayan caducado, se considerará que la marca comunitaria (MC) no tuvo los efectos señalados en el RMC desde la fecha de solicitud de la caducidad. Este precepto es particularmente relevante en los casos en que la solicitud de caducidad por causa de falta de uso va seguida por la renuncia de la MC. A este respecto, el Tribunal General ha declarado que la parte que solicita la caducidad tiene interés legítimo en continuar el procedimiento de caducidad a pesar de la renuncia de la MC por su titular, ya que esa continuación del procedimiento de caducidad puede dar lugar a una declaración de falta de uso que impida al titular, de acuerdo con el artículo 112, apartado 2, letra a), del RMC, solicitar la conversión de su marca (auto de 24/10/2013 en el asunto T-451/12, «Stormberg», apartado 48) (para la nueva práctica de la Oficina sobre la renuncia, véanse las Directrices, Parte D, Anulación, Sección 1, Procedimientos de anulación, apartados 7.3.1 y 7.3.2)
La Oficina podrá fijar, a instancia de parte, una fecha anterior en la que tuvo lugar la causa de caducidad, siempre que la parte solicitante demuestre un interés jurídico legítimo a tal efecto. Sobre la base de la información disponible en el expediente pertinente, será posible determinar con precisión la fecha anterior. La fecha anterior, en cualquier caso, deberá establecerse con posterioridad al «período de gracia» de cinco años del que dispone el titular de la MC tras el registro de una MC en virtud del artículo 15, del RMC (resolución de 28/07/2010, 3349 C «ALPHATRAD», confirmada
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por la resolución de 08/10/2012, R 0444/2011-1, apartados 48-50, y sentencia de 16/012014, en el asunto T-538/12).
De conformidad con el artículo 55, apartado 2, del RMC, en el supuesto de declaración de nulidad, se considerará que la MC careció de los efectos especificados en la RMC desde el principio.
2 Caducidad
2.1 Introducción
Según el artículo 51, apartado 1, del RMC, existen tres causas de caducidad:
que la MC no haya sido objeto de un uso efectivo dentro de un período ininterrumpido de cinco años;
que la MC se haya convertido en designación usual por la actividad o la inactividad de su titular;
que la MC induzca al público a error a consecuencia del uso que haga de la misma su titular o que se haga con su consentimiento.
Estas causas serán analizadas en mayor detalle en las secciones siguientes. A tenor del artículo 51, apartado 2, del RMC, si la causa de caducidad solamente existiera para una parte de los productos o de los servicios para los que esté registrada la MC, se declarará la caducidad de los derechos del titular solo para los productos o los servicios de que se trate.
2.2 Falta de uso de la MC – artículo 51, apartado 1, letra a), del RMC
En virtud del artículo 51, apartado 1, letra a), del RMC, si, dentro de un período ininterrumpido de cinco años tras el registro de la MC, y antes de que se solicite su anulación, ésta no ha sido objeto de un uso efectivo, en el sentido del artículo 15, del RMC, se deberá cancelar la MC, salvo si existen causas justificativas de la falta de uso.
Conforme al artículo 51, apartado 2, del RMC, si únicamente se hubiera utilizado la MC para una parte de los productos y servicios para los que esté registrada, la caducidad se limitará a los productos y servicios no utilizados.
En lo que respecta a los aspectos de procedimiento de la presentación de la prueba (los plazos para la presentación de la prueba, rondas adicionales para las observaciones y la presentación de prueba adicional pertinente, traducción de la prueba, etc.), véanse las Directrices, Parte D, Anulación, Sección 1, Procedimientos de anulación.
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Las reglas prácticas aplicables a la apreciación sustantiva de la prueba del uso de derechos anteriores en los procedimientos de oposición son de aplicación a la apreciación de las solicitudes de caducidad basadas en la falta de uso (véanse las Directrices, Parte C, Oposición, Sección 6, Prueba del uso, Capítulo 2, Derecho sustantivo). No obstante, existen diversas particularidades que deben tenerse en consideración en el contexto de los procedimientos de caducidad y que se examinan a continuación.
2.2.1 Carga de la prueba
En virtud de la regla 40, apartado 5, del REMC, la carga de la prueba corresponde al titular de la MC.
El papel de la Oficina consiste en examinar las pruebas a la luz de las alegaciones presentadas por las partes. La Oficina no puede determinar de oficio el uso efectivo de marcas anteriores. Y no tiene obligación alguna de recabar pruebas de oficio. Incluso los titulares de supuestas marcas de renombre deben presentar pruebas para acreditar el uso efectivo de sus marcas.
2.2.2 Uso efectivo
A tenor de la regla 40, apartado 5, en conexión con la regla 22, apartado 3, del REMC, los indicios y las pruebas para la presentación de la prueba del uso consistirán en indicaciones sobre el lugar, tiempo, alcance y naturaleza del uso de la marca impugnada respecto a los productos y servicios para los que esté registrada.
Como se indicó anteriormente, la apreciación del uso efectivo (incluyendo el lugar, tiempo, alcance y naturaleza del uso) es la misma tanto en los procedimientos de anulación como en los de oposición. Deben tenerse en cuenta las consideraciones pormenorizadas que figuran en las Directrices, Parte C, Oposición, Sección 6, Prueba del uso, Capítulo 2, Derecho sustantivo.
La falta de uso efectivo de algunos de los productos o servicios impugnados en un procedimiento de caducidad implica la caducidad de la MC para esos productos o servicios. Por consiguiente, se deberá tener suma cautela al apreciar la prueba del uso en los procedimientos de caducidad en lo que respecta al uso de los productos o servicios registrados (e impugnados).
Asunto Comentarios
R 1857/2011-4 AQUOS
La MC se registró para artículos de pesca; equipamiento de pesca; accesorios de pesca en la clase 28. La Sala de Recurso confirmó la resolución de la División de Anulación y mantuvo la MC para cañas de pescar y los no contestados sedales en la clase 28. La Sala de Recurso está de acuerdo con la División de Anulación en que la prueba aportada con el fin de demostrar el uso de la discutida MC acreditó efectivamente uso efectivo en relación con las cañas de pescar, y que estos productos son suficientemente diferenciados de las categorías más amplias de artículos de pesca y equipamiento de pesca para poder constituir subcategorías coherentes. Este parecer no fue discutido de contrario por el recurrente.
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2.2.3 Período que debe tomarse en consideración
La fecha pertinente es la fecha de presentación de la solicitud de caducidad.
Únicamente se podrá cancelar la MC si ha estado registrada durante más de cinco años con anterioridad a esa fecha.
Si se cumple esta condición, la MC debe haberse utilizado de manera efectiva dentro de los cinco años anteriores a dicha fecha (esto es, el período de cinco años siempre se cuenta hacia atrás a partir de la fecha pertinente).
Existe una excepción: si el uso efectivo de la MC se inicia o se reanuda dentro de los tres meses anteriores a la presentación de la solicitud de caducidad, dicho uso no se tendrá en cuenta en caso de que los preparativos para el inicio o reanudación del uso tengan lugar únicamente después de que el titular de la MC haya tenido conocimiento de la presentación de una solicitud de caducidad (artículo 51, apartado 1, letra a), del RMC).
La carga de la prueba de esta excepción recae sobre el solicitante de la caducidad, que deberá presentar pruebas de que puso en conocimiento del titular de la MC su intención de presentar una solicitud de caducidad.
2.2.4 Causas justificativas de la falta de uso
Deben tenerse en cuenta las consideraciones pormenorizadas que figuran en las Directrices, Parte C, Oposición, Sección 6, Prueba del uso, Capítulo 2, Derecho sustantivo y, en particular, el apartado 2.11.
2.3 Marcas comunitarias que se convierten en la designación usual (término genérico) – 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 la prueba recae sobre el solicitante de caducidad, 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.
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La Oficina 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 consideración 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 caducidad 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
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 registro de la MC, aunque los hechos y circunstancias que hayan tenido lugar 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
Podrá declararse la caducidad de una MC de acuerdo con el artículo 51, apartado 1, letra b), del RMC si la marca se ha 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 cuestión (sentencia de 29/04/2004, en el asunto C-371/02, «Bostongurka», apartados 23 y 26). No es necesario que el signo se haya convertido en la designación usual de un producto desde el punto de vista tanto de los vendedores como de los usuarios finales del producto (sentencia de 06/03/2014, en el asunto C-409/12, «Kornspitz», apartado 30). Basta con que los vendedores del producto final no informen de manera habitual a sus clientes de que el signo está registrado como marca, ni presten de manera habitual a sus clientes el servicio añadido de indicarles la procedencia de los distintos productos que ofrecen (sentencia de 06/03/2014, en el asunto C-409/12, «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 (véanse las Directrices, Parte B,. Examen, Sección 4, Motivos de denegación absolutos, Capítulo 2, Motivos absolutos, apartado 2.4). No es necesario probar que el término describe directamente una cualidad o característica de los 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 degenerar 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
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servicio en particular del productor, sino un determinado tipo de producto o servicio (resolución de 30/01/2007, 1020 C, «STIMULATION», apartados 22, 32 y ss).
El hecho de que una marca se use como sinónimo de un producto o un servicio 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.
La ausencia de una designación alternativa o la existencia de un único término largo y complicado también puede ser un indicio de que un signo se ha convertido en la designación usual en el comercio de un producto o un servicio específico.
2.3.5 Defensa del titular
Cuando el titular de la MC ha hecho todo aquello que razonablemente hubiera sido previsible dado el caso en particular (por ejemplo, ha organizado una campaña de televisión o insertado anuncios en periódicos 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; si es así, podrá solicitar al editor que en las próximas ediciones la marca vaya acompañada de una indicación 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 Oficina 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 consideración 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 un tercero, el solicitante de la declaración de caducidad debe probar que el titular ha consentido dicho uso, salvo que el tercero sea un licenciatario del titular.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 10
FINAL VERSION 1.0 01/08/2015
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 relativas al 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 de denegación absolutos, Capítulo 2, Motivos absolutos (artículo 7, del RMC) apartado 2.7). 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), del RMC.
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 referencia 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»)
Asimismo, si una marca que contiene los elementos denominativos «cabras» y «queso» y un elemento 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
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Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 11
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Si en el momento de su solicitud, pudiera plantearse la falta de aptitud de la marca comunitaria por cualquiera de las causas enumeradas en el artículo 7 del RMC, podrá declararse su nulidad.
3.1.1 Carga de la prueba
El propósito del procedimiento de nulidad 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).
El Tribunal General ha establecido que, en los procedimientos de nulidad, la Oficina no puede examinar de nuevo, por propia iniciativa, todos los motivos de nulidad absoluta sino sólo los presentados por el solicitante. La MC goza de una presunción de validez y corresponde al solicitante invocar ante la Oficina los hechos específicos que ponen en cuestión la validez de una marca (véase sentencia del 13/09/2013, T-320/10, «Castel», apdos. 27-29.
En consecuencia, la Oficina examinará los hechos de conformidad con el artículo 76, apartado 1, del RMC en el ámbito de la presentación de hechos efectuada por el solicitante de la declaración de nulidad (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 declaración de nulidad.
Uno de los argumentos que puede invocar el propietario de la MC contra la reivindicación del solicitante de la nulidad es la prueba de que la MC ha adquirido carácter distintivo como consecuencia del uso. Véase el apartado 3.2 infra.
3.1.2 Fecha pertinente
El Tribunal General ha declarado que el registro o declaración de nulidad de una marca debe evaluarse en base a la situación en la fecha de su solicitud, no de su 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 para los cuales se solicita el registro es en principio irrelevante a los efectos del examen de una acción de nulidad (solo sería relevante en el contexto de una acción de declaración de caducidad). Sin embargo, estos hechos pueden ser tomados en cuenta, en todo caso, cuando y en la
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 12
FINAL VERSION 1.0 01/08/2015
medida en que permitan extraer conclusiones sobre la situación en la fecha de la solicitud de la MC.
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 del RMC. Los criterios son idénticos a los aplicados en el procedimiento de nulidad de acuerdo con el artículo 52, apartado 1, letra a), del RMC.
3.2. Defensa contra la alegación de falta de carácter distintivo
Una marca que infringe lo dispuesto en el artículo 52, apartado 1, letra a) en conexión con el artículo 7, apartado 1, letra b), c) o d), del RMC no se declarará nula si ha adquirido carácter distintivo por el uso (artículo 7, apartado 3, y artículo 52, apartado 2, del RMC).
La carga de la prueba de la adquisición de ese carácter distintivo por el uso corresponde al titular que invoque tal carácter distintivo. El carácter distintivo adquirido por el uso constituye, en el contexto de los procedimientos de declaración de nulidad, una excepción a las causas de nulidad del artículo 52, apartado 1, letra a), en conexión con el artículo 7, apartado 1, letras b), c) y d), del RMC. Por tratarse de una excepción, la carga de la prueba recae en la parte que trata de apoyarse en ella, es decir, el titular de la marca impugnada. Este titular es el mejor situado para aportar pruebas que apoyen la afirmación de que la marca ha adquirido carácter distintivo por el uso que se ha hecho de ella (en lo que respecta a la intensidad, el alcance geográfico, la duración del uso o la inversión promocional). Por consiguiente, cuando se pide al titular de la marca impugnada que aporte las pruebas del carácter distintivo adquirido por el uso, y no lo hace, la marca debe declararse nula (sentencia de 19/05/2014, en los asuntos acumulados C-217/13 y C-218/13, «Oberbank e.a.», apartados 68-71).
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 de la fecha de prioridad (artículo 7, apartado 3, del RMC), o
- el carácter distintivo se adquirió posteriormente al registro (artículo 52, apartado 2, del RMC).
La prueba del uso durante el período comprendido entre la fecha de solicitud y la fecha de registro puede servir para apoyar la conclusión de que la marca ha adquirido el carácter distintivo después del registro.
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Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 13
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3.3 Mala fe - artículo 52, apartado 1, letra b) del RMC
El RMC considera que la mala fe es únicamente una causa absoluta de nulidad de una MC respecto a solicitudes presentadas ante la OAMI o demandas de reconvención en una acción por violación de marca. Por lo tanto, la mala no fe no es pertinente en los procedimientos de examen o de oposición (respecto a los procedimientos de oposición, véase la sentencia de 17/12/2010, T-192/09, «Seve Trophy», apartado 50).
3.3.1 Fecha pertinente
La fecha pertinente para determinar si existió mala fe por parte del titular de la MC es la fecha de presentación de la solicitud de registro. No obstante, se debe tener en consideración que:
los hechos y pruebas anteriores a la fecha de presentación se pueden tener en cuenta para interpretar la intención del titular en el momento de presentar la MC. En particular, se tendrán en consideración como hechos y pruebas anteriores: la existencia de un registro de la marca en un Estado miembro, las circunstancias en las que se creó la marca y el uso que de ella se hizo desde su creación (véase el apartado 3.3.2.1, punto 3 siguiente).
los hechos y pruebas posteriores a la fecha de presentación en ocasiones pueden utilizarse para interpretar la intención del titular en el momento de presentación de la MC, en particular si este ha hecho uso de la marca desde su registro (véase el apartado 3.3.2.1, punto 3 siguiente).
3.3.2 Concepto de mala fe
Como señaló la Abogado General Sharpston (conclusiones de 12/03/2009, C-529/07, «Lindt Goldhase», apdo. 36), el concepto de mala fe utilizado en el artículo 52, apartado 1, letra b), del RMC no está ni definido, ni delimitado, ni siquiera descrito en modo alguno en la normativa. No obstante, el Tribunal de Justicia aportó algunas precisiones en cuanto a la interpretación de este concepto en su sentencia del mismo asunto, al igual que hizo el Tribunal General en otros (sentencias de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL» de 14/02/2012, T-33/11, «BIGAB» y de 13/12/ 2012, T-136/11, «Pelikan»). En su sentencia sobre una petición de decisión prejudicial de 27/06/2013, C-320/12, «Malaysia Dairy», el Tribunal de Justicia declaró que el concepto de mala fe constituye un concepto autónomo del Derecho de la Unión que ha de interpretarse de manera uniforme en la Unión Europea.
Una posible descripción de la mala fe sería: «la conducta que se aparta de los principios aceptados de comportamiento ético o prácticas comerciales y empresariales leales» (conclusiones de la Abogado General Sharpston de 12/03/2009, C-529/07, «Lindt Goldhase,» apartado 60; resolución parecida de 01/04/2009, R 529/2008-4, «FS», apartado 14).
Con el fin de determinar si el titular ha actuado de mala fe en el momento de presentación de la solicitud, se deberá realizar una apreciación global en la que hay
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 14
FINAL VERSION 1.0 01/08/2015
que tener en consideración todos los factores pertinentes del asunto particular. A continuación se presenta una lista de factores no exhaustiva.
3.3.2.1 Factores que podrían indicar la existencia de mala fe
La jurisprudencia destaca los tres factores acumulados siguientes como particularmente pertinentes:
1. Identidad/similitud de los signos que da lugar a confusión: La MC presuntamente registrada de mala fe debe ser idéntica o la similitud de ésta con el signo al que hace referencia el solicitante de la nulidad debe prestarse a confusión. Aunque el hecho de que las marcas sean idénticas o que su similitud se preste a confusión no es en sí mismo suficiente para demostrar la mala fe (con referencia a la identidad, véase la sentencia de 01/02/ 2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartado 90), una marca que no sea similar o cuya similitud no se preste a confusión no apoya una conclusión de mala fe.
2. Conocimiento del uso de un signo idéntico o cuya similitud se presta a confusión: El titular de la MC era consciente o debe haber tenido conocimiento del uso de un signo idéntico o cuya similitud se presta a confusión por un tercero para productos o servicios idénticos o similares.
Existe dicho conocimiento, por ejemplo, cuando las partes han mantenido relaciones comerciales entre sí («no podía ignorar, o incluso sabía, que la parte coadyuvante usaba desde hacía tiempo el signo», sentencia de 11/07/2013, T-321/10, «Gruppo Salini», apartado 25) o cuando la propia existencia de la marca, como marca «histórica», era un hecho notorio (sentencia de 08/05/ 2014, T-327/12, «Simca», apartado 50).
Se puede suponer la existencia del conocimiento («se debe haber tenido conocimiento») sobre la base, entre otros, de un conocimiento general en el sector económico de que se trate o de la duración del uso. Cuanto más prolongado sea el uso de un signo, es más probable que el titular de la MC tuviera conocimiento del mismo (sentencia de 11/06/2009, C-529/07, « Lindt Goldhase», apartado 39). En cambio, una presunción de conocimiento es menos probable si el signo estaba registrado en un país que no es miembro de la UE y si ha transcurrido un breve espacio de tiempo entre la solicitud de registro en dicho país y una solicitud de registro en un país miembro de la UE (sentencia de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartado 61).
El conocimiento de un signo idéntico o similar anterior para productos o servicios idénticos o similares en sí mismo no es suficiente para respaldar una conclusión de mala fe (sentencia de 11/06/2009, C-529/07, «Lindt Goldhase», apartados 40, 48 y 49). Por ejemplo, no se puede descartar que cuando varios productores utilicen, en el mercado, signos idénticos o similares para productos idénticos o similares que puedan dar lugar a confusión con el signo cuyo registro se solicita, el registro de la MC del titular del signo pueda perseguir un objetivo legítimo. Este podría ser el caso cuando el titular de la MC conoce, en el momento de presentar la solicitud de MC que la empresa de un tercero está haciendo uso de la marca a la que hace referencia esa solicitud al dar la impresión a sus clientes
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Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 15
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de que distribuye los productos vendidos bajo esa marca, aun si no ha recibido autorización para hacerlo (sentencia de 14/02/2012, T-33/11, «BIGAB», apartado 27).
Análogamente, la circunstancia de que el solicitante sepa o deba saber que un tercero usa una marca en el extranjero, al presentar su solicitud, que puede confundirse con la marca cuyo registro se solicita no basta, por sí sola, para acreditar la existencia, en el sentido de la mencionada disposición, de que concurre mala fe en el solicitante (sentencia en una petición de decisión prejudicial de 27/06/2013, C-320/12, «Malaysia Dairy», apartado 37).
El conocimiento o presunción de conocimiento de un signo anterior no es necesario cuando el titular de la MC hace un uso indebido del sistema con la intención de evitar que cualquier signo similar entre en el mercado (véase, por ejemplo, la prórroga artificial del período de gracia por falta de uso en el apartado 3.3.2.1, punto 3, letra c), siguiente).
3. Intención desleal por parte del titular de la MC: Se trata de un factor subjetivo que se deberá determinar por referencia a las circunstancias objetivas (sentencia de 11/06/2009, C-529/07, «Lindt Goldhase», apartado 42). De nuevo, diversos factores pueden ser pertinentes. Véanse, por ejemplo, los siguientes casos:
(a) Hay mala fe cuando puede inferirse que el antiguo titular pretendía, en realidad, mediante su solicitud de registro de la marca comunitaria, explotar de manera parasitaria el renombre de las marcas registradas de la coadyuvante y sacar provecho de ello (sentencia de 08/05/2014, T-327/12, «Simca», apartado 56)
(b) Aunque el sistema de la MC no exige al titular de de una solicitud de MC , que en el momento de su presentación deba tener la intención de utilizarla, se podría considerar como una indicación de la intención desleal si posteriormente resulta evidente que el único objetivo del titular era evitar que un tercero entrase en el mercado (sentencia de 11/06/2009, C-529/07, «Lindt Goldhase», apartado 44).
Además, resulta lógico pensar desde un punto de vista comercial, que se solicite una marca comercial y que su titular tenga intención de utilizar el signo como marca, lo cual indicaría que no existía intención desleal. Por ejemplo, tal sería el caso si existiera una trayectoria comercial, como el registro de una MC tras el registro en un Estado miembro (sentencia de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartado 58), si existen pruebas de que la intención del titular de la MC de desarrollar sus actividades comerciales, por ejemplo, mediante un contrato de licencia (sentencia de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartado 67) o si el titular de la MC tenía un incentivo comercial para proteger la marca más ampliamente, por ejemplo, un aumento del número de Estados miembros en los que el titular genera ingresos por productos comercializados bajo la marca (sentencia de 14/02/2012, T-33/11, «BIGAB», apartados 20 y 23).
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Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 16
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La existencia de una relación directa o indirecta entre las partes antes de la presentación de la MC, por ejemplo, una relación precontractual, contractual o post-contractual (residual), también puede ser un indicador de mala fe por parte del titular de la MC (sentencia de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartados 85 a 87; sentencia de 11/07/2013, T-321/10, «Gruppo Salini», apartados 25 a 32). En tales casos, el registro del signo del titular de la MC a su propio nombre, en función de las circunstancias, puede considerarse una vulneración de las prácticas comerciales y empresariales leales.
(c) Un ejemplo de una situación que puede tenerse en cuenta para juzgar si el titular de la MC ha actuado de mala fe es aquel en el que el titular de la MC intenta prorrogar artificialmente el período de gracia por falta de uso, por ejemplo, presentando una solicitud reiterada de una MC anterior para evitar la pérdida de derechos como consecuencia de la falta de uso (sentencia de 13/12/2012, T-136/11, «Pelikan», apartado 27).
Este caso ha de diferenciarse de la situación en la que el titular de la MC, de acuerdo con la práctica empresarial normal, pretende proteger variaciones de su signo, por ejemplo, cuando un logotipo ha evolucionado (sentencia de 13/12/2012, T-136/11, «Pelikan», apartado 36 y siguientes).
Además de los tres factores citados más arriba, otros factores potencialmente pertinentes identificados por la jurisprudencia y/o la práctica de la Oficina para evaluar la existencia de mala fe se encuentran los siguientes:
(i) las circunstancias en las que se creó el signo controvertido, el uso que del mismo se ha hecho desde su creación y la lógica comercial subyacente a la presentación de la solicitud de registro del signo como MC (sentencia de 14/02/2012, T-33/11, «BIGAB», apartado 21 y siguientes; sentencia de 08/05/2014, T-327/12, «Simca», apartado 39).
(ii) la naturaleza de la marca solicitada. Cuando el signo para el que se solicita el registro consiste en la forma y presentación íntegras de un producto, el hecho de que el titular de la MC actuase de mala fe en el momento de la presentación, podría establecerse más fácilmente si la libertad de los competidores para elegir la forma de un producto y su presentación estuviera limitada por factores técnicos o comerciales, dando lugar a que el titular de la MC pudiera evitar no solo que sus competidores simplemente utilizasen un signo idéntico o similar, sino también que comercializasen productos comparables (sentencia de 11/06/2009, C-529/07, « Lindt Goldhase», apartado 50).
(iii) el grado de carácter distintivo intrínseco o adquirido de que gozan el signo del solicitante de la nulidad y el signo del titular de la MC, así como su grado de notoriedad, aunque solo sea residual (sentencia de 08/05/2014, T-327/12, «Simca», apartados 40, 46 y 49).
(iv) El hecho de que la marca nacional en la que el titular de la MC basa su reivindicación de prioridad haya sido declarada nula como consecuencia de la mala fe (resolución de 30/07/2009, R 1203/2005-1, «BRUTT»).
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Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 17
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(v) La solicitud de una compensación económica hecha por el titular de la MC al solicitante de la nulidad, si hay pruebas de que el titular de la MC conocía la existencia del signo anterior idéntico o cuya similitud se presta a confusión y espera recibir una propuesta de compensación económica del solicitante de la nulidad (sentencia de 08/05/2014, T-327/12, «Simca», apartado 72). Sin embargo, en un asunto anterior, el Tribunal consideró que incluso una solicitud manifiestamente desproporcionada de compensación económica no acredita en sí misma mala fe si el solicitante de la nulidad no aporta pruebas de que el titular de la MC no podía ignorar la existencia de la marca anterior. En este caso en particular, el Tribunal tuvo en cuenta el hecho de que en 1994, el titular de la MC había registrado una marca idéntica a la MC impugnada ante la Oficina de Marcas española (sentencia de 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», apartados 1-22 y 88).
Finalmente, la jurisprudencia y/o la Oficina han identificado varios factores que, considerados aisladamente, no son suficientes para llegar a la conclusión de mala fe pero que, en combinación con otros factores relevantes (que han de identificarse caso por caso), pueden indicar la existencia de mala fe:
El hecho de que se declare la caducidad de una MC anterior muy parecida para productos o servicios de varias clases no es, en sí mismo, suficiente para sacar conclusiones sobre las intenciones del titular de la MC en el momento de presentación de la solicitud para los mismos productos y servicios (sentencia de 13/12/2012, T-136/11, «Pelikan», apartado 45)
El hecho de que la solicitud de registro de la MC controvertida se presente tres meses antes de la expiración del período de gracia de las MCs anteriores no es suficiente para contrarrestar los factores que demuestran que la intención del titular de la MC era presentar una marca modernizada que dé protección a una lista actualizada de servicios (sentencia de 13/12/2012, T-136/11, «Pelikan», apartados 50 y 51).
La presentación de solicitudes de declaración de nulidad de las marcas del solicitante de la nulidad constituye un ejercicio legítimo del derecho exclusivo del titular de una MC y no puede por sí mismo demostrar ninguna intención desleal por su parte (sentencia de 13/12/2012, T-136/11, «Pelikan», apartado 66).
El hecho de que, tras haber obtenido el registro de la MC controvertida, el titular requiriese a las otras partes para que dejaran de utilizar un signo similar en sus relaciones comerciales no constituye un indicio de mala fe, ya que tal petición es una de las prerrogativas aparejadas al registro de una marca como marca comunitaria, previstas en el artículo 9 del Reglamento nº 207/2009 (sentencia de 14/02/2012, T-33/11, «BIGAB», apartado 33). No obstante, la presentación de tal petición en conexión con otros determinados factores (por ejemplo, que la marca no se use) podría indicar la intención de impedir a la otra parte la entrada en el mercado.
El hecho de que los signos controvertidos sean idénticos no constituye mala fe cuando no existen otros factores pertinentes (sentencia de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartado 90). Por otro lado, el simple hecho de que las diferencias entre la MC controvertida y la MC
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 18
FINAL VERSION 1.0 01/08/2015
registrada por el mismo titular sean tan insignificantes como para que el consumidor medio no pueda percibirlas, no puede implicar que la MC de que se trate sea una mera solicitud reiterada presentada de mala fe (sentencia de 13/12/2012, T-136/11, «Pelikan», apartados 33-34). La evolución con el transcurso del tiempo de un logotipo como representación gráfica de una marca constituye una práctica empresarial normal (sentencia de 13/12/2012, T-136/11, «Pelikan», apartado 36).
3.3.2.2 Factores que no supondrían la existencia de mala fe
La jurisprudencia ha identificado varios factores que, por lo general, no demuestran que exista mala fe.
La ampliación de la protección de una marca nacional mediante su registro como MC es parte de la estrategia comercial normal de una sociedad (sentencia de 14/02/2012, T-33/11, «BIGAB», apartado 23; sentencia de 01/02/2012, T-291/09, «Pollo Tropical CHICKEN ON THE GRILL», apartado 58).
La amplitud de la lista de productos y servicios indicados en la solicitud de registro no es constitutiva de mala fe (sentencia de 07/06/2011, T-507/08, «16PF», apartado 88). Como regla general, es legítimo que una empresa quiera registrar una marca no solo para las categorías de productos y servicios que comercializa en el momento de presentar la solicitud, sino también para otras categorías de productos y servicios que tenga intención de comercializar en el futuro (sentencia de 14/02/2012, T-33/11, «BIGAB», apartado 25; sentencia de 07/06/2011, T-507/08, «16PF», apartado 88).
El hecho de que el titular de varias marcas nacionales decida solicitar una MC únicamente para una de ellas y no para todas no puede ser un indicador de mala fe. La decisión de proteger una marca tanto a nivel nacional como comunitario es una opción que viene dictada por la estrategia de marketing del titular. No corresponde a la Oficina ni al Tribunal interferir en esta decisión (sentencia de 14/02/2012, T-33/11, «BIGAB», apartado 29).
Si un signo goza de notoriedad en el ámbito nacional y el titular solicita una MC, el renombre del signo podría justificar el interés del titular para asegurarse una protección jurídica mayor (sentencia de 11/06/2009, C-529/07, «Lindt Goldhase», apartados 51 y 52).
3.3.3 Prueba de la mala fe
Se presume la buena fe mientras no se presente prueba en contrario (sentencia de 13/12/2012, T-136/11, «Pelikan», apartado 57). El solicitante de la nulidad debe demostrar que existió mala fe por parte del titular de la MC en el momento de presentarla, por ejemplo, que el titular no tuviera intención de utilizarla o que su intención fuera evitar que un tercero entrase en el mercado. Las resoluciones de la Sala de Recurso de 12/07/2013 en los asuntos URB (R 1306/2012-4, R 1309/2012-4 y R 1310/2012-4) dejan claro que la mala fe ha de ser probada claramente por el solicitante.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 19
FINAL VERSION 1.0 01/08/2015
3.3.4 Relación con otras disposiciones del RMC
Si bien el artículo 8, apartado 3, del RMC es una manifestación del principio de que las operaciones comerciales deben llevarse a cabo de buena fe, el artículo 52, apartado 1, letra b), del RMC es la expresión general de ese principio (véase la página 4 y siguientes de las Directrices relativas al artículo 8, apartado 3, del RMC).
3.3.5 Grado de nulidad
Cuando se constata la mala fe del titular de la MC, se declara la nulidad de la marca en su totalidad, incluso para los productos y servicios no relacionados con los protegidos con la marca del solicitante de la nulidad. La única excepción se produce cuando el solicitante ha referido su solicitud de nulidad únicamente a algunos de los productos y servicios amparados por la MC controvertida, ya que en este caso una conclusión de mala fe supondrá la nulidad tan solo de los productos y servicios controvertidos.
Por ejemplo, en su resolución R 2012/2009-1 («GRUPPO SALINI/SALINI»), la Sala de Recurso concluyó que había quedado demostrada la mala fe y declaró la nulidad de la MC en su integridad, es decir, también para aquellos servicios (seguros, servicios financieros y monetarios en la Clase 36 y servicios relacionados con software y hardware, en la Clase 42) que eran diferentes de los servicios de construcción, mantenimiento e instalación en la Clase 37 del solicitante de la nulidad.
El Tribunal General confirmó la resolución de la Sala de Recurso y declaró que la existencia de mala fe en el momento de depositar la solicitud de la MC impugnada implicaba la nulidad de dicha MC en su integridad (sentencia de 11/07/2013, T-321/10, «Gruppo Salini», apartado 48).
Aunque el Tribunal no detalló pormenorizadamente las razones para llegar a esa conclusión, se puede inferir que adoptó la tesis de que la nulidad de la MC, incluso para productos o servicios diferentes de los del solicitante de nulidad y que ni siquiera pertenecen a sectores conexos, se justifica por la protección del interés general de que el tráfico mercantil debe llevarse a cabo de una forma leal.
Por consiguiente, parece lógico concluir que la nulidad, una vez declarada, debe extenderse a todos los productos y/o servicios amparados por la MC controvertida, incluso aquellos que, de acuerdo con el artículo 8, apartado 1, letra b), serían considerados diferentes.
4 Causas de nulidad relativa
4.1 Introducción
El artículo 53, del RMC permite a los titulares de derechos anteriores solicitar la declaración de nulidad de una MC en varias situaciones (causas) que se detallan a continuación.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 20
FINAL VERSION 1.0 01/08/2015
Las mismas causas que en los procedimientos de oposición:
o Una marca anterior, en el sentido del artículo 8, apartado 2, del RMC, es idéntica o similar a la MC impugnada y designa a productos y servicios idénticos o similares o es notoriamente conocida (artículo 53, apartado 1, letra a), del RMC en conexión con el artículo 8, apartado 1, letras a) o b) y el artículo 8, apartado 5, del RMC)
o Una marca solicitada sin autorización de su titular por un agente o representante del mismo (artículo 53, apartado 1, letra b), del RMC en conexión con el artículo 8, apartado 3, del RMC).
o Una marca no registrada u otro signo utilizados en el tráfico económico pueden invalidar el registro de una MC si la legislación nacional permite al titular del signo anterior que prohíba el uso del registro de la MC (artículo 53, apartado 1, letra c, del RMC en conexión con el artículo 8, apartado 4, del RMC).
Una causa adicional basada en otro derecho anterior, en la medida en que la legislación comunitaria o nacional (incluidos los derechos derivados de convenios internacionales que sean aplicables a un Estado miembro) faculte al titular a prohibir el uso de la MC impugnada (artículo 53, apartado ,2 del RMC), en particular:
o un derecho al nombre; o un derecho a la imagen; o un derecho de autor; o un derecho de propiedad industrial.
Estas causas se desarrollan en mayor profundidad más adelante (apartados 4.2 y 4.3).
Al igual que en los procedimientos de oposición, el titular de la MC impugnada puede exigir al solicitante de la nulidad que presente prueba del uso efectivo de su marca anterior. Las particularidades relativas al período pertinente para apreciar el uso efectivo en los procedimientos de nulidad se detallan en el apartado 4.4.
Por último, el RMC establece varias disposiciones que el titular de la MC puede invocar frente a la solicitud de nulidad, en función del tipo de derecho anterior invocado (p. ej. si es una MC anterior o marca nacional o no). Dichas disposiciones se analizan en el apartado 4.5.
4.2 Causas a tenor del artículo 53, apartado 1, del RMC
4.2.1 Normas aplicables
Las condiciones sustantivas para considerar un derecho anterior mencionado en el artículo 53, apartado 1, del RMC en conexión con el artículo 8, del RMC como causa relativa para solicitar la nulidad son las mismas que en los procedimientos de oposición. Se deberán aplicar en consonancia las reglas prácticas contenidas en las
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 21
FINAL VERSION 1.0 01/08/2015
Directrices, Parte C, Oposición, en particular Sección 2, Identidad y riesgo de confusión; Sección 3, Solicitud presentada por el agente sin consentimiento del titular de la marca, Capítulo 4, Condiciones de aplicación; Sección 4, Derechos contemplados en el artículo 8, apartado 4, del RMC y por último Sección 5, Marcas renombradas.
4.2.2 Fecha pertinente
4.2.2.1 Para la apreciación del carácter distintivo elevado o renombre
De conformidad con los procedimientos de oposición, en los procedimientos de nulidad el solicitante de la nulidad basada en el carácter distintivo elevado o renombre debe acreditar que su derecho anterior ha adquirido carácter distintivo elevado o renombre en la fecha de presentación de la solicitud de la MC impugnada, teniendo en consideración, en su caso, cualquier prioridad que se reivindique. Por otro lado, el renombre o el carácter distintivo elevado de la marca anterior debe seguir existiendo cuando se dicte la resolución de nulidad.
En los procedimientos de oposición, debido al poco tiempo transcurrido entre la presentación de la solicitud de MC y la resolución de oposición, se suele suponer que en la fecha en que se dicta dicha resolución sigue existiendo el carácter distintivo elevado o el renombre de la marca anterior1. En los procedimientos de nulidad, sin embargo, el lapso de tiempo puede ser considerable. En tal caso, el solicitante de la nulidad debe acreditar que su derecho anterior sigue disfrutando del carácter distintivo elevado o de renombre en el momento en que se dicta la resolución de nulidad.
4.2.2.2. Solicitud basada en el artículo 53, apartado 1, letra c) en conexión con el artículo 8, apartado 4, del RMC
En el supuesto de solicitud de nulidad con base en el artículo 53, apartado 1, letra c) en conexión con el artículo 8, apartado 4, del RMC, el solicitante de la nulidad deberá acreditar el uso del signo anterior en el tráfico económico con un alcance superior al local en la fecha de presentación de la MC impugnada (o la fecha de prioridad, si procede).. En los procedimientos de nulidad, el solicitante también debe acreditar que el signo se utilizó en el tráfico económico con un alcance superior al local en otro momento, es decir, en el momento de presentación de la solicitud de nulidad. Esta condición se desprende del tenor del artículo 53, apartado 1, letra c), del RMC, que establece que una MC se declarará nula «cuando exista un derecho anterior contemplado en el artículo 8, apartado 4, y se cumplan las condiciones enunciadas en dicho apartado» (resolución de la División de Anulación de 05/10/2004, nº 606 C, «ANKER», y resolución R 1822/2010-2, «Baby Bambolina», apartado 15). Una vez demostrado, se considerará que se ha cumplido este requisito en la fecha en que se dicta la resolución sobre la nulidad salvo que exista prueba en contrario (p. ej. se invoca una denominación social pero la sociedad ya no existe).
1Véanse las Directrices, Parte C, Oposición, Sección 5, Marcas renombradas.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 22
FINAL VERSION 1.0 01/08/2015
Existen asimismo varias particularidades sobre el fundamento y la admisibilidad, que se tratan en las Directrices, Parte D, Anulación, Sección 1, Procedimientos de anulación.
4.3 Causas contempladas en el artículo 53, apartado 2 del RMC – Otros derechos anteriores
La marca comunitaria también se declarará nula si su uso puede prohibirse en virtud de otro derecho anterior con arreglo a la legislación comunitaria o nacional que regula la protección de estos derechos. No se trata de una lista exhaustiva de tales derechos anteriores.
El artículo 53, apartado 2, del RMC es únicamente aplicable cuando los derechos invocados sean de tal naturaleza que no se consideren los típicos derechos que se invocan en los procedimientos de anulación contemplados en el artículo 53, apartado 1, del RMC (véase la resolución de la División de Anulación de 13/12/2011, 4033 C, apartado 12).
4.3.1 Derecho al nombre/ Derecho a la imagen
No todos los Estados miembros protegen el derecho al nombre o la imagen de una persona. El ámbito de protección exacto del derecho derivará de la ley nacional correspondiente (por ejemplo si el derecho está protegido sin tener en consideración los productos y servicios cubiertos por la marca disputada)
El solicitante de la nulidad tendrá que presentar la legislación nacional en vigor necesaria y ofrecer una línea de argumentación convincente por la cual, conforme a la norma nacional específica, debería de estimarse su solicitud para evitar el uso de la marca impugnada. Una simple referencia a la legislación nacional no se considerará suficiente: no corresponde a la Oficina presentar alegaciones en nombre del solicitante (véase, por analogía, la sentencia de 05/07/2011, C-263/09, «Elio Fiorucci»).
Derecho anterior Signo controvertido Asunto
TELESIS TELESIS R 0134/2009-2
Derecho al nombre al amparo de la legislación austriaca
De conformidad con la legislación austriaca (Sección 43 AGBG), «la persona cuyo derecho a usar su nombre se impugne o cuyo nombre se utilice sin justo (motivo) en su perjuicio, vulnerando sus intereses protegibles, podrá solicitar al infractor que cese, desista y le compense por los daños y perjuicios ocasionados. Dicha protección también abarca las denominaciones distintivas de comerciantes, incluso si se alejan del nombre propio de dicho comerciante [...] Incluso si la Sección 43 AGBG se pudiera aplicar también al nombre del comerciante, el ámbito de protección no iría más allá del campo de actividad del signo utilizado. Los demás servicios impugnados no son similares a los servicios del derecho anterior porque [...] afectan a distintas ramas de actividad (apartados 61-63). Por lo tanto, los requisitos de la legislación austriaca no se cumplían y la solicitud de nulidad basada en el artículo 53, apartado 2, letra a), del RMC en conexión con la legislación austriaca se desestimó.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 23
FINAL VERSION 1.0 01/08/2015
Derecho anterior Signo controvertido Asunto nº
Título nobiliario de MARQUÉS DE BALLESTAR R 1288/2008-1
Derecho al nombre al amparo de la legislación española
En España los títulos nobiliarios están protegidos por la Ley 1/1982 como si fueran nombres de personas. La solicitante de la anulación demostró que su título nobiliario existía y que ella lo ostentaba. La marca comunitaria incluye un pequeño escudo de armas y las palabras «MARQUÉS DE BALLESTAR» en mayúsculas. El vino no podría identificarse correctamente en una operación mercantil si no se mencionasen las palabras «MARQUÉS DE BALLESTAR». El derecho conferido por la MC consiste en utilizarlo de la manera siguiente: ponerla sobre el envase del producto, vender el producto que lleva la marca y aprovecharla en la publicidad (artículo 9, del RMC). Por consiguiente, el uso de la marca es un uso «para fines publicitarios, comerciales o de naturaleza análoga» dentro del significado del artículo 7, apartado 6 de la ley 1/1982. Dado que esta ley considera estos usos «intromisiones ilegítimas», la protección establecida en el artículo 9, apartado 2 de la misma sería admisible. Este artículo permite la adopción de medidas para «poner fin a la intromisión ilegítima». La MC debe declararse nula porque se puede prohibir su uso como consecuencia de un derecho al nombre, de conformidad con la ley española de Protección Civil del Derecho al Honor, a la Intimidad Personal y Familiar y a la Propia Imagen (apartado 14 y siguientes).
Derecho anterior Signo controvertido Asunto
DEF-TEC DEF-TEC R 0871/2007-4
Derecho al nombre al amparo de la legislación alemana
La Sala considera que «lo que se podría, en su caso, proteger al amparo del artículo 12 BGB (Código Civil alemán) es el nombre del solicitante de la anulación, que es «DEF-TEC Defense Technology GmbH», pero no el signo «DEF-TEC», que no es el nombre del solicitante de la anulación [...] el registro, y posible uso como marca, de la denominación «DEF-TEC» en aerosoles de pimienta no puede vulnerar el derecho de anulación del nombre del solicitante. [...] el artículo 12 BGB protege los nombres de personas físicas, y no existe una prohibición absoluta para llevar un nombre que sea parecido al de otra persona, su protección se limita a los casos en los que se niega o existe una apropiación indebida del derecho al nombre de otra persona [...] y nada más es aplicable a la ampliación de la aplicación del artículo 12 BGB a nombres de personas jurídicas [...] La solicitud de nulidad no procede respecto a todos los derechos anteriores invocados» (apartado 38 y siguientes).
4.3.2 Derecho de autor
De conformidad con el artículo 53, apartado 2, letra c), del RMC, una MC también se declarará nula mediante solicitud presentada ante la Oficina si su uso puede prohibirse en virtud de otro derecho anterior con arreglo a la legislación comunitaria o nacional que regula la protección de estos derechos y, en particular, de un derecho de autor.
A tenor de la regla 37, del REMC, la solicitud de nulidad incluirá los datos relativos al derecho en que se base la solicitud de nulidad, así como los datos que acrediten que el solicitante es el titular de un derecho anterior a que se refiere el artículo 53, apartado 2, del RMC o que, en virtud de la legislación nacional vigente, está legitimado para reivindicar tal derecho.
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 24
FINAL VERSION 1.0 01/08/2015
Aunque el legislador comunitario ha armonizado algunos aspectos de la protección de derechos de autor (véase la Directiva 2001/29/CE del Parlamento europeo y del Consejo, de 22/05/ 2001, relativa a la armonización de determinados aspectos de los derechos de autor y derechos afines a los derechos de autor en la sociedad de la información, DO 2001 L 167, de 22 /06/2001, pp. 10-19), hasta el momento no se han armonizado completamente las leyes de derechos de autor de los Estados miembros, ni existe un derecho de autor comunitario uniforme. No obstante, todos los Estados miembros están vinculados por el Convenio de Berna para la protección de las obras literarias y artísticas y el Acuerdo sobre los Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio (ADPIC).
El solicitante de la nulidad tendrá que presentar la legislación nacional en vigor necesaria y ofrecer una línea de argumentación convincente por la cual, conforme a la norma nacional específica, debería de estimarse su solicitud para evitar el uso de la marca impugnada. Una simple referencia a la legislación nacional no se considerará suficiente: no corresponde a la Oficina presentar alegaciones en nombre del solicitante (véase, por analogía, la sentencia de 05/07/2011, C-263/09, «Elio Fiorucci»).
La noción de protección de derechos de autor se aplica con independencia de los productos y servicios que designe la marca impugnada, y únicamente exige un «copiado» de la obra protegida sin que sea necesario que la marca impugnada en su conjunto sea «similar» a la obra protegida.
Derecho anterior Signo controvertido Asunto
R 1235/2009-1
Derecho de autor al amparo de la legislación italiana
La Sala indica que esta causa de nulidad es relativa y, por tanto, únicamente los titulares de derechos anteriores u otras personas, si la legislación que regula tales derechos lo permite, estarán facultados para invocarla (artículo 56, apartado 1, letra c), del RMC). En este caso se trata de un derecho de autor. Por lo tanto, la parte facultada para actuar es el titular del derecho de autor sobre el dibujo de flor u otra persona autorizada por la legislación que regula los derechos de autor. El solicitante de la nulidad reconoce que la titularidad del derecho de autor sobre el dibujo «pertenece a terceros» (de hecho a un tercero: Corel Corporation, la empresa de diseño gráfico). El solicitante de la nulidad no es titular del derecho sobre el que se quiere basar. Únicamente tiene derecho a utilizar la imagen prediseñada (clipart)con la forma de flor y utilizarla para meros fines privados. Se rechazó la causa (apartado 32 y siguientes).
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 25
FINAL VERSION 1.0 01/08/2015
Derecho anterior Signo controvertido Asunto nº
R 1757/2007-2
Derecho de autor al amparo de la legislación francesa
«el simple hecho de que la estilización de la letra «G» sea «sencilla», no impide su protección en virtud de la ley de derechos de autor francesa [...] De hecho, para proteger una obra intelectual, basta que sea «original» [...] Aunque es cierto que la MC impugnada no es una copia exacta de una obra anterior, debe tenerse en consideración que la reproducción y adaptación parciales sin el consentimiento del titular del derecho de autor también están prohibidas. La Sala considera que este es el caso aquí. La MC impugnada ha adoptado todas las características esenciales de la obra anterior: una letra «G» mayúscula sola, trazada con líneas negras, rectas y gruesas, con una forma cuadrada perfectamente aplanada [...] la «G» de la MC impugnada está dibujada con una línea negra, gruesa de igual grosor y su parte interior llega más lejos en el interior que en el caso de la obra anterior. No obstante, la diferencia en estos detalles menores constituyen modificaciones mínimas que no afectan al solapamiento de las características esenciales de la obra anterior, esto es, una letra «G» mayúscula sola, con una forma rectangular perfecta, una forma aplanada y gruesa, líneas negras [...] Como la reproducción o adaptación parcial de la obra anterior se realizó sin el consentimiento del titular, es ilegal. Por tanto, se debe revocar la resolución impugnada y estimar [...] la solicitud de nulidad» (apartado 33 y siguientes).
Derecho anterior Signo controvertido Asunto
R 1925/2011-4
Derecho de autor al amparo de la legislación alemana
«De conformidad con el artículo 1 de la ley alemana de derechos de autor, la protección de derechos de autor se confiere a los «autores» de «obras literarias, científicas o artísticas». El artículo 2 de la ley enumera varios tipos de obras consideradas obras de arte. En virtud del artículo 16 y siguientes, la ley de derechos de autor protege al autor. Asumiendo que el objeto reclamado constituyese una «obra» en el sentido de dichas disposiciones, el solicitante de la anulación no acreditó ni demostró quién era su autor ni cómo el solicitante de la anulación (una persona jurídica con sede en Japón) adquirió los derechos exclusivos del autor» (apartados 12-13). La Sala examinó cada uno de estos aspectos. Por otro lado, describe las diferencias entre la similitud de la marca y el copiado a los efectos de la vulneración de los derechos de autor. El solicitante de la anulación había mezclado ambos conceptos (apartados 22-24)
4.3.3 Otros derechos de propiedad industrial
Se pueden invocar otros derechos de propiedad industrial y obras anteriores, a nivel nacional o comunitario, tales como dibujo o modelo comunitario registrado (DMC).
El solicitante de la nulidad tendrá que presentar la legislación nacional en vigor necesaria y ofrecer una línea de argumentación convincente por la cual, conforme a la norma nacional específica, debería de estimarse su solicitud para evitar el uso de la marca impugnada. Una simple referencia a la legislación nacional no se considerará
Normas sustantivas
Directrices relativas al Examen ante la Oficina, Parte D, Anulación Página 26
FINAL VERSION 1.0 01/08/2015
suficiente: no corresponde a la Oficina presentar alegaciones en nombre del solicitante (véase, por analogía, la sentencia de 05/07/2011, C-263/09, «Elio Fiorucci»).
En el supuesto de un DMC no es necesario acreditar qué protección se confiere en virtud de la ley. La División de Anulación aplicará las normas del RDC.
Derecho anterior Signo controvertido Asunto
(DM anterior) (forma de una bolsa de té)
R 2492/2010-2
El artículo 19, apartado 1 del Reglamento del Consejo sobre los dibujos y modelos comunitarios (RDC) establece que un dibujo o modelo comunitario registrado confiere al titular el derecho exclusivo de utilización y de prohibir su utilización por terceros sin su consentimiento. A efectos de la presente disposición, se entenderá por utilización, en particular, la fabricación, la oferta, la comercialización, la importación y exportación o el uso de un producto en el que se encuentre incorporado el dibujo o modelo o al que este se haya aplicado, así como el almacenamiento del producto con los fines antes citados. De conformidad con el artículo 10, apartado 1, del RDC la protección conferida por el dibujo o modelo comunitario se extenderá a cualesquiera otros dibujos y modelos que no produzcan en los usuarios informados una impresión general distinta. El DMC anterior y la MC provocan una impresión general distinta. ... Por otro lado, se observa que el DMC anterior introduce diferencias adicionales, tales como la presencia de una base remarcada que no forma parte de la MC impugnada. Por consiguiente, la Sala confirma la conclusión de la División de Anulación de que los derechos conferidos por el DMC nº 214 427 a tenor del artículo 19, apartado 1, del RDC no se pueden invocar frente a la MC impugnada» (apartados 59-64).
4.4 Falta de uso de la marca anterior
En virtud del artículo 57, apartados 2 y 3, del RMC, si la marca anterior ha estado registrada desde hace al menos cinco años cuando se presente la solicitud de nulidad, el titular de la MC podrá solicitar que el titular de la marca anterior aporte prueba de que la misma ha sido objeto de un uso efectivo en la UE en relación con los productos o servicios para los cuales ha sido registrada o que existen causas justificativas de la falta de uso.
A tenor de la regla 40, apartado 6, en conexión con la regla 22, apartado 3, del REMC, los indicios y las pruebas para la presentación de la prueba del uso consistirán en indicaciones sobre el lugar, tiempo, alcance y naturaleza del uso de la marca anterior respecto a los productos y servicios para los que esté registrada y en los que se base la solicitud de nulidad.
Las reglas prácticas aplicables a la apreciación sustantiva de la prueba del uso de derechos anteriores en los procedimientos de oposición son de aplicación a la apreciación de prueba del uso en los procedimientos de nulidad (véanse las Directrices relativas a la práctica sobre la marca comunitaria, Parte C, Oposición,, Sección 6, Prueba del uso, Capítulo 2, Derecho sustantivo). En particular, si el titular de la MC solicita prueba del uso de derechos anteriores, la Oficina examinará si y en
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qué medida se ha acreditado el uso de las marcas anteriores, siempre que ello resulte pertinente para el resultado de la resolución.
Por último, existe una particularidad que debe tenerse en consideración en la apreciación de la prueba del uso en el contexto de los procedimientos de nulidad. Hace referencia al tiempo de uso pertinente. A tenor del artículo 57, apartado 2, del RMC en conexión con el artículo 42, apartado 2, del RMC, a diferencia de los procedimientos de oposición, existen dos períodos pertinentes durante los cuales el uso debe establecerse.
En todos los casos si la marca anterior estuvo registrada durante más de cinco años antes de la solicitud de nulidad: el período de cinco años anterior a la fecha de presentación de la solicitud de nulidad (primer período pertinente).
Además, en los supuestos en los que la marca anterior hubiera estado registrada desde al menos cinco años desde la fecha en que la presentación de la MC fue publicada: el período de cinco años anterior a la fecha de publicación de la solicitud para la MC impugnada (segundo período pertinente).
Estos dos períodos pertinentes no se solapan necesariamente: pueden solaparse parcial o totalmente o transcurrir uno después del otro (con o sin un intervalo).
4.5 Defensa contra una solicitud de nulidad con base en causas relativas
4.5.1 Consentimiento al registro
En virtud del artículo 53, apartado 3, del RMC, la MC no podrá declararse nula cuando, antes de la presentación de la solicitud de nulidad o de la demanda de reconvención, el titular de un derecho anterior hubiera dado expresamente su consentimiento al registro de esa marca.
El consentimiento no tiene por qué darse antes de la fecha de registro de la MC. Basta con que se otorgue antes de presentar la solicitud de nulidad. Para ello, la Oficina tendrá en consideración, por ejemplo, un contrato a tal efecto entre las partes.
Derecho anterior Signo controvertido Asunto
SKYROCK R 1736/2010-2
El titular de la MC alegó que en virtud del contrato de coexistencia, el solicitante de la anulación había consentido expresamente al registro de la MC impugnada al amparo del artículo 53, apartado 3, del RMC. La Sala de Recurso examinó el contrato de coexistencia y la interpretación que del mismo realizaron los tribunales franceses. Concluyó que los tribunales franceses habían interpretado que el contrato de coexistencia confería un derecho al titular de la MC para registrar marcas distintas a «SKYROCK» y «SKYZIN», que contuvieran el prefijo «SKY». «Ese contrato tiene un alcance mundial en su aplicación y, por tanto, es aplicable a las solicitudes o registros de la MC, tales como el que se discute en el presente asunto» (apartado 32).
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La prueba del consentimiento expreso debe adoptar la forma de una declaración (y no de una conducta). La declaración debe provenir del solicitante (y no de terceros). El consentimiento debe ser «expreso» (y no implícito ni presunto) (resolución de 23/07/2009, R 1099/2008-1, apartado 46).
Que el oponente simplemente retire de forma unilateral una oposición no significa necesariamente que consienta al registro de la MC (resolución de 14/10/2008, R 0946/2007-2 y R 1151/2007-2, «VISION», apartado 26). Como el artículo 53, apartado 3, del RMC exige un consentimiento expreso, retirar la oposición no se ha considerado como consentimiento para el registro (resolución de 01/12/2012, R 1883/2011-5, apartado 30, recurrida).
4.5.2 Solicitudes anteriores de declaración de nulidad o reconvenciones
De conformidad con el artículo 53, apartado 4, del RMC, cuando el titular de un derecho anterior que hubiera solicitado previamente la nulidad de la MC o presentado demanda de reconvención en una acción por violación de marca, con base en los derechos del artículo 53, apartados 1 o 2, del RMC ante un tribunal de marca comunitaria, no podrá presentar otra solicitud de nulidad ni una demanda de reconvención fundada sobre otro de esos derechos recogidos en el artículo 53, apartados 1 o 2 del RMC, que hubiera podido alegar en apoyo de la primera demanda.
A pesar de que el artículo 100, del RMC impone la obligación de que los tribunales de marcas comunitarias comuniquen a la Oficina la iniciación de reconvenciones por nulidad y su resultado, en la práctica no siempre ocurre así. El titular de la MC que desee basarse en la defensa establecida en el artículo 53, apartado 4, del RMC, deberá presentar pruebas de los tribunales nacionales para respaldar su reclamación.
4.5.3 Tolerancia
Según el artículo 54, del RMC, cuando el titular de una marca comunitaria o nacional anterior que hubiere tolerado el uso de la MC durante cinco años consecutivos, con conocimiento de ese uso, ya no podrá solicitar la nulidad ni oponerse al uso de la MC, a no ser que la presentación de la solicitud de la MC posterior se hubiera efectuado de mala fe.
La finalidad del artículo 54, del RMC es sancionar a los titulares de marcas anteriores que han tolerado el uso de una marca comunitaria posterior durante cinco años consecutivos, conociendo ese uso, con la pérdida de las acciones de nulidad y de oposición al uso respecto de dicha marca, que, por tanto, podrá coexistir con la marca anterior (sentencia de 28/06/2012, T-133/09 y T-134/09, «B. Antonio Basile 1952», apartado 32).
La carga de la prueba recae en el titular de la MC impugnada, que deberá demostrar que:
la MC impugnada se utilizó en la Comunidad (o en el Estado miembro en el que la marca anterior está protegida) durante al menos cinco años consecutivos.
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el solicitante de la nulidad tenía conocimiento de ello o se podría haber supuesto de manera razonable que era consciente de ello.
aunque el solicitante de la nulidad podría haber puesto fin al uso, sin embargo siguió sin hacer nada. No es el caso cuando existía una relación de licencia o distribución entre las partes, de manera que el uso del titular de la MC era para productos que había obtenido lícitamente del solicitante de la nulidad (sentencia de 22/09/2011, C-482/09, «Budweiser», apartado 44; resolución de 20/07/ 2012, R 2230/2010-4).
Deben cumplirse las tres condiciones. En tal caso, la limitación de la tolerancia será aplicable únicamente a los productos o servicios impugnados para los que la MC posterior se ha utilizado.
El período de limitación como consecuencia de la tolerancia transcurre desde el momento en que el titular de la marca anterior tiene conocimiento del uso de la MC posterior. Es en ese momento que tiene la posibilidad de no tolerar su uso y, por tanto, de oponerse a ella o solicitar la declaración de nulidad de la marca posterior (sentencia de 28 /06/ 2012, T-133/09 y T-134/09, «B. Antonio Basile 1952», apartado 33).
Un ejemplo en el que se podría suponer que el titular tenía conocimiento del uso de la MC impugnada es aquel en el que ambos titulares han exhibido productos o servicios con las respectivas marcas en el mismo evento.
El artículo 54, del RMC no es aplicable cuando la MC impugnada se solicita de mala fe. Esta excepción únicamente se tendrá en consideración si el solicitante la alega y la acredita.
4.5.3.1 Ejemplos en los que se desestima la reclamación de tolerancia
Derecho anterior Signo controvertido Asunto
BASILE T-133/09 y T-134/09(C-381/12 P desestimado)
El solicitante no había proporcionado indicios que permitieran determinar el momento a partir del cual la parte coadyuvante tuvo conocimiento de la utilización de la marca controvertida después de su registro. Se limitó a afirmar que la marca controvertida había sido utilizada durante más de cinco años en Italia y que la parte coadyuvante habría debido tener conocimiento de tal uso. No obstante, habían transcurrido menos de cinco años entre la fecha de registro de la marca controvertida y la fecha de presentación de la solicitud de nulidad, sin que sea relevante la utilización de dicha marca antes de la fecha de registro en la medida en que la marca aún no había sido registrada (apartado 34).
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Derecho anterior Signo controvertido Asunto
DIABLO DIABLO R 1022/2011-1
«En el asunto en cuestión, la marca comunitaria impugnada se registró el 11 de abril de 2007 y la solicitud de nulidad presentada el 7 de julio de 2009. Por tanto, la marca impugnada había estado registrada como marca comunitaria durante menos de cinco años. Dado que una de las condiciones establecidas en el artículo 54, apartado 2, del RMC no se cumple, la Sala concluye que la División de Anulación sostuvo acertadamente que el solicitante no había tolerado el uso de la MC» (apartados 25- 26).
Derecho anterior Signo controvertido Asunto
R 2230/2010-4 (confirmado por T-417/12)
«La posterior prueba presentada por el titular de la MC demuestra que en 2005 varias empresas estaban distribuyendo los productos de la marca «AQUA FLOW» en España, entre otras, Hydro Sud. Se alegó que el solicitante de la anulación tenía conocimiento de dicho uso. El titular de la MC presentó tres facturas a terceras empresas situadas en España: Hydro Sud, Tonocolor SL Hydro Sud y H2O Problematica del Agua. Estas facturas son de fecha 18/06/2004, 31/05/2005 y 31/07/2006 y contienen encabezamientos con la representación de la marca «AQUA FLOW». No obstante, todas ellas son posteriores a mayo de 2004. Asumiendo que el solicitante de la anulación hubiera tenido conocimiento de las mismas o de las operaciones comerciales subyacentes, no habría sido suficiente para concluir que hubo un período ininterrumpido de cinco años anterior a la solicitud de anulación en el sentido del artículo 54, apartado 2, del RMC (apartados 21-22). Por ello, se desestimó la reclamación de tolerancia del titular de la MC.
Derecho anterior Signo controvertido Asunto nº
PURELL R 1317/2009-1
«El artículo 54, apartado 2, del RMC exige que la marca comunitaria impugnada se utilice durante cinco años consecutivos en Alemania y que los solicitantes de la anulación hayan tolerado su uso durante este período. En el presente caso, las alegaciones y pruebas presentadas por las partes no permiten concluir que se utilizase la marca impugnada en Alemania y que se pueda suponer razonablemente que los solicitantes de la anulación tenían conocimiento de dicho uso y lo hubieran tolerado durante cinco años consecutivos [...] los únicos elementos que pueden sugerir alguna conexión con Alemania y sobre los que el titular de la MC basa en primer lugar su recurso (esto es, las cifras relativas al único distribuidor local y los extractos de Internet examinados a la luz de la correspondencia de 2001 entre las partes) no son suficientes para sostener que los solicitantes de la anulación habían tolerado el honrado uso prolongado y consolidado de la marca impugnada en Alemania (apartado 47).
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4.5.3.2 Ejemplos en los que se estima (parcialmente) la reclamación de tolerancia
Derecho anterior Signo controvertido Asunto nº
CITYBOND CITYBOND
3971 C R 1918/2011-5 (recurso desestimado;
la resolución de la División de Anulación ha adquirido fuerza de cosa
juzgada)
Tomando la prueba como un todo, ésta acreditó que se cumplían todas las condiciones de tolerancia para algunos de los servicios impugnados. En particular, el intercambio de cartas entre las partes probó que el solicitante tenía conocimiento de la existencia de la MC «CITIBOND» para algunos de los servicios. Asimismo, los extractos y la declaración jurada (2003) incluidos en el procedimiento en el Reino Unido, así como el resto de información financiera, acreditaron que el solicitante tenía conocimiento del uso de la MC «CITIBOND» en el Reino Unido, teniendo en cuenta que el mercado financiero es muy específico y altamente especializado.
Derecho anterior Signo controvertido Asunto
Ghibli Et al R 1299/2007-2
El solicitante de la anulación reconoció que tenía conocimiento del uso de este signo en Italia. El problema jurídico que se planteó era si, en aplicación del artículo 53, apartado 2, del RMC, el solicitante de la anulación también había tenido conocimiento del valor jurídico del signo utilizado, esto es, que había sido utilizado como MC registrada en Italia. Según la Sala no se puede interpretar que el artículo 53, apartado 2, del RMC exija que el titular de la MC deba demostrar, además de los cinco años de uso consecutivo, sabiendo que el titular del derecho anterior lo toleraba, que el solicitante de la anulación también supiera, durante al menos cinco años, que la marca posterior estaba protegida como una MC. Lo que importa en este contexto es la circunstancia objetiva de que el signo (cuyo uso ha sido conscientemente tolerado por el solicitante de la anulación) debe haber existido durante al menos cinco años como una MC. En vista de la prueba del expediente, quedó probado que cuando se presentó la solicitud de declaración de nulidad, el solicitante de la anulación había tenido conocimiento y tolerado el uso de la MC impugnada en Italia durante más de cinco años, con independencia de si era consciente o no del hecho de su registro (apartado 35 y siguientes).
5 Cosa juzgada
De conformidad con el artículo 56, apartado 3, del RMC, además de las defensas que el titular de una MC puede alegar frente a la solicitud de una declaración de nulidad o frente a una solicitud de caducidad (véanse las secciones anteriores), la solicitud de nulidad o caducidad no será admisible cuando un tribunal de un Estado miembro hubiera resuelto entre las mismas partes sobre una solicitud con el mismo objeto y la misma causa y esa resolución hubiera adquirido fuerza de cosa juzgada. Es el llamado requisito de la «triple identidad».
Aunque el artículo 56, apartado 3, del RMC, se refiere únicamente a las resoluciones de los tribunales de los Estados miembros que hayan adquirido fuerza de cosa juzgada, lo mismo se aplica, por analogía y teniendo en cuenta lo dispuesto en los artículos 83 y 100, apartado 2, del RMC, a los casos en que haya una resolución de la Oficina o del Tribunal de Justicia de la Unión Europea que haya adquirido fuerza de cosa juzgada sobre una solicitud de anulación con el mismo objeto y la misma causa y entre las mismas partes (resolución de la División de Anulación de 30/09/2009 en el asunto 3458 C, apartado 10).
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La defensa de cosa juzgada solamente se aplica cuando hay una resolución previa sobre el fondo de una demanda de reconvención o de una solicitud de anulación que ha adquirido fuerza de cosa juzgada. No se aplica la prohibición de admisibilidad, por ejemplo, cuando la solicitud de anulación se ha retirado antes de que la resolución correspondiente haya adquirido fuerza de cosa juzgada (resolución de 12/05/2014, R 1616/2013-4, apartado 13) o cuando la resolución previa que ha adquirido la fuerza de cosa juzgada ha declarado la solicitud inadmisible (por ejemplo, por no estar registrada todavía la MC) y no se ha pronunciado sobre el fondo.
(i) Mismo objeto La defensa de cosa juzgada no se aplica a una solicitud de caducidad cuando la resolución previa que ha adquirido fuerza de cosa juzgada se refiere a una solicitud de caducidad presentada en fecha diferente. Las fechas en las que han de establecerse las circunstancias conducentes a la declaración de caducidad (falta de uso, MC convertida en término genérico o convertida en término engañoso) son diferentes y, por consiguiente, no puede considerarse que el objeto sea el mismo (resolución de la División de Anulación de 31/01/2014 en el asunto 7333 C).
(ii) Misma causa Una resolución previa de la Oficina en un procedimiento de oposición entre las mismas partes y sobre el mismo objeto no impide una solicitud posterior de anulación con base en los mismos derechos anteriores (sentencia de 14/10/2009, T-140/08, «TiMi KiNDERJOGHURT», apartado 36, recurso ante el Tribunal desestimado, y sentencia de 23/09/2014. T-11/13, «MEGO», apartado 12), puesto que la causa es diferente. No obstante, es poco probable un resultado distinto en los procedimientos de nulidad o caducidad, salvo cuando se cumplan una o varias de las condiciones siguientes.
Que se prueben nuevos hechos (p. ej. prueba del uso o renombre de una marca anterior no presentada durante el procedimiento de oposición).
Que haya cambiado la forma en que se realicen las apreciaciones jurídicas clave (p. ej. modificación de las normas para apreciar el riesgo de confusión), por ejemplo, a consecuencia de sentencias intermedias del Tribunal de Justicia de la Unión Europea.
(iii) Mismas partes La triple identidad que exige la defensa de cosa juzgada significa además que las partes en ambos procedimientos (el procedimiento de que se trata y el que condujo a la resolución previa que ha adquirido fuerza de cosa juzgada) sean las mismas.
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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 1
CAMBIOS EN UN REGISTRO
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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 .......................................................................................................8 1.4.1 Competencia................................................................................................... 8 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 ............................................................................................................ 10 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 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
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6 Reivindicaciones de antigüedad posteriores al registro ..................... 19 6.1 Principios generales ................................................................................ 19 6.2 Efecto jurídico .......................................................................................... 20 6.3 Requisitos formales ................................................................................. 20
6.3.1 Forma ........................................................................................................... 20 6.3.2 Lengua.......................................................................................................... 20 6.3.3 Tasas ............................................................................................................ 21 6.3.4 Indicaciones obligatorias .............................................................................. 21
6.4 Examen ..................................................................................................... 21 6.4.1 Examen sustantivo ....................................................................................... 21 6.4.2 Triple identidad ............................................................................................. 23 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 registro de marca comunitaria por un registro internacional ............................................................................................ 25
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1 Renuncia
Artículo 50, del RMC Regla 36, del REMC
1.1 Principios generales
El titular de la marca comunitaria podrá retirarla, para la totalidad o solo para una parte de los productos y servicios, 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 partir 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 la marca comunitaria registrada, al igual que los de sus 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 la declaración el mismo día de la recepción de la renuncia. Eso significa que si la Oficina recibe una declaración de renuncia y una carta 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 permanecer 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 descripción válida de los 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 procedimiento aplicables en determinados Estados miembros según las cuales un poder no confiere el derecho a renunciar a una marca 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 podrá registrarse si hay terceros que han registrado derechos de la 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 licencia u otro 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 la renuncia, esta se inscribirá después de la recepción de dicha comunicación.
Si el titular de la 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 la 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 equivale 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).
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1.4 Examen
1.4.1 Competencia
La Oficina es competente en el examen de la declaración de renuncia.
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 comunitaria 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 que 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 modificación 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 marca 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 Marcas 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 la representación de la 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 la representación de la marca debe realizarse por escrito en una de las cinco lenguas de la Oficina.
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2.2.2 Tasas
Artículo 2, apartado 25, del RTMC
La solicitud está sujeta a una tasa de 200 EUR y la petición no se considerará presentada hasta que no se haya abonado la 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 la representación de la 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 modificación de la representación de la marca para varios registros de marca comunitaria siempre que tanto el titular de la 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
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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 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, como la indicación del porcentaje de alcohol en la etiqueta de 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 admisibles
MARCA TAL COMO FUE REGISTRADA PROPUESTA DE MODIFICACIÓN
MC 7 389 687
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 publicación incluirá una representación 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 oposición 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 nacionalidad del titular de una 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 la 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 constitución 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 solicitud 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 registro de comercio. La solicitud de inscripción del cambio de nombre o dirección no está sujeta al pago de una tasa.
Las personas jurídicas únicamente pueden tener una dirección 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. 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 67, apartado 2, artículos 68 y 69 del RMC, artículo 71, apartados 3 y 4, del RMC, Regla 84, apartado 3, letra e), 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 la 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 cualquier persona cuyos productos o servicios procedan de la 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 solicitudes 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 marca está sujeta al pago de una tasa de 250 EUR y la marca seguirá perteneciendo al mismo titular. Si no se paga la tasa, la solicitud se considerará no presentada. Puede presentarse en una de las cinco lenguas de la 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 comunitaria 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 la 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 vayan a crear varios registros nuevos, la lista correspondiente a cada uno de los registros divisionales;
la lista de productos y servicios que se mantengan en la 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 división 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 si 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).
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 caducidad o de nulidad) únicamente pueden dividirse en la marca comunitaria 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 sólo queda excluida la división de la marca comunitaria original, con el efecto de que tendrían que dividirse los
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procedimientos de anulación, sino también en el caso de que se pretenda segregar los productos de la marca comunitaria original que son objeto de la división. No obstante, en este caso, se dará al titular de la marca comunitaria la oportunidad de modificar la declaración de división 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 comunitaria 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 tanto en relación con el registro original como con el registro divisional de la marca comunitaria, siempre que la licencia abarque los productos y/o servicios de la marca comunitaria original y divisional. No han de abonarse tasas adicionales.
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;
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la declaración ha sido rechazada porque no se cumplían los requisitos de forma previstos (véase el aparatado 5.2 supra).
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 las razones mencionadas, el solicitante podrá volver a solicitar 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 virtud 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 la 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.
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6.2 Efecto jurídico
El único efecto de la antigüedad será que, en caso de que el titular de la marca comunitaria renuncie a la marca anterior o la deje extinguirse, se considerará que 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 que se ha aceptado la reivindicación de antigüedad 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 antigüedad 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 antigüedad 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 antigüedad se presentará en una de las cinco lenguas de la Oficina.
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6.3.3 Tasas
La solicitud de reivindicación de antigüedad no está sujeta al pago de una tasa.
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 lo 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 para 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 está 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 copia al titular. De conformidad con lo dispuesto en el artículo 3 de la 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).
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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 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 dicho 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 prioridad, 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 la 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 marca 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).
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6.4.2 Triple identidad
Una reivindicación de antigüedad válida exige una triple identidad:
la marca registrada debe ser idéntica a la marca comunitaria;
los productos y servicios de la marca comunitaria deben ser idénticos a los 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 las 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, 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 son 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 marca es diferente según sea ésta en color o no designe ningún color en particular.»
(Véase la sentencia de 20/02/2013, T-378/11, «Medinet», apartados 40 y 52).
Para conocer detalladamente las prácticas de la Oficina en relación con la identidad de las marcas presentadas en blanco y negro y/o en escala de grises, en comparación con las marcas presentadas en color, al objeto de reivindicar antigüedad, véanse las Directrices, Parte B, Examen, Sección 2, Formalidades, apartado 14.2.1, en relación con las reivindicaciones de antigüedad que se aplican por analogía.
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.
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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, Formalidades, apartado 16.6.
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 cada oficina nacional, en la medida en que se haya establecido dicho formato.
Por lo tanto, al examinar las reivindicaciones de antigüedad, los examinadores deberán verificar si el formato de la antigüedad en el sistema de la 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
presentación; 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 publicación podrá incluir la fecha de registro y la fecha de prioridad de la reivindicación de antigüedad.
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.
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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 antigüedad se registrará junto con los datos a que se refiere la regla 84, apartado 2.
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 la 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
1.1.1 Cesión............................................................................................................. 5 1.1.2 Herencia ......................................................................................................... 5 1.1.3 Fusión ............................................................................................................. 5 1.1.4 Legislación aplicable ...................................................................................... 5
1.2 Solicitud de inscripción de la cesión........................................................ 6
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...................................................................... 10 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.................................................................................. 13 3.6 Requisitos de fondo ................................................................................. 14 3.7 Procedimiento para la subsanación de las irregularidades .................. 14
4 Cesión parcial .......................................................................................... 15 4.1 Reglas para la distribución de las listas de productos y servicios ...... 15 4.2 Objeciones................................................................................................ 16 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 ................................................................................................... 17 5.1 Cuestiones específicas relativas a las cesiones parciales ................... 18 5.2 Cesión y procedimiento inter partes....................................................... 19
6 Inscripción, notificación y publicación.................................................. 20 6.1 Inscripción ................................................................................................ 20 6.2 Notificación............................................................................................... 20 6.3 Publicación ............................................................................................... 21
Cesión
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7 Cesiones de dibujos y modelos comunitarios registrados ................. 22 7.1 Derechos de uso anterior para los DMC................................................. 22 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 entidad 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 los productos o servicios para los cuales se haya registrado la marca o solicitado su registro (cesión parcial). A diferencia de lo que ocurre con una licencia o una transformación, la cesión de una MC no afecta 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 las 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 se 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 MC se inscriben en la misma base de datos. Aunque estas Directrices no hacen, por lo general, distinción entre la cesión de marcas y la de solicitudes de MC, se incluyen referencias especiales en los 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 cesión 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.
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1.1 Cesiones
Artículo 17, apartados 1 y 2, del RMC
La cesión de una MC implica dos aspectos: su validez entre las partes y 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 la transmisión de la empresa a la que pertenezca (véase asimismo la sentencia de 30/3/2006, en el asunto C-259/04, «ELIZABETH EMANUEL», apartados 45 y 48).
1.1.1 Cesión
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 una 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.
1.1.2 Herencia
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.
1.1.3 Fusión
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 empresa por la otra, se produce una sucesión universal. Cuando se cede en su conjunto la empresa a la que pertenece la marca, existe una presunción de que la cesión incluye a la 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.
1.1.4 Legislación aplicable
Artículo 16 del RMC
Salvo disposición en contrario 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 legislación nacional declarada aplicable en esta disposición es la
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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 los procedimientos seguidos ante la Oficina si se presenta una solicitud de inscripción de la misma y ésta se inscribe en el Registro o, en caso de solicitud de MC, en el correspondiente expediente de solicitud.
Artículo 17, apartado 7, del RMC
En cualquier caso, en el periodo comprendido entre la fecha de recepción de la solicitud de inscripción de la cesión y la fecha de inscripción de la 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 la 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 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 lugar 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 nombre es el relativo al mantenimiento o no de la 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
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(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 cambio en la organización formal de la 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 de la empresa A pasa a formar parte de la propiedad de la empresa B, existirá una cesión de activos.
Por lo general, no existirá cesión si el número de inscripción 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 (no obstante, véase, la resolución de 24/10/2013, R. 546/2012-1 - «LOVE et al»)
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 contrario 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 cambio 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
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modifica su petición, es decir, si insiste en inscribir el cambio como un cambio de nombre, o si no responde, se denegará la solicitud de registro de un cambio de nombre. La parte interesada podrá interponer recurso contra esta resolución (véase la Decisión 2009-1 de 16 de junio de 2009 del Presidium de las Salas de Recurso sobre las Instrucciones a las Partes en el Procedimiento ante las Salas de Recurso).
En cualquier momento podrá presentarse una nueva solicitud de registro de la cesión.
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 los expedientes que conserva la Oficina o en el Registro como cambio de nombre. La notificación establecerá un plazo 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 está 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 cesión. 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.
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Regla 76, apartado 3, del REMC
Si la Oficina lo exige expresamente, los poderes podrán presentarse en cualquier lengua oficial de la Unión Europea.
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 la lengua del procedimiento, la Oficina podrá exigir una traducción a esta última o, a elección del solicitante de la inscripción, a cualquier lengua de la 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 los registros o solicitudes de MC 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 más procedimientos diferentes. En caso contrario, se denegará la solicitud en su conjunto. La parte interesada podrá interponer recurso contra esta resolución.
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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 o titulares originales (el titular o titulares de la MC, tal como aparece en el Registro o el solicitante o solicitantes de MC, tal como aparece en el archivo de solicitud de MC) o por el titular o titulares nuevos (el «cesionario» o los cesionarios, es decir, la persona o personas que aparecerán como el titular cuando se registre la cesión).
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 tienen su sede o establecimiento. La Oficina recomienda encarecidamente que se indique el Estado de constitución
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de las empresas estadounidenses, en su caso, para diferenciar claramente entre los distintos titulares en su base de datos. Estos datos corresponden a las indicaciones relativas al solicitante exigidas para una nueva solicitud de MC. 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.
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 cesión 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 procedimiento 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 otra 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.
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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.
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 titulares originales y del nuevo titular o nuevos titulares han de aparecer junta o separadamente en la solicitud o en un documento justificativo. En caso de cotitularidad, todos los cotitularios deberán firmar o nombrar a un representante común.
Regla 31, apartado 5, letra a), del REMC
Si tanto el titular original como el nuevo titular firman 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).
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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 si ésta va acompañada de una declaración 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
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.
Cuando la marca haya sido sometida a varias cesiones sucesivas y/o a cambios de titularidad y estos no hayan sido previamente inscritos en el Registro, bastará con entregar la cadena de pruebas en la que se muestren los eventos que conforman la relación entre el antiguo y el nuevo titular, sin necesidad de cumplimentar solicitudes de asiento registral separadas para cada cambio.
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.
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Cuando la cesión de la marca sea consecuencia de un derecho real, de una ejecución forzosa de bienes o de un procedimiento de insolvencia, el titular original no podrá firmar la solicitud. En estos casos, la solicitud deberá ir acompañada de una resolución judicial definitiva por la cual se transfiere la titularidad de la marca al beneficiario.
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 la 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 titular acepte limitar dicha inscripción a productos o a servicios para los cuales no resulte engañosa.
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.
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 designado. La Oficina no informará automáticamente a la otra parte en la cesión, a menos que en su caso resulte procedente.
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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. La parte interesada podrá interponer recurso contra esta resolución.
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 las 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 nuevo número de marca 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.
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 inscripción de una cesión parcial deben indicarse los productos y servicios a los 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
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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 una indicación genérica en ella comprendida, será aceptada siempre que la lista no resulte ampliada. Para la valoración de si 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 clase 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).
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
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Oficina denegará la solicitud. La parte interesada podrá interponer recurso contra esta resolución.
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 la lista del registro original. La Oficina hará los cambios en la lista original previo consentimiento del titular original. Si no se consigue el acuerdo dentro del plazo señalado por la Oficina, la solicitud de inscripción de la cesión se denegará. La parte interesada podrá interponer recurso contra esta resolución.
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 la solicitud o registro original de MC, la solicitud de inscripción de la cesión y la correspondencia relativa a la 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 copia de la solicitud de inscripción de la cesión, que no incluirá normalmente copias de la correspondencia posterior relativa a la misma.
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 inscripción 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.
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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 cesión parcial, la nueva MC o solicitud 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 la 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 inscribir la cesión en el expediente de la solicitud de MC restante y a crear una nueva solicitud de MC según lo anteriormente descrito.
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 se 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 tasa por clase por la nueva solicitud. Si la cesión afecta únicamente a algunos de los productos y servicios de una clase particular y no a otros, dicha clase
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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 la 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 solicitud de renovación pero no se han pagado las correspondientes tasas antes de la inscripción de la cesión, las tasas que deben pagarse se determinarán con arreglo a la 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 presentar una solicitud de renovación antes de la inscripción de la 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 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 plantearse 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.
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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 la otra parte, hay que distinguir entre los casos de cesión completa y los de cesión parcial.
Artículo 17, apartado 5, del RMC Regla 84, apartado 5, del REMC
En caso de cesión completa, la notificación se remitirá a la 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
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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 caso de cesión parcial la lista de productos 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 inscripción de una cesión se refiere a una solicitud de MC 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 titular desde el principio. La publicación de la inscripción hará referencia a la 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 haberse producido una cesión de la solicitud. Esto mismo se aplicará en caso de que la cesión de una solicitud de MC no publicada tenga carácter parcial.
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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 la fecha de presentación o de prioridad de la 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 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 única solicitud de inscripción de dichas 6 cesiones o se presentan varias solicitudes el mismo día; y
el titular del dibujo o modelo comunitario y el cesionario son los mismos en los 6 casos.
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8 Cesiones de marcas internacionales
Gracias al Sistema de Madrid se puede realizar el «cambio de titularidad» de un 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 inscripción de la 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 titularidad puede encontrarse en los 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/).
Licencias
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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
Licencias
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Índice
1 Introducción............................................................................................... 4 1.1 Contratos de licencia ................................................................................. 4 1.2 Legislación aplicable ................................................................................. 4 1.3 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 la 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 ............................................................................................ 10
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 una marca comunitaria o una solicitud de marca comunitaria .............................. 16 3.1 Competencia, lenguas, presentación de la solicitud ............................. 16 3.2 Solicitante ................................................................................................. 16
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......................................................................................................... 18
3.4.1 Cancelación de una licencia......................................................................... 18 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 4.1 Definición de cesión de una licencia ...................................................... 20
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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................................................................................................ 21
6 Registro de licencias para marcas internacionales.............................. 22
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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 las marcas comunitarias y a las 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 la 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.
1.2 Legislación aplicable
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 Estado 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 Estado 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 los efectos de una licencia como objeto de propiedad y no se 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 afecta a la libertad de las partes contratantes de someter la licencia a una legislación nacional concreta.
1.3 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 marca 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 licencia 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 la 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 licencia ante la Oficina:
a) el/los titular(es) de la MC, o
b) el/los titular(es) de la MC, conjuntamente con el/los licenciatario(s), o
c) el/los licenciatario(s).
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 identificación 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. En caso de cotitularidad, todos los cotitulares deberán firmar o designar un representante común
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 licencia. 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 caso de cotitularidad, todos los cotitulares deberán firmar o designar un representante común
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 caso 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 la licencia u otras condiciones de la licencia. En estos casos, bastará con que se presente únicamente una parte o un extracto del acuerdo relativo a la 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 la OMPI de petición de inscripción de una licencia (que se adjunta en el anexo de la recomendación conjunta relativa a las 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 serán devueltos a la 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 ese 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 la 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.
2.4.4 Representación
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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 la 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 licencia (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 el Registro de una o más de estas 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 licencia 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 licencia 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 la 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 exigir un poder. En este caso, si no se presenta un poder, el procedimiento continuará
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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. La parte afectada podrá presentar recurso contra esta resolución. (Véase la Decisión 2009-1 de 16 de junio de 2009, del Presidium de las Salas de Recurso relativa a las Instrucciones para las Partes en los Procedimientos Interpuestos ante las Salas de Recurso).
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 informará 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 aceptará ningún otro enunciado. Si no se ha indicado 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 servicios 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 celebrar 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 la 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 los 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 servicios 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, los productos o servicios cubiertos por una licencia parcial.
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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 una 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 Solicitud de Registro de la 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 la Organización Mundial de la Propiedad Industrial (Petición de Modificación/Cancelación de la 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.
3.2 Solicitante
Regla 35, apartado 1, del REMC
Podrá presentar la solicitud de cancelación o modificación del registro de una licencia:
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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 la licencia, ya que implica una declaración 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 existe 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.
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 exclusiva o si dicha licencia se limitase en lo referido a su ámbito
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territorial, en lo que respecta al período de tiempo para el que se concede, o a los 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 la 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 licencia pasara a ser una licencia temporal o si se modificara el ámbito geográfico de una licencia.
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
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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 la 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.
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 su limitación a parte de los 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.
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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 Marcas 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 licencia 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 la cesión 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.
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).
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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 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.
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 las 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.
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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 algunos productos, que no es posible) se aplicarán a cada uno de los dibujos y modelos individuales que figuren en una solicitud 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 licencia 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.
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 través de la 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 encontrarse en los 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 solicitud y solicitudes para dos o más 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.............. 8 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.......................................................... 11 2.5.1 Tasas ............................................................................................................ 11 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........................................................... 14
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................................................ 16
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 dibujos 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 dibujo 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 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 5. Los procedimientos específicos de las 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 modelos. Pueden consistir, por ejemplo, en derechos de uso, 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 aquélla a través, por ejemplo, de la venta de la marca o del dibujo o modelo. Los siguientes son ejemplos de este concepto: DE: Pfand, Hypothek; EN: Guarantees, Warranties, Bails y Sureties; ES: Hipoteca; FR: Nantissement, Gage, Hypothèque, Garantie, Caution; IT: Pegno, Ipoteca.
Existen dos tipos de derechos reales que el solicitante puede pedir 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).
1.1 Legislación aplicable
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 legislación de un Estado miembro en lo que respecta a la
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adquisición, la validez y los efectos de la MC como objeto de propiedad. A tal fin, un derecho real relativo a una MC se asimilará, en su totalidad y para el conjunto del 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 los artículos 17 a 24 del RMC.
El artículo 16 del RMC se limita a los efectos de un derecho real como objeto de propiedad y no se extiende al Derecho contractual. Dicho artículo no establece la legislación aplicable ni la validez de un contrato de derecho real, de manera que la libertad de las partes contratantes de someter el derecho real a una legislación nacional concreta no se ve afectada por el RMC.
1.2 Ventajas del registro de los derechos reales
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 la 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 la expiración de tal inscripción, de que ésta se aproxima a su expiración. La Oficina notificará asimismo al acreedor prendario cualquier
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pérdida de derechos, así como la expiración de la inscripción en el registro, en su caso.
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 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 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 registro de un derecho real sobre una solicitud de MC podrá presentarse en la primera o la segunda lengua de la solicitud de MC.
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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.
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 dicha 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 única 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 quién 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.
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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.
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 solicitud 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 la 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. En caso de cotitularidad, todos los cotitulares deberán firmar o designar a un representante común.
No será necesario aportar una prueba del derecho real.
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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 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 conformidad 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 caso de cotitularidad, todos los cotitulares deberán firmar o designar a un representante común.
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.
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El contrato de derecho real, o un extracto 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 derecho real no desearán 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 que aquél identifique a las partes de dicho derecho y la MC sujeta al derecho real y contenga las firmas de las dos partes. El resto de elementos 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 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 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 la lengua de los 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 cualquiera de las lenguas de la Oficina. La Oficina establecerá un plazo límite de dos meses desde la fecha de notificación de tal 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).
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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.
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 la(s) MC y de la información exigida en relación 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 procedimientos inter partes, la otra parte de los procedimientos podrá exigir un poder. En este caso, si no se 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. La parte afectada podrá
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presentar recurso contra esta resolución. (Véase la Decisión 2009-1 de 16 de junio del Presidium de las Salas de Recurso relativas a las Instrucciones para las partes en los Procedimientos Interpuestos ante las Salas de Recurso).
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 copia 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 oficio. La Oficina no tendrá en cuenta las declaraciones o alegaciones del acreedor prendario sobre la existencia o el alcance del derecho real o de su 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 su facultad de examen de oficio (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 un derecho real, a menos que el acreedor prendario presente una orden 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. La parte afectada podrá presentar un recurso contra esta resolución.
2.6 Procedimiento de registro y publicaciones
Regla 33, apartado 4, del REMC
El derecho real relativo a solicitudes de MC se mencionará en los 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.
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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.
Se podrá acceder a esta información mediante la consulta pública de expedientes (véanse las Directrices, Parte E, Operaciones de registro, 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 que 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 derecho 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 formulario de la Oficina para la cancelación o la modificación de un derecho real.
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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.
3.2.1 Cancelación del registro de un derecho real
Regla 35, apartado 4, del REMC
Si el solicitante o titular de la 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 copia 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 la 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
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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 los documentos citados en el apartado 2.4.3.4, siempre que se cumplan los siguientes requisitos:
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 sea necesario indicar los datos relativos al acreedor prendario y excepto en caso de modificación 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.
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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.
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 derecho 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 registro de la cancelación o la modificación.
Regla 35, apartado 6, y regla 84, apartado 5, del REMC
El registro de la cancelación o modificación 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 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 los derechos
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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.
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 la MC, aquélla habrá de sustituirse por una declaración o por 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 modelos 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 prenda en favor del mismo acreedor prendario. Asimismo, se solicita el registro de un derecho real respecto a 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 estos 6 derechos reales o se presenten diversas solicitudes en el mismo día, y
el titular del dibujo o modelo 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 presentar las solicitudes directamente en la Oficina Internacional, en su oficina nacional de PI, en la oficina de una parte 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 Madrid 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 E
OPERACIONES DE REGISTRO
SECCIÓN 3
LA MARCA COMUNITARIA COMO OBJETO DE PROPIEDAD
CAPÍTULO 4
EJECUCIÓN FORZOSA
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Índice
1 Introducción............................................................................................... 4 1.1 Legislación aplicable ................................................................................. 4 1.2 Ventajas del registro de la ejecución forzosa ..........................................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
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4.1 Solicitudes múltiples de dibujos y modelos comunitarios registrados................................................................................................ 16
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 dibujo 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 la ejecución forzosa que concierne 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 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 sentencia de posesión 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.
1.1 Legislación aplicable
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 la legislación de un Estado miembro, por lo que respecta al procedimiento de ejecución forzosa. A tal fin, una ejecución forzosa de una MC se asimilará, en su totalidad y para el conjunto del territorio de la 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 marca 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 los artículos 17 a 24 del RMC.
1.2 Ventajas del registro de la ejecución forzosa
Ejecución forzosa
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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 es 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 dicho Registro si el titular establece que ha informado 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 ejecución forzosa contra una marca comunitaria en el Registro, la Oficina notificará al beneficiario, al menos seis meses antes de la expiración de tal inscripción, que ésta se aproxima a su expiración. La Oficina 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 ejecución 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 ser 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 registro de una 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 cada caso se trate del mismo titular inscrito y del mismo beneficiario.
2.2 Lenguas
Regla 95, letra a) del REMC
La solicitud de registro 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 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 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.
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.
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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 registro 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 o titulares 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 quién 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 ejecución 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 solicitud 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 representante, 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. En caso de cotitularidad, todos los cotitulares deberán firmar o nombrar un representante común.
La Oficina no informará al beneficiario de que se ha solicitado el registro de la 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 conformidad con la legislación nacional pertinente (artículo 16 del RMC).
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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 la sentencia, que puede contener 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 la lengua de los procedimientos, la Oficina podrá exigir una 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
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establecerá un plazo límite de dos meses desde la fecha de notificación de tal 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 otra autoridad, en cuyo caso no se exige ninguna tasa; véase el apartado 2.3 anterior) que la solicitud se considera no presentada porque la tasa correspondiente no se ha abonado. No obstante, podrá presentarse una nueva solicitud en todo 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). La parte afectada podrá presentar recurso contra esta resolución (véase la Decisión 2009-1 de 16 de junio de 2009 del Presidium de las Salas de Recurso relativa a las Instrucciones para las Partes en los Procedimientos Interpuestos ante las Salas de Recurso).
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 se 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 hacerse 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 la ejecución forzosa se realizará de oficio. La Oficina 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 tal inscripción de la ejecución forzosa. Si procede, también se informará al titular de la MC.
Se podrá acceder a esta información mediante la consulta pública de expedientes (véanse las Directrices, Parte E, Operaciones de registro, 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 cancelación 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 pruebas acreditativas de la extinción de la 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 impedirá 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 tales 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 sea 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 la 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.
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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 la prueba de la 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 registro de la cancelación o la 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 solicitud de MC, la cancelación o modificación 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.
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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 modelos 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 ejecución forzosa en favor del mismo beneficiario. La tasa ascenderá a 1 000 EUR en caso de que se presente una única solicitud para el registro de estas
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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 ejecución forzosa respecto a 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 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 la oficina nacional de PI del titular registrado, en la oficina de una parte contratante a la que se otorgue la ejecución forzosa, o en la oficina del beneficiario. La solicitud no podrá presentarse directamente en la Oficina Internacional por el beneficiario. No deberá utilizarse el formulario de solicitud 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 Madrid 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 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 1.1 Legislación aplicable ................................................................................. 3 1.2 Ventajas del registro de procedimientos de insolvencia......................... 4
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 29 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 dibujo 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 los procedimientos de insolvencia 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 continuación 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 las 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 la 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 jurídicas 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 insolvencia o adoptar 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 cualquier 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).
1.1 Legislación aplicable
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 insolvencia 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 entidades. 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.
1.2 Ventajas del registro de procedimientos de insolvencia
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 que se inscribiera un procedimiento de insolvencia contra una marca comunitaria en el registro, el titular de la MC perderá su derecho a actuar y, por tanto, no podrá 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 que se inscribiera un procedimiento de insolvencia 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.
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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 petición 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 el formulario de Solicitud de Registro 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 registro de procedimientos de insolvencia contra una MC deberá presentarse en una de las cinco lenguas de la Oficina, a saber: español, alemán, francés, inglés, 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 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.
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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 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 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 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 insolvencia si la solicitud de registro 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 extracto 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
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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 la lengua del procedimiento o, a elección de la parte que solicite el registro de la insolvencia, a cualquiera de las lenguas de la Oficina. La Oficina establecerá un plazo límite de dos meses desde la fecha de notificación de tal 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 solicitud 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 registro del procedimiento de insolvencia 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 procedimientos inter partes, por la otra parte de los procedimientos. En este caso, si no se presenta autorización, el procedimiento continuará como si no se hubiera designado ningún representante.
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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. La parte afectada podrá presentar recurso contra esta resolución. (Véase la Decisión 2009-1 de 16 de junio de 2009, del Presidium de las Salas de Recurso relativa a las Instrucciones para las Partes en los Procedimientos Interpuestos ante las Salas de Recurso).
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 marca comunitaria en cuestión.
La Oficina notificará al solicitante del registro la anotación de los procedimientos de insolvencia 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, los procedimientos de insolvencia 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 tal 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 los procedimientos de insolvencia podrán ser consultados por terceros mediante una solicitud de consulta pública de expedientes (véanse las Directrices, Parte E, Operaciones de registro, 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.
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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 cancelación o modificación 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 registro de la cancelación de procedimientos de insolvencia 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 se informará de ello al solicitante o titular de la 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.
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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 sea necesario indicar los datos relativos al administrador judicial, excepto en caso de modificación 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 cancelación del registro de procedimientos de insolvencia no está 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 registro de la cancelación o la modificación.
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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 la persona que haya formulado la solicitud; si la solicitud la hubiere presentado el administrador judicial, 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 de insolvencia 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 solicitud de MC, la cancelación o modificación de los procedimientos de insolvencia 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 los procedimientos de insolvencia que hayan sido cancelados, y en caso de modificación de tales 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 Madrid 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
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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 .................................................................................5
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 Reivindicación 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 reedición, búsquedas y requisitos formales ............................ 17
3.3.1 Primera reedición ......................................................................................... 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 3.3.3.4. Términos imprecisos .................................................................................22
3.4 Motivos de denegación absolutos .......................................................... 23 3.5 Observaciones de terceros...................................................................... 25 3.6 Oposición.................................................................................................. 25
3.6.1 Plazos ........................................................................................................... 25 3.6.2 Recepción e información del titular internacional......................................... 26 3.6.3 Tasas ............................................................................................................ 26 3.6.4 Examen de admisibilidad.............................................................................. 26 3.6.5 Lengua del procedimiento ............................................................................ 27 3.6.6 Representación del titular del registro internacional .................................... 27
3.6.6.1 Recibos de la oposición.............................................................................27 3.6.6.2 Notificación del inicio del procedimiento de oposición...............................28
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3.6.7 Denegación provisional (basada en motivos relativos) ................................ 28 3.6.8 Suspensión de la oposición en caso de que estuviere pendiente una
denegación provisional sobre especificación de productos y servicios y/o por motivos absolutos................................................................................... 29
3.7 Anulación del registro internacional o renuncia a la designación de la UE .......................................................................................................... 29
3.8 Limitaciones de la lista de productos y servicios.................................. 30 3.9 Confirmación o retirada de la denegación provisional y emisión de
la declaración de concesión de protección............................................ 30 3.10 Segunda reedición ................................................................................... 31 3.11 Cesión de la designación de la UE.......................................................... 31 3.12 Nulidad, caducidad y demandas de reconvención ................................ 32 3.13 Gestión de las tasas................................................................................. 33
4 Transformación (conversión), transformación, sustitución................ 33 4.1 Observaciones preliminares.................................................................... 33 4.2 Transformación (conversión) .................................................................. 34 4.3 Transformación ........................................................................................ 34
4.3.1 Observaciones preliminares ......................................................................... 34 4.3.2 Principio y efectos ........................................................................................ 35 4.3.3 Procedimiento............................................................................................... 35 4.3.4 Examen......................................................................................................... 36
4.3.4.1 Solicitud de transformación del registro internacional que designa a la UE cuando no se han publicado las indicaciones .....................................36
4.3.4.2 Solicitud de transformación del registro internacional que designa a la UE cuando se han publicado las indicaciones ..........................................37
4.3.5 Transformación y antigüedad ....................................................................... 37 4.3.6 Tasas ............................................................................................................ 37
4.4 Sustitución................................................................................................ 38 4.4.1 Observaciones preliminares ......................................................................... 38 4.4.2 Principio y efectos ........................................................................................ 38 4.4.3 Procedimiento............................................................................................... 38 4.4.4 Tasas ............................................................................................................ 39 4.4.5 Publicación ................................................................................................... 39 4.4.6 Sustitución y antigüedad .............................................................................. 40 4.4.7 Sustitución y transformación ........................................................................ 40 4.4.8 Sustitución y transformación (conversión) ................................................... 40
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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 Marcas (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 las tareas de la OAMI como Oficina de origen, es decir, de las solicitudes internacionales «salientes». El apartado 3 se refiere a las tareas como Oficina designada, es decir, de los registros internacionales «entrantes» que designan a la UE. El apartado 4 se refiere a la sustitución, a la transformación de un registro internacional que designa a la UE en marca comunitaria y a la transformación (conversión).
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 OAMI 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 determinadas 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; cumplimentar correctamente el formulario MM2 o EM2; el derecho a presentar la solicitud internacional a través de la OAMI.
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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 marca comunitaria de base 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 registro de la marca comunitaria, por lo que la 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 facilitando dicha información en la carta que acompaña al formulario MM2.
Si durante el examen de la solicitud internacional el examinador determina que no se ha abonado la tasa de tramitación, informará al solicitante de ello 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.
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.
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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 transmitirse 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 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 la 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; se ha suprimido el punto 13, puesto que la OAMI certifica la solicitud
internacional de forma electrónica.
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Cuando el solicitante opte 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 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 la «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 industrial real y efectivo en el mismo. El solicitante puede elegir en qué criterio o criterios 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 todas las solicitudes de marca 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 una 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. Para obtener detalles completos sobre la práctica de la Oficina en materia de identidad de las marcas presentadas en blanco y negro o en escala de grises, en comparación con las presentadas en color, véase la Parte B, Sección 2, Formalidades, apartado 14.2.1, relativa a las reivindicaciones de prioridad, que se aplica por analogía. 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 realizar una reivindicación de color. Cuando la solicitud/marca comunitaria de base contenga una indicación de colores, la misma indicación deberá incluirse en la 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, por ejemplo, la nota musical, ya que la OMPI no acepta archivos electrónicos sonoros.
Si la marca de base comprende una descripción, se podrá incluir la misma descripción en la 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 reivindicar la protección de determinados elementos aunque la marca de base no lo hiciera (punto 9 g)).
La OMPI requiere una transcripción en caracteres 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 Reivindicación 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 se 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 la OMPI debidamente cumplimentado y firmado (véase el punto 11, nota al pie de página**). Este formulario, que contiene la declaración de intención de uso de la marca, únicamente está disponible en inglés 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 recabar 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 transmisión electrónica comprende la certificación de la Oficina de origen a que se hace referencia en el artículo 3, apartado 1, del Protocolo de Madrid.
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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 la 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 la OMPI, sino que lo hará a través de la 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 la 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 extender 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. Las designaciones posteriores no están sujetas al pago de una tasa de tramitación a la OAMI.
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Las designaciones posteriores se deberán realizar en el formulario oficial: el formulario MM4 de la OMPI en inglés, francés o español o el formulario EM4 en las 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 su derecho a presentar 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 única 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 cedido 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 más reducida (punto 5 b) o c)). La lista 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 cubre 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.
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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 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 procedimiento 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 la misma. Esto ocurre no sólo si un tercero 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 dicho 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);
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existe un procedimiento de oposición pendiente (incluidos los recursos subsiguientes ante las Salas de Recurso o el TG/TJUE);
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 marca comunitaria o la 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 la oficina de origen. 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 transmitir 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 la 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 la OMPI: nueva licencia o modificación 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 la OMPI: restricción del derecho del titular a disponer,
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 la 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 transmitir 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 la OAMI relativas a cesiones, 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 una de las lenguas de la 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 una solicitud o un registro nacional en ese 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 la UE. El plazo de 18 meses comienza el día en que la OAMI recibe la notificación de la designación.
Cuando se reciban correcciones de la OMPI que afecten a la propia marca o a los productos y servicios o a la fecha de designación, será competencia de la OAMI decidir si el nuevo plazo de 18 meses comienza a contar 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
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republicar parcialmente el registro internacional en el Boletín de Marcas Comunitarias y reabrir el plazo de oposición solo para dicha parte de productos y servicios. Las principales tareas que la OAMI debe llevar a cabo como Oficina designada son:
la primera reedición 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 han de actuar 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 objeción deberán incluir una invitación a designar 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 reedición, búsquedas y requisitos formales
3.3.1 Primera reedición1
Artículo 152, del RMC
Tras su recepción, los registros internacionales se republicarán inmediatamente en la Parte M.1 del Boletín de Marcas Comunitarias, salvo si no se indica una segunda lengua.
1 Primero, los registros internacionales se publican en la Gaceta Internacional y posteriormente la OAMI los reedita.
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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 la 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 reedición, 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 petición 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 la 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 las tasas de búsqueda se tendrá por no presentada la solicitud de búsqueda 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 donde 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 las 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 marca colectiva, si existen reivindicaciones de antigüedad y si la lista de productos o servicios reúne los requisitos de claridad y precisión que se establecen en la Parte B.3 Clasificación
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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 se ha indicado una segunda lengua, el examinador enviará una denegación 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 la regla 112, del REMC. En los casos en que el titular del registro internacional haya 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 la Gaceta y se remitirá 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 solicitud internacional incluye una única 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 aplicación 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 plazo de dos meses a partir de la fecha en que la Oficina Internacional notificó la designación a la OAMI, el Reglamento de uso de la 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 haya 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 la Gaceta y se remitirá 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 hay que adjuntar al formulario MM17 certificados o documentos que apoyen las reivindicaciones de antigüedad, puesto que la OMPI no los enviará a la OAMI. 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 haya 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, 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 haya 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 Oficina le invitará a que designe un representante, de conformidad 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 la 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 haya 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, se requerirá al titular que designe un representante ante la OAMI.
Si la OAMI acepta una reivindicación de antigüedad, informará de ello a la OMPI, quien inscribirá este hecho en el registro internacional y lo publicará.
Se informará de la reivindicación de antigüedad 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.
3.3.3.4. Términos imprecisos
Artículos 36 y 145 del RMC Reglas 2 y 9 del REMC
Los registros internacionales que designan a la UE serán objeto de un examen a efectos de la especificación de los términos generales o imprecisos en la lista de productos y servicios del mismo modo que lo están las solicitudes de marcas comunitarias directas (para más información, véanse las Directrices, Parte B, Examen, Sección 3, Clasificación).
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Si la lista de productos y/o servicios del registro internacional contuviera términos imprecisos, que no fueran lo suficientemente claros o concisos, la OAMI emitirá una denegación provisional de protección y concederá al titular un plazo de dos meses para subsanar la irregularidad, a contar a partir del día de emisión de la denegación provisional de la OAMI, de acuerdo con lo dispuesto en las Reglas 2 y 9 del REMC. 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 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 la Gaceta y se comunicará al titular del registro internacional. La respuesta a la denegación provisional deberá ir dirigida a la OAMI.
Una vez que se haya notificado 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. Los términos que deban ser aclarados por el titular del registro internacional deberán estar siempre en la misma clase que la redacción original del Registro Internacional.
Si, después de volver a examinar el caso, la objeción fuera retirada o el titular del registro internacional subsanara la irregularidad y cumpliera con el requisito de nombrar un representante ante la OAMI, en su caso, dentro del plazo prescrito, la Oficina emitirá una situación provisional de la marca a la OMPI, a condición de que no haya pendiente ninguna otra denegación provisional y de que el plazo de oposición aún esté vigente. En ese caso, continuará el proceso de registro internacional.
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 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 la OMPI de que se ha confirmado la denegación provisional. Si la denegación es sólo parcial, se emitirá una comunicación a la OMPI una vez que hayan finalizado el resto de procedimientos (motivos absolutos/oposiciones) o haya finalizado el plazo de oposición sin que se reciban oposiciones (véase el apartado 3.9 infra).
3.4 Motivos de denegación absolutos
Artículo 154, apartado 1, 18 bis, apartado 1 del RMC Regla 112, apartado 5, 112, apartado 1, 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,
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Examen, Sección 4, Motivos absolutos de denegación y marcas comunitarias colectivas).
Si la OAMI considera que la marca es susceptible de protección, y siempre que no haya otra denegación provisional pendiente, 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 protección, 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 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 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 otra denegación provisional pendiente y 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 reedición), se dará por concluido el examen de oficio. Una situación provisional de la marca será, por tanto, expedida automáticamente.
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. Dicho de otro modo, si la denegación provisional afectaba únicamente a algunos de los productos y servicios, se denegarán solo dichos productos y servicios pero 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 haya una denegación total, la OAMI informará a la OMPI de que se ha confirmado la denegación provisional. Si la denegación por motivos absolutos es solo parcial, se emitirá una comunicación a la OMPI una vez que hayan finalizado el resto de procedimientos (especificación de productos y servicios/oposiciones) o haya finalizado el plazo de oposición 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 presentar 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 oposición y, si se presentó una oposición, 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 denegación (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 emitir una denegación provisional basada en motivos absolutos respecto de productos y servicios distintos de aquellos a los que se hace referencia en las 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 la marca y la OAMI las estima fundadas, expedirá otra denegación provisional a las observaciones de terceros. Las observaciones se adjuntarán a la denegación provisional.
El procedimiento de examen 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 oposición 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 procedimiento de oposición puede verse suspendido si se expide una denegación de los motivos absolutos.
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Las oposiciones presentadas después de la republicación del registro internacional pero antes del inicio del plazo de oposición 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 oposición, se remitirá una carta al oponente para informarle de que 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 se considerará debidamente presentada hasta que no se 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 pérdida 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 la OMPI, aunque sea incompleta, a los 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 oposición 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 se enviará a la 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 los recibos de la 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 haya de actuar o no representado ante la OAMI, con arreglo al artículo 92, apartado 2, del RMC.
Si el titular del registro internacional no ha de 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 ha de 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 puede ser parcial o total. Contendrá los derechos anteriores invocados, la lista pertinente de productos y servicios en la que se basa la oposición y, en caso de denegación parcial, la lista de productos y servicios contra la que se dirige 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 la traducirá a la lengua en la 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
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notificación directa a las partes que realiza en paralelo la OAMI, tal como ocurre para una marca comunitaria normal.
3.6.8 Suspensión de la oposición en caso de que estuviere pendiente una denegación provisional sobre especificación de productos y servicios y/o 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 sobre la especificación de productos y servicios (véase el apartado 3.3.3.4 supra) y/o por motivos absolutos (véase el apartado 3.4 supra) 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 sobre especificación de productos y servicios y/o por motivos absolutos.
Si la denegación provisional sobre especificación de productos y servicios y/o 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 sobre especificación de productos y servicios y/o 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 renuncia a la designación de la UE
Si, además de una denegación provisional sobre especificación de productos y servicios y/o 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 la fase contradictoria del procedimiento de oposición, 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 la 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 la regla 18, apartado 2, del REMC, en cuyo caso no se reembolsará la tasa de oposición.
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3.8 Limitaciones de la lista de productos y servicios
Artículo 9 bis, inciso iii, del PM y regla 25 del RC
La OAMI no puede comunicar limitaciones como tal a la OMPI.
Por lo tanto, tras una denegación provisional sobre especificación de productos y servicios y/o 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
como directamente ante la OAMI, en cuyo caso la OAMI confirmará simplemente 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. La OMPI registrará la limitación y la remitirá a la OAMI para su examen.
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 registro). 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 el 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 retirada de la denegación provisional y emisión de la declaración de concesión de protección
Regla 113, apartado 2, letra a), 115, apartado 5, letra a) , 116, apartado 1, y 18 ter, apartado 1, 2 y 3 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
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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 oposición, el registro internacional no ha sido 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.
3.10 Segunda reedición
Artículo 151, apartados 2 y 3, artículo 152, apartado 2, y artículo 160, del RMC Regla 116, apartado 2, del REMC
La segunda reedición 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 la segunda reedición será el punto de partida del plazo de uso de cinco años y la fecha a partir de la cual se podrá invocar el registro contra el infractor.
A partir de la segunda reedición, la solicitud internacional tendrá los mismos efectos que una marca comunitaria registrada. Estos efectos podrán entrar en vigor, por tanto, antes de que haya vencido el plazo de 18 meses.
Solo se publicarán los siguientes datos en la 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 la(s) anterior(es) publicación(es) en el
Boletín de Marcas Comunitarias; 450 Fecha de publicación 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 nombre del titular de la marca de base, podrá ser cedido posteriormente de forma independiente de la misma.
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De hecho, una «cesión del registro internacional» no es más que una cesión de la 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 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 los 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 nulidad de un registro internacional que designa a la 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 solicitud de caducidad por falta de uso 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 publicación 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).
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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 Madrid 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 establecido 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 la mencionada anteriormente, que haya sido denegada definitivamente o para la que el titular del registro internacional ha renunciado a la 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 (conversión), transformación, sustitución
4.1 Observaciones preliminares
Transformación (conversión) 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 cabo 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 lo contrario, no habrá nada que transformar y la transformación (conversión) de la designación será la única posibilidad.
Cuando el registro internacional que designe a la UE sea denegado definitivamente por la OAMI o deje de tener efectos por motivos que sean independientes de la marca de base, solo será posible la transformación (conversión). La transformación (conversión) 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 (conversión)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 (conversión) tiene su origen en el sistema de la marca comunitaria, que ha sido adaptado con el fin de permitir la transformación (conversión) 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 (conversión) 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 designación posterior es el único que, en lugar de hacerlo directamente a través de la Oficina de origen o a través de la OMPI, debe presentarse a través de la Oficina designada.
Para más información sobre la transformación (conversión), véanse las Directrices, Parte E, Operaciones de registro, Sección 2, Transformación (Conversión).
4.3 Transformación
Artículo 6, apartado 3, artículo 9 quinquies, del Protocolo de Madrid Artículo 161, del RMC Regla 84, apartado 2, 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 la 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 (conversión), 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 designación de la UE en designaciones 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 (conversión) 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 la 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 las reivindicaciones de prioridad 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 derecho de transformación 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 la 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 la 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 antigüedad 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 transformación 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 la 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 transformación 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 la 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 inscritas 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 base 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 la oficina de una parte 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 sido sustituida por una designación de la UE a través de un registro 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 la 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. Si la lista es más reducida, se declara una deficiencia. Esta deficiencia normalmente puede superarse renunciando parcialmente a los productos y
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servicios de la marca comunitaria que quedan fuera del alcance del registro internacional.
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 la UE a través de un registro 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 terceros. En cualquier caso, la OAMI no está obligada a comunicar 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.
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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 la regla 21 del RC, información relativa a las reivindicaciones de antigüedad 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 (conversión)
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 la marca comunitaria directa (debido a una oposición, por ejemplo), el titular podrá solicitar la transformación (conversión) de la designación de la UE y podrá, así, mantener los efectos de la sustitución de la 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 ........................................................................................... 10
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 través de las oficinas nacionales (Oficina de
Propiedad Intelectual del Estado miembro u Oficina 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 ......................................................................16 2.7.2.4 Pago de las tasas......................................................................................16 2.7.2.5 Solicitudes múltiples y solicitud de pago aplazado....................................17
3 Asignación de una fecha de presentación ............................................ 17 3.1 Solicitud de registro................................................................................. 17 3.2 Información que identifica al solicitante................................................. 18 3.3 Representación del dibujo o modelo adecuada para su reproducción 18
3.3.1 Requisitos generales .................................................................................... 18
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3.3.2 Fondo neutro ................................................................................................ 18 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 casas u otros 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 .......................................................................................... 25 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...................................................... 26 4.2.1 Principios comunes ...................................................................................... 26 4.2.2 Orden público ............................................................................................... 26 4.2.3 Buenas costumbres...................................................................................... 26
4.3 Objeción.................................................................................................... 27
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......................................................................................................... 31 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
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5.6.2 Caracteres tipográficos................................................................................. 38
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...........................................................45 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 ........................................................................................ 60 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
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9.1 Introducción.............................................................................................. 64 9.2 Retirada de la solicitud ............................................................................ 64 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 .................................... 66 9.3.3 Procedimiento para solicitar una corrección ................................................ 66 9.3.4 Irregularidades.............................................................................................. 66
10 Registro, publicación y certificados ...................................................... 67 10.1 Registro..................................................................................................... 67 10.2 Publicación ............................................................................................... 68
10.2.1 Principios generales ..................................................................................... 68 10.2.2 Formato y estructura de la publicación ........................................................ 68
10.3 Certificado de registro ............................................................................. 70
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 ................................................................... 72
11.2 Cambios en el Registro............................................................................ 72 11.2.1 Introducción .................................................................................................. 72 11.2.2 Renuncia del dibujo y modelo comunitario registrado ................................. 73
11.2.2.1 Principios generales ..................................................................................73 11.2.2.2 Requisitos formales para la declaración de renuncia ................................74
11.2.3 Cambios en el 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.........................................................................................................76
11.2.5 Licencias...................................................................................................... 76 11.2.5.1 Principios generales ..................................................................................76 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.........................................................................................................77
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.................... 78
12.1.2.1 Particularidades.........................................................................................78 12.1.2.2 Aplazamiento de la publicación .................................................................78 12.1.2.3 Tasas.........................................................................................................79
12.1.3 Examen realizado por la Oficina Internacional............................................. 79
12.2 El papel de la Oficina como oficina designada ...................................... 79
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12.2.1 Recepción del registro internacional que designa a la Unión Europea........ 80 12.2.2 Causas de denegación de registro............................................................... 80
12.2.2.1 Conformidad con la definición de un dibujo o modelo, el orden público y las buenas costumbres..............................................................................80
12.2.2.2 Plazos........................................................................................................80 12.2.2.3 Lenguas.....................................................................................................81 12.2.2.4 Representación profesional.......................................................................81 12.2.2.5 Renuncia y limitación ................................................................................81 12.2.2.6 Concesión de protección...........................................................................82 12.2.2.7 Denegación ...............................................................................................82
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 ......................................... 84 13.2 Otras consecuencias prácticas............................................................... 84
13.2.1 Presentación ante las oficinas nacionales ................................................... 84 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.................................. 85 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 ..................................................................................86
13.4.1.2 Causas de nulidad debidas a la ampliación de la UE................................87 13.4.2 Efectos de una reivindicación de prioridad................................................... 88
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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 la solicitud de dibujo o modelo comunitario registrado (DMC) hasta su registro y publicación. La Oficina no tiene competencia respecto de los 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 simple 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 la luz de dichos Reglamentos que debe evaluarse 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
1Reglamento (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. 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 dibujos 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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Las resoluciones de la Oficina serán motivadas (artículo 62 del RDC). El razonamiento debe ser lógico y no debe mostrar incoherencias internas. Sin embargo, no está obligada a motivar expresamente sus apreciaciones sobre el valor de cada una de las 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)
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La Oficina podrá declarar inadmisibles hechos o pruebas que el solicitante no haya alegado a su debido tiempo (artículo 63, apartado 2, del RDC).
Para el cálculo de los plazos véase el artículo 56, del REDC. 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 declaración de nulidad (véanse las Directrices de examen de las solicitudes de nulidad de dibujos y modelos).
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1.2.5 Facilidad de uso
Uno de los 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.
A este efecto, se anima a los examinadores a que se pongan en contacto 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 los 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 por presentación electrónica. También podrá presentarse 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 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.
4 https://oami.europa.eu/ohimportal/es/forms-and-filings
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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.
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
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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 prioridad o una prioridad de 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 la 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 la lengua de presentación, 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 la segunda lengua de la 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).
5 La Unión Europea tiene 24 lenguas oficiales y de trabajo, 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 periodo renovable que se 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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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 establecimiento real y efectivo industrial o comercial en la 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», 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 empresa principal, dotado de una 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 su sede social o un establecimiento industrial o comercial efectivo y serio en la 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).
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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.
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 se 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 las solicitudes presentadas electrónicamente ya incluyen la fecha de presentación 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 solicitud 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/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:
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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;
las tasas deben adeudarse de una cuenta corriente con la Oficina o abonarlas mediante tarjeta de crédito;
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 enviar dicho informe de examen, 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 examen está pendiente debido a algunas 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 mes desde la fecha de presentación, la declaración de prioridad, que indique la fecha y el país en que fue presentada la solicitud anterior (artículo 42 del RDC; artículo 8, apartado 2, del REDC; véase el apartado 6.2.1.1 infra).
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En dichas circunstancias, el examinador informará al solicitante de que el examen de la solicitud ha sido 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 prioridad o una declaración 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 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 responde a la comunicación de la 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 la comunicación de la Oficina, y el pago sigue incompleto, se enviará una carta de irregularidad.
Lo anterior también se aplica a los pagos mediante tarjeta de crédito en los que la transacción no se haya podido realizar debido a causas no atribuibles a la Oficina. En estos casos, el solicitante deberá utilizar otro método de pago. Para más información sobre el pago de las tasas, véase el apartado 8 infra.
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2.7.2.5 Solicitudes múltiples y solicitud de pago aplazado
Si una solicitud múltiple incluye una petición 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.
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 la Oficina 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 las tasas no es un requisito para la asignación de una fecha de presentación. Sin embargo, es un requisito para el registro de la 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 solicitud de registro 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.
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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.
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 reproducirse 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 se 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 la misma se distinga claramente de su 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).
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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
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
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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 papel de la reproducción sino solo reproducciones escaneadas de la misma. Por lo tanto, solo cuando el uso de tinta o líquido corrector cree dudas respecto de si 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.
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 dañar 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 sido 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
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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 sido transmitida por fax no tiene una calidad que permita distinguir claramente los pormenores de la cosa objeto de protección.
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 su 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 cuyas 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.
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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).
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 presentarse 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 la 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 tamaño de 8 cm a 16 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 la 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 bidimensionan( � la solicitud contenga una petición de aplazamiento (artículo 36, apartado 1,
letra c), del RDC; artículo 5, apartado 1, del REDC).
En caso de solicitud múltiple, la sustitución de la representación por una muestra puede efectuarse respecto de algunos de los dibujos, a condición de que estos
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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).
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 modelo, siempre que se subsane la irregularidad en el plazo de dos meses desde la recepción de la 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 su 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 dibujo o modelo muestra la apariencia de la totalidad o de parte de un «producto» se examinará a la luz del propio dibujo o modelo, en la medida en que
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aclare la naturaleza del producto, su destino o su función, y de la relación de los 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.
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 Locarno, 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 único color puede ser un elemento de un dibujo, aunque por sí mismo no cumpla con la definición de dibujo o modelo porque no compone la «apariencia de un producto».
Pueden aceptarse las combinaciones de colores si del contorno de la 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 elementos visibles de un programa 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 caracteres 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 protección ya sea como logotipo o como símbolo gráfico de la clase 32 de la Clasificación de Locarno, o como representación ornamental de una parte de cualquier producto en que se aplicará el dibujo o modelo.
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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.
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 dibujo o modelo, con independencia de lo 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. Incluso si la forma en cuestión es distinta de la que comúnmente corresponde a un organismo vivo, el dibujo o modelo será denegado si no hay nada que sugiera a primera vista que la forma resulta de un proceso manual o industrial (véase por analogía la resolución de 18/02/2013, R 0595/2012-3 – «Groente en fruit», apdo. 11). Sin embargo, no se 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.
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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 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 determinados 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 sexo, origen racial o étnico, 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.
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4.3 Objeción
Si el examinador plantea una objeción respecto de uno u otro 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). 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 sido 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 más
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tardar tres meses antes de que expire el periodo de aplazamiento 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 influir 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 solicitud 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).
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 su dibujo o modelo. La Oficina no examinará 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 Fujitsu 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
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irregularidades relativas a la incongruencia de la perspectivas (resolución de 3/12/2013, R 1332/2013-3 – «Adapters», apartado 14 y ss.)
La coherencia de las perspectivas puede ser 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.
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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. 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 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.
5.2.3 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 685235-0001, 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 ser un «producto» en sí 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 la combinación de los 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 carta de irregularidad, concediéndole dos opciones:
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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.
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 único 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).
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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 momentos, mientras que el producto está en uso, es una de las 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 identificadores para excluir la protección 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 afectará 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 solicitud 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
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partes del dibujo o modelo que no son visibles en una determinada perspectiva, es decir, líneas invisibles.
RCD 30606-0005, cortesía de Nokia Corporation (autor: Petteri Kolinen)
5.3.2 Delimitaciones
Las delimitaciones pueden utilizarse para rodear características del dibujo o modelo 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
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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.
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.
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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. 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 superficie 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 presentación, 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 su 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 nombre de más de un solicitante, 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 su 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 la 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 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.
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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 dibujo o modelo comunitario deberá indicar los productos a los que vaya a incorporarse 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 ellos se clasifique en una sola clase de la 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 modelo 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 Locarno es una clasificación 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
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Organización Mundial de la Propiedad Intelectual (OMPI). La edición vigente, la décima, incluye 32 clases y 219 subclases. 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 productos de la 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 acelerar y simplificar el procedimiento de registro, 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 solicitud 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 la correspondiente clase y subclase de la 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 la Clasificación de Locarno, aunque no se 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
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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».
El uso de adjetivos en indicaciones de producto 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 más general incluido en la 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 -)».
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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 «Producto(s) X (Ornamentación para -)». El producto se clasificará, por tanto, en la 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 existan 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 la solicitud, siempre que no existan problemas relacionados con la claridad y la precisión de dichos 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 el 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
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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 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 la 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 objeción, 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).
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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 sola clase y subclase de la 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 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 los principales objetivos de la 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 se 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 la Clasificación de Locarno de los productos incluidos en la
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 París, 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.
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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;
sólo se podrá reivindicar la prioridad de la primera solicitud de un dibujo o modelo, o de un modelo de utilidad 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 lo contrario podrá cuestionarse la validez de la 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).
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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.
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 que 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 prioridad dentro del plazo de un mes a partir 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 prioridad posteriormente, la solicitud se examinará sin demora y, si no se encuentran irregularidades, se registrará sin esperar un mes para una posible 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 la 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;
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si se han presentado dentro de plazo los detalles y la copia de la 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 )
si el titular es el mismo o si 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 ser 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 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 que no se subsanan 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).
Si la prioridad se reivindica en el plazo de seis meses desde la presentación de la primera solicitud
El examinador examinará si la fecha de presentación 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 señalar 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 presentación de la 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 poco posterior al plazo de seis meses, el examinador comprobará si podrá prorrogarse el plazo, de conformidad con una de las condiciones establecidas en el 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.
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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.
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 reproducción 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 prioridad 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 documentos 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 la solicitud anterior no es una de las cinco lenguas oficiales de la 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 utilidad), 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 la fecha de presentación o de la fecha de recepción de la declaración de prioridad.
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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 dibujo o modelo o modelo de utilidad anterior, incluida la de un dibujo o modelo comunitario anterior o un registro internacional de dibujo o modelo.
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)
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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) Saint Helena (SH) Somalia (SO) Islas Turcas y Caicos (TC) Tuvalu (TV) Islas Vírgenes Británicas (VG).
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.
Como excepción, recibirá la consideración de primera solicitud, a efectos 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 haya servido de fundamento para reivindicar un derecho de prioridad. La solicitud anterior ya no podrá servir de base 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 prioridad 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 convenio» (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 solicitud (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 la 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 seis meses desde la primera exhibición en una exposición reconocida a tal efecto, en concreto una exposición mundial en el sentido del Convenio relativo a las 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/.
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Irregularidades
La Oficina se limitará a verificar si se cumplen los requisitos formales relativos a la reivindicación de prioridad de exposición (artículo 45, apartado 2, letra d), del RDC), es decir: 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 inferior al plazo de tres 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 superior a 100 palabras 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 hacer referencia únicamente a aquellas 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 modelo ni a su 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.
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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 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 conformidad 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 objeción respecto de la indicación de los productos (apartado 4.6 supra). Si no se 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 la 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 refrigeración con radios y reproductores de CD se clasificarán en las 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
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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 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 diseñadores 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 se detectan irregularidades, se procederá a registrar el dibujo o modelo 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).
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Sin embargo, los terceros podrán consultar todo el expediente si han obtenido el consentimiento previo del solicitante o si pueden demostrar un interés 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.
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 la 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 ser 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 incluye una solicitud de aplazamiento, 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 modelos que se aplazarán deben ser 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 la tasa de publicación es facultativo en el momento de presentación.
6.2.5.3 Petición de publicación
Al presentar la solicitud, o a más 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):
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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);
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 si 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 exista una solicitud 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 publicación anterior, decide finalmente que el dibujo o modelo no debe ser 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 dibujo o modelo comunitario deben ser 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 su 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 los dibujos o modelos de un registro múltiple, si se reivindican fechas de prioridad distintas para cada dibujo o modelo individual.
Si no se cumple el plazo de los «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 los 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
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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 solicitud múltiple no se 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. Irregularidades relativas a los «requisitos de petición de publicación»
Si, una vez expirado el plazo de veintisiete 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 irregularidad 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 podrá 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 b), 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
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Si no existen irregularidades o las irregularidades han sido subsanadas dentro de plazo, el registro se publicará en la Parte A.1. del Boletín de Dibujos y Modelos Comunitarios.
El titular podrá solicitar que se publiquen solo algunos de los dibujos o modelos de una solicitud múltiple.
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 registro 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 dibujos y modelos que puede contener una solicitud múltiple no está 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 incorporarse o aplicarse el dibujo o modelo (artículo 2, apartado 3, del REDC, véase el apartado 6.1.4 supra).
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7.2.2 Examen separado
El número de dibujos y modelos que puede contener una solicitud múltiple se examinará por separado. Si una irregularidad 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 la medida que afecte a dichos dibujos y modelos (artículo 10, apartado 8, del REDC). 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 solicitud 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 objeción, 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
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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 podrá dividirse a menos que exista una irregularidad que afecte al requisito de «unidad de clase» (artículo 37, apartado 4, del RDC).
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 talla o molde tridimensional, en la 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 solicitud 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 acuerdo 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
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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 la Clasificación de Locarno.
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 tres 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 registro y la tasa de publicación o, si la solicitud incluye una petición de aplazamiento de la publicación, la tasa de aplazamiento.
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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. 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
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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 -
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 pago, la información que acompaña el pago y las condiciones de reembolso de tasas abonadas se explican en las 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 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 algunas 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 dibujo o modelo comunitario registrado o, en el caso de una solicitud múltiple, retirar algunos de los dibujos y modelos incluidos en la solicitud múltiple (artículo 12, apartado 1, del REDC). El examinador enviará una confirmación de la retirada.
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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;
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 la solicitud anterior en que se reivindica la
prioridad de convenio;
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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). 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 confirmación de la 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 se 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 la fecha de presentación (véase el apartado 6.2.2 supra). Por lo tanto, se denegarán las peticiones de
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corrección que supongan presentar una descripción 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 la solicitud están resaltadas en negro a continuación): (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 prioridad con arreglo al artículo 42 del RDC;
(i) los datos relativos a la reivindicación de prioridad 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 aplazamiento 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.
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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.
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 modelo, la fecha de presentación, la fecha de registro 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.
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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: 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.
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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 emitirá certificados de registro para los registros internacionales que designan a la Unión Europea (véase el apartado 12 infra).
Desde el 15/11/2010, solo se han emitido certificados de registro en forma de certificados electrónicos en línea. Se invitará a los titulares de registros de dibujos y modelos comunitarios a descargar el certificado a partir del día siguiente a la 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 certificado 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.
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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.
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 carencias que no sean 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).
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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 la 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).
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.
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11.2.2 Renuncia del dibujo y modelo comunitario registrado
11.2.2.1 Principios generales
El titular podrá renunciar en cualquier 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 inscribirse 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).
Podrá renunciarse parcialmente a un dibujo 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 los derechos inscritos en el Registro (artículo 51, apartado 4, del RDC). Entre las personas que tienen un derecho registrado se incluyen los titulares de una licencia 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 recibir pruebas de que el titular del derecho ha informado de ello al licenciatario de la 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).
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Cuando se interponga una acción judicial en reivindicación de la 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.
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 cumple 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 nombre o dirección por parte del titular de un dibujo o modelo comunitario deberán incluir:
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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 nombre y dirección de los solicitantes de dibujos o modelos comunitarios relacionados con la solicitud de dibujos y modelos comunitarios no se 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 los registros de dibujos y modelos comunitarios se publican en la Parte B.2.2. del Boletín de Dibujos y Modelos comunitarios, mientras que las cesiones de derechos se publican en la Parte B.2.1. Los cambios en los 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
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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).
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).
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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 cinco 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:
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 la Organización Mundial de la 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 Haya es un sistema 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 la Propiedad Industrial, a través de una única solicitud internacional presentada en la Oficina Internacional. En virtud del Arreglo de La Haya, una única 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.
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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 Madrid 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 Madrid es que el Acta de Ginebra no permite, ni requiere, que los registros internacionales estén basados en un dibujo o modelo comunitario o nacional previamente presentado. La OAMI solo puede ser una «oficina designada» no una «oficina 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 solicitud 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 las 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
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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).
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 la calidad de las 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 la Organización Mundial de la 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 denegar 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.
6 Véase la página web www.wipo.int/hague/es/fees
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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).
12.2.2.1 Conformidad con la definición de un dibujo o modelo, el orden público y las buenas costumbres
Un registro internacional no puede denegarse por no cumplir requisitos formales, puesto que estos requisitos deben considerarse 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
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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 presentarse 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 la indicación del producto será la lengua en que la Oficina Internacional recibió la solicitud internacional. Las indicaciones proporcionadas 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 designe 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
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En caso de que el titular renuncie al registro internacional o lo limite a uno o algunos 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 la 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 o no retire su solicitud, 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). 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 escala de la Oficina. El titular podrá interponer un recurso ante la Sala de Recurso contra una resolución que deniegue la protección, en el plazo y de conformidad con las condiciones establecidas en los 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
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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 su 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 representante 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 contratantes designadas, se tratan en las 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 la 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 los dibujos y modelos comunitarios, la ampliación de la Unión Europea en los derechos de los dibujos y modelos comunitarios registrados tiene los efectos siguientes.
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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 dibujos 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.
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 la UE nuevas, a saber, 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 dibujos y modelos comunitarios presentados en la correspondiente fecha de adhesión o con posterioridad.
13.2.4 Traducción
No será necesario traducir ni volver a publicar en la lengua del o de los nuevos
7 En el caso del irlandés, véase el apartado 2.4. supra
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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 dibujo o modelo comunitario no podrá denegarse por ninguna de las causas de denegación 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 elemento denominativo ofensivo en una lengua que, como resultado de la adhesión de un nuevo Estado 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 los Estados miembros que se adhieren a la 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 que se apliquen las causas de nulidad obedece únicamente a la adhesión de un nuevo Estado miembro».
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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 no 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 nulidad 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 carácter 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 dibujo o modelo comunitario pueden destruir la novedad o el carácter 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
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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 modelo 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.
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 la normativa sobre derechos de autor 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 signos, emblemas o escudos 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
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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 prioridad del dibujo o modelo comunitario de que se trate precede a la 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 la 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 dibujo o modelo comunitario registrado: (i) mediante una «solicitud directa» en la Oficina o en una Oficina nacional (artículo 35 y siguientes del RCD) o (ii) mediante una solicitud 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 estas Directrices es explicar la forma en que, en la práctica, la Oficina aplica los requisitos del Reglamento sobre los Dibujos y Modelos Comunitarios1 (RCD), el Reglamento de Ejecución 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 la 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 los usuarios por ser engañosas. Tenga en cuenta que estos servicios no están relacionados con ningún servicio oficial de registro de marcas o dibujos y modelos proporcionado por las oficinas de PI u otros 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 las tasas, 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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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 cartas a los 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 renovación 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 teléfono +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 expiración del registro. Entre las personas que han registrado un derecho se encuentran los titulares de una licencia registrada, los titulares de un derecho in rem registrado, los acreedores de un procedimiento 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 las comunicaciones de la 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 los 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 partir de la recepción por parte de la Oficina de la solicitud de registro de la cesión;
una persona autorizada por el titular del dibujo o modelo comunitario. Dicha persona puede, por ejemplo, ser un licenciatario registrado, un licenciatario 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 presentar la solicitud de renovación. 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 5.1. supra). Si la Oficina ha asignado un número de identificación al solicitante de la renovación, bastará con indicar este número.
El número de registro de los dibujos y modelos comunitarios registrados. Este número se compone siempre de una raíz 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 modelo 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 renovación 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 la 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 que expire el plazo de protección (en lo sucesivo, denominado «plazo ordinario»).
Si el plazo venciese un día en que la Oficina no esté 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 modelo comunitario tiene una fecha de presentación del 01/04/2013, el último día del mes en que venza el plazo de protección será el 30/04/2018. Por lo tanto, la solicitud y la tasa de renovación 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 se cumple con el plazo límite especificado, la solicitud de renovación podrá presentarse fuera de plazo y la tasa de renovación podrá abonarse en un plazo adicional (en lo sucesivo, denominado «período de gracia») 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 caso de demora 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 caso de que el 31/10/2018 caiga en sábado, domingo o cualquier 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 domingo; 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 representación del titular del dibujo o modelo 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 también podrá ser efectuado por las personas especificadas en el apartado 5.1 supra.
El pago mediante adeudo en una cuenta corriente cuya titularidad corresponda a terceros requiere la autorización expresa del titular de la cuenta corriente para llevar a cabo el adeudo de la tasa en cuestión en dicha cuenta. En estos casos, la Oficina comprobará que se ha obtenido dicha autorización. De lo contrario, se enviará una carta al solicitante de la renovación para solicitar la presentación de la 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 las 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 recibido el abono de la tasa de renovación con las indicaciones mínimas (nombre de la persona que solicita la renovación y número de registro 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 la 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 persona 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 caso de demora en el pago) o se piensan pagar antes de que expire el período de gracia (véase el apartado 5.5 y 5.6 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 la cuenta de la persona que lleva a cabo 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 la tasa de renovación junto con un recargo del 25 % (véase el apartado 5.4 supra).
6.2.2 Cumplimiento de los requisitos formales
Artículo 22 y artículo 40, del REDC
Si la solicitud de renovación no cumple 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 plazo máximo de dos meses. Este plazo máximo es de aplicación incluso cuando haya vencido el plazo adicional.
Si una persona 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 la 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 la renovación solicitada, la Oficina determinará qué dibujos o modelos 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 Oficina comprobará que el registro ha caducado para todos aquellos dibujos y modelos cuya tasa de renovación no ha sido abonada parcial o totalmente.
En caso de existir 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 cualquier 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 sus 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 vigor en el momento de la 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 la solicitud, no se 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 acuerdo 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 la renovación solo si se introducen en el Registro antes de la 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 haber 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 efectuarse en un plazo de dos meses a partir 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 presentar la solicitud de renovación o de no abonar la tasa de renovación, el plazo límite de un año comienza el día en que 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 modelo comunitario o a su 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 tiempo inicial de cinco años desde la fecha del registro internacional, y pueden renovarse por períodos adicionales de cinco 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 su totalidad el procedimiento de renovación de marcas internacionales: envía la notificación de renovación, recibe las tasas de renovación e inscribe la renovación en el 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.
OFFICE DE L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET MODÈLES) Le président
DÉCISION N° EX-15-2 DU PRÉSIDENT DE l'OFFICE du 8 Juillet 2015
portant adoption des directives relatives à l’examen pratiqué à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et
modèles) sur les marques communautaires et les dessins ou modèles communautaires enregistrés
LE PRESIDENT DE L'OFFICE DE L'HARMONISATION DANS LE MARCHE INTERIEUR (MARQUES, DESSINS ET MODELES),
vu le règlement (CE) n° 207/2009 du Conseil du 26 février 2009 sur la marque communautaire (le «RMC»), et notamment son article 124, paragraphe 2, point a), et le règlement (CE) n° 6/2002 du Conseil du 12 décembre 2001 sur les dessins ou modèles communautaires (le «RDC»), et notamment son article 100,
à la suite de la consultation du conseil d’administration, en application de l’article 126, paragraphe 4, du RMC et de l’article 101, point b), du RDC,
A ADOPTÉ LA PRÉSENTE DÉCISION:
Article premier
Les directives ci-après relatives à l’examen pratiqué à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) sur les marques communautaires et les dessins ou modèles communautaires enregistrés, et jointes en annexe à la présente décision, sont adoptées.
Nouvelles parties des directives:
A) MARQUE COMMUNAUTAIRE
Partie A: Dispositions générales Section 1, Moyens de communication, délai Section 2, Principes généraux à respecter dans les procédures Section 4, Langue de la procédure Section 6, Révocation de décisions, suppression d’inscriptions dans le registre et correction d’erreurs Section 7, Révision Section 8, Restitutio in integrum Section 9, Élargissement
Partie B: Examen Section 1, Procédure Section 3, Classification Section 4, Motifs absolus de refus (7(1)(f),(g),(h),(i),(j),(k), marques collectives)
Partie C: Opposition
Section 3, Dépôt non autorisé par les agents du titulaire de la marque (article 8, paragraphe 3, du RMC) Section 4, Droits en vertu de l’article 8, paragraphe 4, du RMC Section 5, Marques jouissant d’une renommée (article 8, paragraphe 5, du RMC)
Partie D: Annulation Section 2, Dispositions matérielles
Partie E: Inscriptions au registre Section 1, Modifications d’un enregistrement Section 3, La Marque Communautaire, en tant qu’objet de propriété Chapitre 1, Transfert Chapitre 2, Licences Chapitre 3, Droits réels Chapitre 4, Exécution forcée Chapitre 5, Procédures d’insolvabilité ou procédures analogues
Partie M: Marques internationales
B) DESSIN OU MODELE COMMUNAUTAIRE ENREGISTRÉ
Examen des demandes de dessins ou modèles communautaires enregistrés Renouvellement des dessins ou modèles communautaires enregistrés
Article 2
La pratique de l’Office présentée dans les directives précédentes, dans la mesure où elle correspond aux parties visées à l'article premier, est abrogée.
Article 3
Les directives visées à l’article premier sont publiées au Journal officiel de l’Office.
Article 4
La présente décision est publiée au Journal officiel de l’Office et entre en vigueur le 1er aout 2015.
Fait à Alicante, le 8 juillet 2015
António Campinos Président
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DU MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 1
MOYENS DE COMMUNICATION, DÉLAIS
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Table des matières
1 Introduction................................................................................................ 3
2 Modalités de dépôt et de communication avec l’Office ......................... 3
3 Notification et transmission des documents .......................................... 4 3.1 Communications à l’Office ........................................................................4
3.1.1 Transmission par télécopieur (fax) ................................................................. 4 3.1.2 Transmission par des moyens électroniques ................................................. 5 3.1.3 Transmission par voie postale, par service de messagerie ou remise en
mains propres ................................................................................................. 5
3.2 Notification par l’Office ..............................................................................6 3.2.1 Notification par télécopieur ............................................................................. 6 3.2.2 Notification par voie postale ........................................................................... 7 3.2.3 Notification par dépôt dans une boîte postale à l’Office ................................. 7 3.2.4 Notification par remise en mains propres....................................................... 7 3.2.5 Notification via le site internet officiel de l’Office ............................................ 8 3.2.6 Notification par voie de publication................................................................. 8
3.3 Destinataires..................................................................................................8
4 Délais.......................................................................................................... 9 4.1 Délais fixés par l’Office ..............................................................................9
4.1.1 Durée des délais fixés par l’Office .................................................................. 9 4.1.2 Expiration des délais .................................................................................... 10 4.1.3 Prorogation des délais.................................................................................. 10 4.1.4 Poursuite de la procédure ............................................................................ 12 4.1.5 Restitutio in integrum .................................................................................... 13
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1 Introduction
La présente partie des Directives comprend les dispositions communes à toutes les procédures devant l’Office en matière de marques, à l’exception des recours.
Dans un souci d’efficacité et pour éviter que les parties soient confrontées à des pratiques dissemblables, l’Office applique les règles de procédure de manière constante.
Les procédures devant l’Office peuvent être classées en deux grandes catégories: les procédures ex parte, qui n’impliquent qu’une seule partie, ou les procédures inter partes, dans lesquelles au moins deux parties sont en conflit.
La première catégorie regroupe notamment les procédures de demande d’enregistrement ou de renouvellement d’une marque communautaire, les inscriptions au registre relatives aux transferts, les licences, les procédures concernant l’exécution forcée ou la faillite et les procédures relatives à l’ancienneté et à la transformation.
La deuxième catégorie inclut les procédures d’opposition et les procédures de déchéance et de nullité de marques communautaires.
2 Modalités de dépôt et de communication avec l’Office
Article 25 du RMC Règles 79 et 83 du REMC
Une demande de marque communautaire peut être déposée directement auprès de l’Office ou par l’intermédiaire de l’office national d’un État membre de l’Union européenne ou du Bureau Benelux des marques.
Tous les autres documents sont obligatoirement déposés directement à l’Office.
Tout document peut être envoyé à l’Office par voie postale ou par service de messagerie, déposé directement à la réception de l’Office (Avenida de Europa, 4, 03008 Alicante) pendant les heures d’ouverture de l’Office (du lundi au vendredi de 8h30 à 13h30 et de 15h00 à 17h00) ou transmis par télécopieur. Les demandes de marque communautaire, les actes d’opposition et les demandes de renouvellement peuvent également être déposés par voie électronique par l’intermédiaire du site internet officiel de l’Office. Dans le cadre de sa stratégie de développement de ses affaires en ligne (e-business), l’Office prévoit d’étendre progressivement la transmission par des moyens électroniques à d’autres documents dans tous les types de procédures.
L’Office met divers formulaires à la disposition du public dans toutes les langues officielles de l’UE. Leur usage, sans être obligatoire (à une exception près), est fortement recommandé. L’exception concerne le dépôt d’une demande internationale ou d’une désignation ultérieure au titre du Protocole de Madrid, qui doivent être présentées en utilisant les formulaires MM2 ou MM4 de l’Organisation mondiale de la propriété intellectuelle (OMPI) ou les formulaires EM2 ou EM4 de l’Office. Tous ces formulaires peuvent être téléchargés sur le site internet officiel de l’Office.
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3 Notification et transmission des documents
Le REMC établit une distinction entre les documents issus des parties et transmis à l’Office et les notifications de l’Office.
La date de notification ou de communication d’un document est la date de réception de ce document ou la date à laquelle il est réputé avoir été reçu par le destinataire (y compris l’Office) (arrêt du 30 janvier 2014, C-324/13 P, «patricia Rocha», point 43). Le moment exact auquel la réception est réputée avoir eu lieu dépend de la méthode de notification ou de communication.
3.1 Communications à l’Office
Règle 5, paragraphe 1, règles 79, 79 bis, 80 et 82 du REMC Décision no EX-13-2 du président de l’Office
3.1.1 Transmission par télécopieur (fax)
Lorsqu’un document est transmis à l’Office par télécopieur, l’original doit être signé de sorte que la signature apparaisse sur la télécopie parvenant à l’Office. Lorsqu’un document transmis à l’Office n’est pas signé, ce dernier invite l’intéressé à remédier à l’irrégularité dans un délai qu’il lui impartit. Si le document n’est pas signé à l’expiration de ce délai, la demande ou la requête correspondante est déclarée irrecevable, ou, le cas échéant, il n’est pas tenu compte du document.
Lorsque la télécopie a été créée sur ordinateur et transmise par des moyens électroniques («télécopie électronique»), l’indication du nom de l’envoyeur est considérée comme équivalente à la signature.
La confirmation ultérieure de la télécopie par voie postale n’est pas nécessaire.
L’Office n’accuse réception de la télécopie que dans les cas expressément spécifiés par le REMC, à savoir lorsqu’il s’agit du dépôt d’une demande de marque communautaire. L’Office n’accuse donc pas réception des télécopies. Cependant, si la communication reçue est incomplète ou illisible, ou si l’Office a des doutes sérieux quant à l’intégrité des données transmises, il en informe l’expéditeur et l’invite, dans un délai qu’il lui impartit, à lui transmettre à nouveau la communication par télécopieur ou à envoyer à l’Office un original signé du document en question par voie postale, à le remettre en mains propres ou à le faire parvenir par tout autre moyen. Si la nouvelle communication est complète, la date de réception est réputée être celle de la communication originale, sauf pour l’attribution d’une date de dépôt pour une demande de marque communautaire. Sinon, l’Office ne tient aucunement compte de la communication ou ne prend en considération que les parties reçues et/ou lisibles (décision du 4 juillet 2012, R 2305/2010-4, «Houbigant/PARFUMS HOUBIGANT PARIS et autres»).
Pour de plus amples informations sur la date de dépôt, voir les Directives, Partie B, Examen, Section 2, Formalités
Lorsque le document à transmettre est en couleur, il suffit de le transmettre par télécopieur et de déposer l’original en couleur dans un délai d’un mois, sauf disposition
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contraire du RMC. Dans ce cas, la date de réception de l’original en couleur est réputée être celle de la réception de la télécopie par l’Office, y compris pour l’obtention d’une date de dépôt d’une demande de marque communautaire. L'heure de réception est l’heure locale d’Alicante (Espagne) à laquelle l’Office reçoit la télécopie.
3.1.2 Transmission par des moyens électroniques
Conformément à la règle 82 du REMC, lorsqu’une demande de marque communautaire est transmise par voie électronique (e-filing) ou qu’une communication est transmise à l’Office par des moyens électroniques, l’indication du nom de l’expéditeur vaut signature.
La décision du président de l’Office est déterminante pour établir si les communications peuvent être envoyées à l’Office par des moyens électroniques, dans quelle mesure, et dans quelles conditions techniques. Il convient de se référer en particulier à la décision n° EX-13-2, en vertu de laquelle l'heure de réception des demandes, des communications ou des documents transmis par des moyens électroniques via le site internet officiel de l’OHMI est l’heure locale d’Alicante (Espagne) à laquelle la réception a été validée.
Lorsqu’une communication électronique est incomplète ou illisible, ou que l’Office a des doutes sérieux quant à l‘exactitude des données transmises, la règle 80, paragraphe 2, du REMC s’applique mutatis mutandis.
3.1.3 Transmission par voie postale, par service de messagerie ou remise en mains propres
Lorsqu’un document est transmis par voie postale, par service de messagerie ou remis en mains propres, il doit être envoyé à l’Office à l’adresse indiquée dans les notes explicatives qui accompagnent les formulaires fournis par celui-ci.
Les documents transmis par voie postale, par service de messagerie ou par dépôt direct doivent porter la signature originale. Lorsqu’un document envoyé à l’Office n’est pas signé, ce dernier invite l’intéressé à remédier à l’irrégularité dans un délai qu’il lui impartit. Si le document n’est pas signé à l’expiration de ce délai, la demande ou la requête correspondante est déclarée irrecevable ou, le cas échéant, il n’est pas tenu compte du document.
La date de réception est la date de réception de la communication par l’Office. L’heure de réception est l’heure locale d’Alicante (Espagne).
Pour en savoir plus sur les copies des documents transmis, voir les Directives, Partie C, Opposition, Section 1, Questions de procédure, Validation par des faits, preuves et observations
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3.2 Notification par l’Office
Règles 55, 61 à 69 du REMC Décision no EX-97-1 du président de l’Office Décision no EX-05-6 du président de l’Office Décision no EX-13-2 du président de l’Office
Les communications écrites de l’Office sont «notifiées» à la partie ou aux parties à la procédure. Un document est considéré comme notifié lorsqu’il a été reçu ou est réputé avoir été reçu par le destinataire, que celui-ci en ait été avisé ou non. Par conséquent, la date de notification d'un document est la date à laquelle ce document est rendu accessible ou est parvenu au destinataire, et non la date d'expédition ou la date à laquelle le destinataire a effectivement pris connaissance de la notification. Toutefois, le moment exact auquel la réception est réputée avoir lieu dépend de la méthode de notification.
L’Office est libre de choisir le moyen de notification le plus adéquat (règle 61, paragraphe 3, du REMC), à l’exception de la notification par voie de publication, bien que certains moyens de notification exigent le consentement préalable de la partie intéressée.
En pratique, dans la mesure du possible et pour autant que le nombre de pages à transmettre ne soit pas excessif, l’Office choisit toujours la notification par voie électronique si elle est disponible.
Lorsque la procédure de notification adéquate a été respectée, le document est réputé notifié à moins que le destinataire ne prouve qu’il ne l’a jamais reçu ou qu’il l’a reçu tardivement. Si ce fait est prouvé, l’Office procédera de nouveau à la notification du ou des document(s) (arrêt du 13 janvier 2011, T-28/09, «Pine Tree», point 32). Si la procédure de notification n’a pas été dûment respectée, le document est néanmoins réputé notifié si l’Office est en mesure de prouver que le document est effectivement parvenu au destinataire.
Toute communication ou notification de l’Office doit indiquer le nom du département ou de la division de l’Office et le nom de l’agent ou des agents responsables. Ces documents doivent être revêtus de la signature desdits agents ou, à défaut, du sceau de l’Office, imprimé ou apposé. Pour les documents transmis par télécopieur, des informations supplémentaires sont fournies au paragraphe 3.2.1 ci-dessous.
3.2.1 Notification par télécopieur
L’Office peut utiliser la notification par télécopieur, à l’exception des notifications qui comprennent des éléments en couleur, si la partie destinataire a indiqué un numéro de télécopieur.
La notification est réputée avoir eu lieu à la date de réception par le télécopieur du destinataire. L’Office tient un journal de transmission des télécopies qui lui permet de prouver l’heure et le contenu des télécopies qu’il transmet. En l’absence de preuve du contraire ou d’information de nature à jeter le doute sur la bonne transmission de la notification, la date de réception d’une télécopie peut être établie par le rapport de transmission de l’Office (jugement du 13/01/2011, T-28/09, «Pine Tree», point 32).
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Lorsque les documents sont transmis par télécopieur, conformément à la décision n° EX-97-1 du président de l’Office, le nom du département ou de la division de l'Office indiqué dans l’en-tête de la lettre, ainsi que le nom de l'agent ou des agents responsables indiqué à la fin du document sont considérés comme des indications suffisantes.
3.2.2 Notification par voie postale
La procédure de notification par voie postale dépend de la nature du document notifié.
Si le destinataire a son domicile ou son siège dans l’UE ou s’il a désigné un représentant professionnel (tel que défini dans les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle), les décisions qui font courir un délai de recours, de même que les convocations et autres documents tel qu’établi par le Président de l’Office, lui sont notifiées par lettre recommandée avec accusé de réception.
Lorsque l’adresse du destinataire n’est pas située dans l’Union ou que le destinataire n’a pas désigné un représentant professionnel, ou pour tout autre document à notifier, l’Office envoie le document sous pli ordinaire.
La notification est réputée faite le dixième jour suivant sa remise à la poste. Cette présomption ne peut être contestée que si le destinataire apporte la preuve que le document ne lui est pas parvenu, ou qu’il lui est parvenu à une date ultérieure. La présence d’indices de nature à jeter un doute raisonnable quant à la bonne réception est considérée comme une preuve suffisante (arrêt du 25 octobre 2012, T-191/11, «Miura», point 34). En cas de litige, l’Office doit établir que la notification est parvenue à destination ou établir la date à laquelle elle a été transmise au destinataire.
La notification par lettre recommandée sera réputée avoir été effectuée même en cas de refus du courrier par le destinataire.
3.2.3 Notification par dépôt dans une boîte postale à l’Office
Lorsque le destinataire dispose d’une boîte postale à l’Office, la notification peut se faire en déposant dans cette boîte le document à notifier. La date du dépôt est enregistrée par l’Office. La notification est réputée faite le cinquième jour suivant le dépôt dans la boîte postale.
3.2.4 Notification par remise en mains propres
La notification peut également être effectuée par remise en mains propres à son destinataire, si celui-ci se trouve en personne à l’Office. Ce moyen de notification constitue une exception. Une copie du document, sur laquelle figure un accusé de réception daté et signé par le destinataire, est versée au dossier.
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3.2.5 Notification via le site internet officiel de l’Office
Conformément à la décision no EX-13-2 du président de l’Office du 26 novembre 2013, la notification peut également être effectuée via le site internet officiel de l’Office lorsque le titulaire du compte électronique auprès de l’Office a accepté ce moyen de notification. La notification consiste alors à placer le document électronique dans la boîte de réception du titulaire. La date est indiquée dans la boîte de réception du titulaire et est enregistrée par l’Office (décision du 17 janvier 2011, R 0956/2010-4 «DURAMAXX/DURAMAX»).
La notification est réputée faite cinq jours après le placement du document dans la boîte de réception du titulaire, indépendamment du fait que le destinataire l’ait, ou non, effectivement ouvert et lu [article 4, paragraphe 4, de la décision n° EX-13-2 du président].
3.2.6 Notification par voie de publication
La notification est faite par voie de publication pour toutes les notifications lorsque l’adresse du destinataire est inconnue ou si la notification par voie postale est retournée à l’Office après au moins une première tentative.
C’est principalement le cas du courrier retourné à l’Office par le bureau de poste avec la mention «inconnu à cette adresse» et du courrier non réclamé par son destinataire.
Les notifications sont publiées sur le site internet de l’Office. La notification est réputée faite un mois après le jour de sa publication sur le site.
3.3 Destinataires
Règles 67 et 77 du REMC Article 92 et 93 du RMC
Lorsqu’un représentant professionnel a été dûment désigné, toutes les notifications sont faites à celui-ci (arrêts du 12 juillet 2012, T 279/09, «100% Capri» et du 25 avril 2012, T-326/11, «BrainLAB»). «Dûment désigné» signifie que le représentant est habilité à représenter et qu’il a été régulièrement désigné, et qu’aucun empêchement de caractère général ne fait obstacle à la représentation par cette personne, telle que la représentation illicite des deux parties dans une procédure inter partes. Il n’est pas nécessaire de déposer un pouvoir pour être le destinataire des notifications de l’OHMI. Pour de plus amples informations, voir les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle.
Toute notification adressée par l’Office au représentant a le même effet que si elle était adressée à la personne représentée. De la même façon, toute communication adressée à l’Office par un représentant a le même effet que si elle émanait de la personne représentée.
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4 Délais
Règles 70 à 72 du REMC
Les délais dans les relations avec l’Office peuvent être divisés en deux catégories:
ceux fixés par le RMC ou le REMC, qui sont donc impératifs;
ceux fixés par l’Office, qui ne sont donc pas impératifs et peuvent être prorogés dans certaines circonstances.
4.1 Délais fixés par l’Office
Les délais constituent un outil essentiel pour mener des procédures ordonnées et raisonnablement rapides. Ils représentent un élément de politique publique et leur strict respect est nécessaire pour assurer la clarté et la sécurité juridique.
Pour ce qui est des mesures visant à atténuer l’application rigoureuse du principe de strict respect des délais, les règlements prévoient trois moyens, selon que le délai est expiré ou non.
Si le délai est encore en cours, la partie peut en demander la prorogation en vertu de la règle 71, paragraphe 1, du REMC.
Si le délai est expiré, la partie ayant omis de l’observer peut entreprendre deux démarches: soit demander une poursuite de procédure (conformément à l’article 82 du RMC), ce qui ne nécessite que le respect de certaines conditions de forme, soit demander la restitutio in integrum (conformément à l’article 81 du RMC), ce qui nécessite de respecter des conditions de forme et de fond (comme p. ex. de faire preuve de toute la vigilance nécessaire).
Des informations supplémentaires sont présentées aux paragraphes 4.1.4 et 4.1.5 ci- après.
4.1.1 Durée des délais fixés par l’Office
À l’exception des délais expressément prévus par le RMC ou le REMC, lorsque la partie concernée a son domicile, son siège ou un établissement dans l’Union européenne, les délais impartis par l’Office ne peuvent être inférieurs à un mois ou supérieurs à six mois. Lorsque la partie n’a pas son domicile, son siège ou un établissement dans l’UE, les délais ne peuvent être inférieurs à deux mois ou supérieurs à six mois. En pratique, les délais accordés sont généralement de deux mois.
Pour de plus amples informations, voir les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle
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4.1.2 Expiration des délais
Lorsqu’un délai est spécifié dans une notification de l’Office, «l’événement pertinent» est la date à laquelle le document est notifié ou réputé notifié, selon les règles applicables aux moyens de notification.
Lorsqu’un délai est exprimé en mois, il expire, dans le mois à prendre en considération, le jour ayant le même quantième que le jour où «l’événement pertinent» en question a eu lieu.
Ainsi, lorsqu’un délai de deux mois est fixé par l’Office dans une communication notifiée par télécopieur le 28 juin, ce délai expire le 28 août. Il est indifférent que «l’événement pertinent» ait eu lieu un jour ouvrable, un jour férié ou un dimanche, dont l’incidence se limite à l’expiration du délai.
À défaut de quantième identique ou lorsque le jour de l’événement est le dernier jour d’un mois, le délai considéré expire le dernier jour du mois en question. Un délai de deux mois fixé dans une notification du 31 juillet expire donc le 30 septembre. De la même manière, un délai de deux mois fixé dans une notification du 30 juin expire le 31 août.
Tout délai expire le dernier jour à minuit [(heure locale d’Alicante (Espagne)].
Si un délai expire soit un jour où l’on ne peut déposer de documents auprès de l’Office, soit un jour où le courrier ordinaire n’est pas distribué dans la localité du siège de l’Office (samedis, dimanches et jours fériés), le délai est prorogé jusqu’au premier jour ouvrable suivant. À ce titre, le président de l’Office fixe les jours de fermeture de l’Office avant le début de chaque année civile. La prorogation est automatique mais s’applique uniquement à la fin du délai (décision du 12 mai 2011, R 0924/2010-1, «whisper power-WHISPER»).
En cas d’interruption générale des services postaux en Espagne ou de la connexion de l’Office aux moyens de communication électronique autorisés, tout délai expirant durant cette période est prorogé jusqu’au premier jour ouvrable suivant la période d’interruption. La durée de cette période est déterminée par le président de l’Office et la prorogation est accordée à toutes les parties à la procédure.
En cas de circonstances exceptionnelles (grève, catastrophe naturelle, etc.) perturbant le fonctionnement de l’Office ou constituant un réel empêchement de communiquer avec l’extérieur, les délais peuvent être prorogés pour une durée déterminée par le président de l’Office.
4.1.3 Prorogation des délais
Les délais peuvent être prorogés par l’Office sur requête présentée par la partie concernée avant l’expiration du délai initial.
Dans les procédures ex parte devant l’Office, si une demande de prorogation est présentée avant l’expiration d’un délai, un délai supplémentaire est accordé pour une durée dépendant des circonstances de l’affaire, sans toutefois excéder six mois.
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Concernant les règles applicables à la prorogation des délais dans les procédures inter partes (c’est-à-dire où sont impliquées au moins deux parties, telles que les procédures d’opposition, en nullité et/ou en déchéance), voir les Directives, Partie C, Opposition, Section 1, Questions procédurales.
Sauf disposition contraire, prévue dans les règlements ou les paragraphes spécifiques des présentes Directives, en règle générale chaque première demande de prorogation reçue à temps est toujours accueillie, indépendamment de l’explication donnée par la partie formulant cette demande. Toutefois, toute demande ultérieure de prorogation du même délai est refusée, à moins que la partie formulant cette demande n’explique et ne justifie dûment les «circonstances exceptionnelles» (a) qui l’ont empêchée de réaliser la démarche requise pendant les deux délais précédents (c’est-à-dire le délai initial plus la première prorogation) et (b) qui empêchent toujours le demandeur de la réaliser, rendant ainsi nécessaire un délai supplémentaire.
Exemples de justifications acceptables:
«Des preuves sont recueillies par les moyens de diffusion de plusieurs États membres / auprès de l’ensemble de nos titulaires de licence / auprès de nos fournisseurs. À ce jour nous avons obtenu des documents de certains d’entre eux, mais en raison de la structure commerciale de l’entreprise (comme le montre le document en annexe), ce n’est que récemment que nous avons pu entrer en contact avec les autres.»
«Afin de montrer que la marque a acquis un caractère distinctif par l’usage, nous avons lancé des sondages sur le marché au début du délai (à la date X). Le travail sur le terrain n’a toutefois été achevé que récemment (comme le montrent les documents en annexe). Par conséquent, nous avons besoin d’une deuxième prorogation afin de terminer l’analyse et de préparer nos conclusions pour l’Office.»
Un «décès» est également réputé constituer une «circonstance exceptionnelle». Il en va de même pour les maladies graves si aucun remplacement raisonnable n’était possible.
Enfin, les «circonstances exceptionnelles» incluent également les situations de «force majeure». La «force majeure» est définie comme une catastrophe naturelle ou inévitable qui interrompt le cours prévu des événements, y compris les catastrophes naturelles, les guerres et le terrorisme, ainsi que les événements inévitables qui sont hors du contrôle de la partie.
Lorsqu’une demande de prorogation d’un délai prorogeable est présentée avant l’expiration dudit délai et n’est pas acceptée, au moins un jour est accordé à la partie concernée pour qu’elle puisse respecter le délai, même si la demande de prorogation est arrivée le dernier jour du délai.
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4.1.4 Poursuite de la procédure
Article 82 du RMC Communication no 06/05 du président de l’Office
Les expressions «continuation de la procédure» et «poursuite de la procédure» sont équivalentes.
L’article 82 du RMC prévoit la possibilité de poursuivre la procédure lorsque les délais n’ont pas été respectés, mais il exclut divers délais prévus par certains articles du RMC et du REMC. La communication n° 06/05 du président de l’Office du 16/09/2005 sur le rétablissement dans les droits en cas d’inobservation des délais indique qu’à quelques exceptions près, la plupart de ces exclusions sont suffisamment explicites.
Les délais exclus sont les suivants:
Ceux qui sont visés à l’article 81 du RMC, évitant une double possibilité de réparation pour les mêmes délais;
Ceux qui sont prévus à l’article 112 du RMC, c’est-à-dire le délai de trois mois pour présenter une requête en transformation et pour effectuer le paiement de la taxe y afférente;
Le délai d’opposition et le délai de paiement de la taxe d’opposition visés à l’article 41 du RMC ;
Ceux qui sont visés à l’article 42 du RMC, c’est-à-dire les délais que l’Office fixe aux parties pour présenter leurs observations dans la procédure d’opposition. Ceci couvre le délai alloué par la règle 19 du REMC à l’opposant pour étayer son opposition, le délai prévu par la règle 20, paragraphe 2, du REMC pour que le demandeur présente ses observations, le délai prévu par la règle 20, paragraphe 4, du REMC pour que l’opposant présente ses observations en réponse, ainsi que les délais pour tout échange ultérieur d’arguments, pour autant qu’il soit autorisé par l’Office (décision du 7 décembre 2011, R 2463/2010-1, «Pierre Robert/Pierre Robert»).
Conformément à la règle 50, paragraphe 1, deuxième phrase, du REMC, ces délais (ou les délais correspondants) restent exclus des procédures de deuxième instance devant les chambres de recours.
L’article 42 du RMC ne cite aucun des autres délais courant pendant la procédure d’opposition, qui ne sont dès lors pas exclus de la poursuite de la procédure. Par conséquent, l’Office permettra la poursuite de la procédure pour:
○ le délai prévu par l’article 119, paragraphe 6, du RMC et la règle 16, paragraphe 1, du REMC, pour la traduction de la notification d’opposition;
○ le délai prévu par la règle 17, paragraphe 4, du REMC, pour remédier aux irrégularités ayant une incidence sur la recevabilité de l’opposition;
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○ le délai prévu par la règle 22, paragraphe 1, du REMC, pour que le demandeur demande à l’opposant d’apporter la preuve de l’usage de sa marque antérieure;
○ le délai prévu par la règle 22, paragraphe 2, du REMC, pour que l’opposant fournisse la preuve de l’usage de sa marque antérieure;
○ le délai prévu par la règle 22, paragraphe 6, du REMC, pour traduire la preuve de l’usage.
Ceux qui sont prévus à l’article 25, paragraphe 3, à l’article 27, à l’article 29, paragraphe 1, à l’article 33, paragraphe 1, à l’article 36, paragraphe 2, à l’article 47, paragraphe 3, ainsi qu’à l’article 60, à l’article 62, à l’article 65, paragraphe 5, et à l’article 82, et les délais de revendication prévus par le REMC pour revendiquer, après le dépôt de la demande, la priorité au sens de l’article 30, la priorité d’exposition au sens de l'article 33 ou l’ancienneté au sens de l’article 34.
L’article 82 du RMC n’exclut aucun des délais s’appliquant aux procédures en déchéance ou en déclaration de nullité.
La partie demandant la poursuite de la procédure doit présenter sa requête, qui est subordonnée au paiement d’une taxe fixée par le RTMC, dans les deux mois suivant l’expiration du délai initial et achever l’acte omis avant que la demande de poursuite ne soit reçue.
Il ne peut pas y avoir de prorogation ou de poursuite du délai de deux mois. Il n’y a pas d’exigence essentielle à respecter comme lors d’une demande de restitutio in integrum.
4.1.5 Restitutio in integrum
Une partie à une procédure devant l’Office peut être rétablie dans ses droits (restitutio in integrum) si, bien qu’ayant fait preuve de toute la vigilance requise par les circonstances, elle n’a pas été en mesure de respecter un délai à l’égard de l’Office, si l’empêchement a eu pour conséquence directe, en vertu des dispositions des règlements, la perte d’un droit ou d’un moyen de recours.
Pour de plus amples informations, voir les Directives, Partie A, Dispositions générales, Section 8, Restitutio in Integrum.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 2
PRINCIPES GÉNÉRAUX À RESPECTER DANS LES PROCÉDURES
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Table des matières
1 Motivation adéquate.................................................................................. 3
2 Le droit d’être entendu.............................................................................. 3
3 Principes généraux du droit de l’Union européenne.............................. 4
4 Instruction .................................................................................................. 5 4.1 Mesures écrites .......................................................................................... 6 4.2 Audition.......................................................................................................6 4.3 Mesures d’instruction spécifiques............................................................ 6
4.3.1 Désignation d’experts par l’Office................................................................... 6 4.3.2 Déclarations sous serment ............................................................................. 7 4.3.3 Descentes sur les lieux................................................................................... 8
4.4 Frais de l’instruction .................................................................................. 8
5 Procédure orale ......................................................................................... 8 5.1 Ouverture de la procédure orale ............................................................... 9 5.2 Déroulement de la procédure orale........................................................... 9
5.3 Procès-verbal de l’instruction et de la procédure orale ....................... 10
6 Décisions.................................................................................................. 10 6.1 Contenu..................................................................................................... 10 6.2 Répartition des frais................................................................................. 11
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1 Motivation adéquate
Articles 75 à 78 et 85 du RMC
Les décisions de l’Office sont écrites et sont motivées. La raison est double: expliquer aux intéressés pourquoi la mesure a été prise pour qu’ils puissent défendre leurs droits et permettre au juge de l’Union européenne d’exercer son contrôle sur la légalité de la décision (arrêts du 12 juillet 2012, «Guddy», T-389/11, point 16 et du 22 mai 2012, «Penteo», T-585/10, point 37 et la jurisprudence citée).
Toutefois, l’Office ne viole pas l’obligation de motivation en ne prenant pas position sur tous les arguments invoqués par les parties.
Il lui suffit d’exposer les faits et les considérations juridiques revêtant une importance essentielle dans l’économie de la décision (voir, notamment, les arrêts du 18 janvier 2013, «Vibrator», T-137/12, points 41 et 42; du 20 février 2013, «Medinet», T-378/11, point 17;du 3 juillet 2013, «Neo», T-236/12, points 57 et 58; du 16 mai 2012, «Kindertraum», T-580/10, point 28; ou l’arrêt du 10 octobre 2012, «Bimbo Doughnuts», T-569/10, points 42 à 46, confirmé par l’arrêt du 8 mai 2014, C-591/12 P).
2 Le droit d’être entendu
En vertu du principe général de protection des droits de la défense, une personne dont les intérêts sont affectés par une décision des autorités publiques doit être mise en mesure de faire connaître son point de vue. Par conséquent, dans toutes les procédures devant l’Office, il est toujours donné aux parties la possibilité de prendre position et de soulever leurs moyens de défense.
Les décisions ne peuvent être fondées que sur des motifs ou des preuves au sujet desquels les parties ont pu prendre position. Pour que les droits de la défense puissent être exercés, une communication doit donc être reçue (arrêt du 25 octobre 2012, «Miura», T-191/11, point 25).
Le droit d’être entendu couvre toutes les questions de fait ou de droit, ainsi que les preuves qui servent de fondement à la décision. Cependant, le droit d’être entendu ne s’applique pas à l’avis final qui va être adopté. Par conséquent, l’Office n’est pas tenu d’informer les parties de son avis juridique avant de prononcer une décision et de leur laisser la possibilité de soumettre leurs observations sur cet avis, voire de soumettre des preuves supplémentaires (voir, notamment, les arrêts du 14 juin 2012, «Colour per se», T-293/10, point 46 in fine; du 8 mars 2012, «Biodanza», T-298/10, point 101; et du 20 mars 2013, «Caffè Kimbo», T-277/12, points 45 et 46).
L’Office examinera les faits de la procédure de sa propre initiative, même si dans les procédures concernant des motifs relatifs de refus, il limitera son examen aux faits, preuves et arguments présentés par les parties (cela s’applique également aux procédures de nullité).
Cette limitation n’empêche pas l’Office de prendre en considération, en plus des faits expressément invoqués par les parties, des faits notoires, c’est-à-dire des faits qui sont susceptibles d’être connus par toute personne ou qui peuvent être connus par des
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sources généralement accessibles, ou encore qui résultent de l’expérience pratique généralement acquise de la commercialisation de produits de large consommation, lesquels faits sont susceptibles d’être connus de toute personne et sont notamment connus des consommateurs de ces produits. Par conséquent, l’Office peut utiliser des faits notoires pour fonder son raisonnement.
L’Office n’est pas tenu de démontrer l’exactitude de ces faits notoires et, par conséquent, il n’est pas obligé de donner des exemples d’une telle expérience pratique; il incombe à la partie concernée de produire des preuves pour les réfuter (voir, notamment, l’arrêt du 20 mars 2013, «Caffè Kimbo», T-277/12, point 46; l’arrêt du 11 juillet 2013, «Rote Schnürsenkelenden», T-208/12, point 24; l’arrêt du 21 février 2013, «Bioderma», T-427/11, points 19 à 22; l’arrêt du 8 février 2013, «Medigym», T-33/12, points 20 et 25; l’arrêt du 7 décembre 2012, «Quadratum», T-42/09, point 73; et l’arrêt du 19 septembre 2012, «Stoffmuster», T-231/11, point 51).
Cependant, dans les procédures ex parte, si l’Office recueille d’office des éléments de fait qui ne sont pas notoires et qui sont destinés à servir de fondement à sa décision, il doit obligatoirement les communiquer à la partie afin que celle-ci puisse faire connaître ses observations.
Il ne sera pas tenu compte des pièces produites ou des allégations présentées après l’expiration du délai imparti par l’Office, celles-ci étant en principe considérées comme tardives. Pour plus de détails, voir les Directives, partie C, Opposition, section 1, Questions de procédure, paragraphe 4.5.1, Éléments supplémentaires à l’appui de la preuve de l’usage, et les Directives, partie C, Opposition, section 6, La preuve de l’usage, paragraphe 3.3.1, Le délai imparti pour apporter la preuve de l’usage.
Un changement de circonstances survenant en cours de procédure sera également pris en considération. Par exemple, si un droit antérieur sur lequel se fonde une opposition s’éteint au cours de la procédure d’opposition (parce qu’il n’est pas renouvelé ou parce qu’il est déclaré nul, par exemple), cette circonstance sera toujours prise en considération.
3 Principes généraux du droit de l’Union européenne
L’Office est tenu de respecter les principes généraux du droit de l’Union européenne, notamment les principes d’égalité de traitement et de bonne administration (voir, notamment, l’arrêt du 24 janvier 2012, «Visual Map», T-260/08; l’arrêt du 23 janvier 2014, «Care to care», T-68/13, point 51; et l’arrêt du 10 mars 2011, «1000», C-51/10 P, point 73).
Pour des raisons de sécurité juridique et de bonne administration, l’examen de toute demande d’enregistrement doit être strict et complet afin d’éviter que des marques ne soient enregistrées de manière indue. Cet examen doit avoir lieu dans chaque cas concret.
La légalité des décisions de l’Office doit être appréciée uniquement sur la base des règlements de l’Union, tels qu’interprétés par le juge de l’Union européenne. En conséquence, l’Office n’est pas lié par sa pratique décisionnelle antérieure, ni par une décision intervenue au niveau d’un État membre, voire d’un pays tiers, admettant le caractère enregistrable du signe en cause en tant que marque nationale. Tel est le cas même si une telle décision a été prise dans un pays appartenant à la zone linguistique
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dans laquelle le signe verbal en cause trouve son origine (arrêt du 16 mai 2013, «Equipment», T-356/11, point 7).
Cependant, eu égard aux principes d’égalité de traitement et de bonne administration, l’Office prendra en considération les décisions déjà prises sur des demandes similaires et s’interroger avec une attention particulière sur le point de savoir s’il y a lieu ou non de décider dans le même sens (arrêt du 10 mars 2011, «1000», C-51/10, points 74-75; arrêt du 27 février 2014, «LIDL express», T-225/12, point 56; arrêt du 23 janvier 2014, «Care to care», T-68/13, point 51; et arrêt du 12 décembre 2013, «Oval», T-156/12, point 28).
En outre, les principes d’égalité de traitement et de bonne administration doivent se concilier avec le respect du principe de légalité, selon lequel nul ne saurait invoquer, à son profit, une illégalité commise dans le cadre d’une autre procédure (arrêt du 23 janvier 2014, «Care to care», T-68/13, point 51; arrêt du 12 décembre 2013, «Oval», T-156/12, point 29; arrêt du 2 mai 2012, «UniversalPHOLED», T-435/11, point 38; et arrêt du 10 mars 2011, «1000», C-51/10, points 76 et 77).
4 Instruction
Articles 77 et 78 du RMC Règles 56 à60 du REMC Décision n° EX-99-1 telle que modifiée par la Décision n° EX-03-2 du 20 janvier 2003
Des mesures d’instruction peuvent être prises dans toutes les procédures devant l’Office. Elles sont énumérées à l’article 78 du RMC et à la règle 57 du REMC, sans que leur liste ne soit exhaustive.
Il s’agit des mesures suivantes:
l’audition des parties, la demande de renseignements, la production de documents et d’échantillons, l’audition de témoins, l’expertise, les déclarations écrites faites sous serment ou solennellement, ou qui ont un effet
équivalent d’après la législation de l’État dans lequel elles sont faites, la descente sur les lieux.
Certaines de ces mesures sont plus fréquentes, telles que la demande de renseignements, les déclarations écrites et, en particulier, la production de documents et d’échantillons. Les autres, telles que l’audition des parties, de témoins ou d’experts, la descente sur les lieux, etc. ne sont utilisées qu’à titre exceptionnel.
L’Office est le seul juge de l’opportunité de ces mesures. Il ne les prend que lorsqu’il les estime nécessaires à l’instruction du dossier.
Si l’Office refuse une demande de mesure d’instruction, un recours ne peut être formé qu’avec le recours contre la décision finale.
La procédure à mettre en œuvre par l’Office varie selon la nature de la mesure d’instruction envisagée.
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4.1 Mesures écrites
L’Office, dans le cadre des mesures d’instruction, se limite, dans la plupart des cas, à des mesures écrites. Celles-ci sont les moins onéreuses, les plus simples et les plus souples à mettre en œuvre.
L’Office privilégie à ce titre la production de documents et d’échantillons. Mais les mesures écrites possibles comprennent également non seulement la demande de renseignements, ou les déclarations écrites faites sous serment ou solennellement ou qui ont un effet équivalent d’après la législation de l’État dans lequel elles sont faites, mais aussi des expertises qui peuvent se limiter à la seule remise d’un rapport écrit.
Aucune formalité ni procédure particulière n’est prévue par la réglementation. Ce sont donc les règles générales de procédure de l’Office qui s’appliquent.
Notamment, tous les renseignements, documents ou échantillons fournis par une partie sont communiqués aux autres parties dans les plus brefs délais et l’Office peut impartir à ces dernières un délai, en principe de deux mois, pour y répondre.
La décision de l’Office ne peut être fondée que sur des motifs sur lesquels les deux parties ont pu prendre position.
Pour plus d’informations sur la procédure orale, voir le paragraphe 5 ci-dessous.
4.2 Audition
Il s’agit de mesures qui prennent la forme d’une procédure orale, telle que l’audition d’une partie, d’un témoin ou d’un expert.
L’Office ne décide qu’à titre exceptionnel de recourir à une procédure orale, notamment en raison de la lourdeur procédurale susceptible de prolonger la procédure et du coût qui devra être supporté, à terme, par la partie qui succombe dans le cas d’une procédure inter partes, voire, dans certains cas, par les deux parties.
Lorsque l’Office invite une partie à déposer oralement, il doit en informer les autres parties, qui peuvent alors intervenir.
De la même manière, lorsque l’Office invite un expert ou un témoin à comparaître devant lui pour une audition, il en informe les parties qui ont le droit d’être présentes et de poser des questions à la personne entendue.
4.3 Mesures d’instruction spécifiques
4.3.1 Désignation d’experts par l’Office
Ce n’est qu’en dernier ressort que l’expertise est utilisée car elle entraîne des frais importants et la prolongation de la procédure.
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L’Office décide de l’opportunité d’une expertise et désigne les experts. Cependant, il ne tient pas de liste d’experts, car il a recours à des experts à titre exceptionnel uniquement.
Le mandat de l’expert doit indiquer:
la description précise de sa mission, le délai qui lui est imparti pour soumettre son rapport d’expertise, les noms des parties à la procédure, le détail des frais qui seront remboursés par l’Office.
Dès réception du rapport d’expertise, l’Office en remet un exemplaire aux parties.
Si l’Office estime le rapport suffisant, et si les parties acceptent cette forme, celui-ci n’est, en principe, utilisé que sous sa forme écrite.
La présentation d’un rapport oral ou l’audition de l’expert reste donc une option laissée à l’appréciation de l’Office.
Les parties peuvent récuser un expert au motif de son incompétence, au motif d’un intérêt personnel, de son intervention antérieure dans le règlement de l’affaire ou parce qu’il est suspecté de partialité. Aucune récusation ne peut être fondée sur la nationalité de l’expert désigné. Si les parties récusent l’expert, l’Office statue sur la récusation. Les motifs pour la récusation d’un expert sont les mêmes que pour la révocation d’un examinateur ou d’un membre d’une chambre de recours en vertu de l’article 137 du RMC.
4.3.2 Déclarations sous serment
Les déclarations écrites faites sous serment ou solennellement, ou qui ont un effet équivalent d’après la législation de l’État dans lequel elles sont faites sont également admissibles en tant que preuves, à condition d’être communiquées par une partie.
Pour qu’une déclaration soit qualifiée d’assermentée ou de solennelle, les parties doivent avoir compris qu’une fausse déclaration constitue un délit, selon la législation de l’État membre dans lequel le document est rédigé. Lorsque tel n’est pas le cas, le document sera simplement considéré au même titre que n’importe quel autre document ou déclaration écrite (arrêt du 28 mars 2012, «Outburst», T-214/08, point 32 et la jurisprudence citée).
La force probante d’une déclaration écrite est relative (arrêt du 28 mars 2012, «OUTBURST», T-214/08, point 33). Pour apprécier la valeur probante d’un tel document, l’Office vérifiera en premier lieu la vraisemblance de l’information qui y est contenue. Il tiendra ensuite compte, notamment, de l’origine du document, des circonstances de son élaboration, de son destinataire et se demandera si, d’après son contenu, il semble sensé et fiable (arrêt du 7 juin 2005, «Salvita», T-303/03, point 42 et la jurisprudence citée). Les déclarations écrites contenant des informations concrètes et détaillées et/ou qui sont étayées par d’autres preuves sont pourvues d’une force probante plus importante que les déclarations très générales et rédigées de manière abstraite.
Le simple fait que les déclarations écrites provenant de tiers ont été élaborées à partir d’un modèle préparé par la ou les parties intéressées n’est pas susceptible d’affecter à
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lui-seul la fiabilité et la crédibilité desdits documents et de mettre en cause la valeur probante de tels documents puisque les signataires des documents en cause attestent le contenu de ceux-ci (arrêt du 16 septembre 2013, «Avery Dennison», T-200/10, point 73).
4.3.3 Descentes sur les lieux
L’Office n’organise une descente sur les lieux que dans des cas très exceptionnels. S’il décide d’organiser une descente, il énonce, comme dans n’importe quelle autre décision de l’Office, la mesure d’instruction envisagée (en l’occurrence une descente sur les lieux), les faits qu’il souhaite prouver, ainsi que la date, l’heure et le lieu de la descente sur les lieux.
La date fixée pour la descente sur les lieux doit laisser suffisamment de temps à la partie intéressée pour la préparer. Si cette descente sur les lieux ne peut pas avoir lieu pour une raison quelconque, la procédure se poursuivra sur la base des preuves figurant au dossier.
4.4 Frais de l’instruction
L’Office peut subordonner l’exécution d’une mesure d’instruction au dépôt d’une provision par la partie qui l’a demandée. L’Office en fixe le montant, sur la base d’une estimation des frais.
Les témoins et les experts qui ont été convoqués ou qui ont été entendus par l’Office ont droit à un remboursement de leurs frais de déplacement et de séjour, y compris une avance. Ils ont en outre droit à une indemnité pour compenser leur manque à gagner et à une rémunération pour leurs travaux.
Les montants remboursés et les avances sur frais sont fixés par le président de l’Office et publiés au Journal officiel de l’Office. Pour de plus amples informations, voir la décision n° EX-99-1 telle que modifiée par la décision n° EX-03-2 du 20 janvier 2003.
Les frais sont imputables à l’Office lorsque celui-ci décide de prendre une mesure d’instruction nécessitant l’audition de témoins ou d’experts. Si, en revanche, l’audition a été demandée par une partie, les frais lui sont imputables, sous réserve de la décision relative à la répartition des frais s’il s’agit d’une procédure inter partes.
5 Procédure orale
Articles 77 et 78 du RMC Règles 56 à 60
L’article 77 du RMC dispose que l’Office peut recourir à la procédure orale.
Un contact non officiel tel qu’une conversation téléphonique ne constitue pas une procédure orale au sens de l’article 77 du RMC.
L’Office recourt à la procédure orale de sa propre initiative ou à la demande d’une des parties à la procédure seulement lorsqu’il le juge absolument nécessaire, et cette
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décision est laissée à sa discrétion (arrêt du 20 février 2013, «Medinet», T-378/11, point 72 et la jurisprudence citée). Dans la grande majorité des cas, la possibilité pour les parties de présenter leurs observations par écrit s’avère suffisante..
5.1 Ouverture de la procédure orale
Lorsque l’Office décide de recourir à une procédure orale et de convoquer les parties, le délai de comparution ne peut être inférieur à un mois, à moins que les parties ne conviennent d’un délai plus court.
Le but de toute procédure orale étant d’élucider toutes les questions restant à trancher avant la prise de décision définitive, il convient que l’Office, dans sa convocation, attire l’attention des parties sur les points qui doivent, à son avis, être discutés pour lui permettre de statuer.
Lorsque l’Office juge nécessaire d’entendre des parties, des témoins ou des experts, il prend à cet effet une décision qui indique la mesure d’instruction envisagée, les faits pertinents à prouver ainsi que la date, l’heure et le lieu de l’audition. Le délai de comparution est d’un mois au minimum, à moins que les parties concernées ne conviennent d’un délai plus court. La convocation doit contenir un résumé de cette décision et indiquer les noms des parties à la procédure et le détail des frais, le cas échéant, que les témoins ou experts peuvent se voir rembourser par l’Office.
Si nécessaire et pour faciliter l’audition, l’Office peut inviter les parties à présenter des observations écrites ou à produire des preuves, préalablement à l’audition. Le délai que fixe l’Office pour la réception de ces observations tient compte du fait que celles-ci doivent lui parvenir dans un délai suffisamment raisonnable pour qu’elles puissent être transmises aux autres parties.
Les parties peuvent également produire d’elles-mêmes des preuves à l’appui de leurs arguments. Toutefois, dans le cas où ces preuves auraient dû être produites à un stade antérieur de la procédure, l’Office est seul juge de leur recevabilité, en vue de respecter, le cas échéant, le principe du contradictoire.
5.2 Déroulement de la procédure orale
La procédure orale devant les examinateurs, la division d’opposition et le département en charge du Registre n’est pas publique.
La procédure orale, y compris le prononcé de la décision, est publique devant la division d’annulation et les chambres de recours, sauf décision contraire de l’instance saisie au cas où la publicité pourrait présenter, notamment pour une partie à la procédure, des inconvénients graves et injustifiés.
Si une partie régulièrement convoquée à une procédure orale devant l’Office ne comparaît pas, la procédure peut être poursuivie en son absence.
Lorsque l’Office invite une partie à déposer oralement, il doit en informer les autres parties, qui peuvent alors intervenir.
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De la même manière, lorsque l’Office invite un expert ou un témoin à comparaître devant lui pour une audition, il en informe les parties qui ont le droit d’être présentes et de poser des questions à la personne entendue.
À l’issue de la procédure orale, l’Office accorde aux parties la possibilité de présenter leurs derniers mémoires.
5.3 Procès-verbal de l’instruction et de la procédure orale
Règle 60 du REMC
Les procès-verbaux de l’instruction et de la procédure orale contiennent l’essentiel de l’instruction et de la procédure orale. En particulier, ils ne contiennent pas in extenso les déclarations faites, et ne doivent pas être soumis pour approbation. Toutes les déclarations faites par les experts ou les témoins sont néanmoins enregistrées, afin qu’elles puissent être vérifiées à des stades de procédure ultérieurs. Les parties reçoivent copie du procès-verbal, mais non des déclarations enregistrées.
6 Décisions
6.1 Contenu
Article 75 du RMC Règle 55 du REMC
Les décisions de l’Office sont motivées de manière à permettre l’examen de leur légalité lors d’un recours ou devant le Tribunal ou la Cour de justice.
La décision porte sur le point pertinent soulevé par les parties. Dans le cas notamment où il existe des conclusions différentes pour certains des produits et des services couverts par la demande ou l’enregistrement de la marque communautaire visée, la décision établit clairement quels sont les produits et les services qui sont refusés, et ceux qui ne le sont pas.
Le nom de la ou des personnes qui ont rendu la décision figure au bas de celle-ci (règle 55 du REMC).
Une mention est ajoutée en fin de décision pour indiquer la possibilité d’un recours.
L’omission de cette mention n’entache pas la légalité de la décision et n’affecte pas le délai prévu pour introduire le recours.
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6.2 Répartition des frais
Article 82, paragraphe 5, et article 85 du RMC Règles 51 et 94 du REMC
Dans la procédure ex parte, aucune décision n’est prise sur les frais ou leur répartition. Les taxes versées à l’Office ne sont pas remboursées (exceptions: la règle 51 du REMC, qui prévoit le remboursement de la taxe de recours dans certains cas, et l’article 82, paragraphe 5, du RMC, qui prévoit le remboursement de la taxe en cas de rejet d’une requête en poursuite de procédure).
La répartition des frais et la détermination des frais est arrêtée dans la décision rendue sur l’opposition, dans la décision sur la demande en déchéance ou en nullité (y compris dans la décision sur le recours et dans les procédures devant le Tribunal ou la Cour de justice). Les «frais» comprennent les frais exposés par les parties à la procédure, à savoir principalement (i) des frais de représentation (bien qu’ils soient plafonnés à un niveau relativement bas) et les frais exposés au titre de la participation aux auditions; les «frais de représentation» désignent exclusivement les frais liés à la représentation professionnelle au sens de l’article 93 du RMC, et n’incluent donc pas le cas de la représentation par un employé (même si ce dernier appartient à une autre entreprise qui est économiquement liée); (ii) la taxe d’opposition ou la taxe pour la demande en déchéance ou en nullité payée par l’opposant ou l’autre partie.
On entend par «répartition des frais» le fait que l’Office décide si, et dans quelle mesure, les parties doivent se rembourser mutuellement ces montants. Cette répartition ne concerne pas la relation avec l’Office (taxes payées, frais internes de l’Office).
Ainsi, dans une décision rendue dans le cadre d’une procédure inter partes, l’Office statue sur la répartition des frais. La partie perdante supporte les taxes exposées par l’autre partie ainsi que les frais exposés par celle-ci indispensables aux fins des procédures. Si les deux parties succombent respectivement sur un ou plusieurs chefs, ou dans la mesure où l’équité l’exige, l’Office peut décider d’une répartition différente des frais.
La décision fixe le montant des frais à payer par la/les partie(s) perdante(s). Il n’est pas nécessaire à cet effet de prouver que ces frais ont été effectivement exposés.
Cette partie de la décision forme titre exécutoire dans le cadre d’une procédure simplifiée, dans tous les États membres de l’UE.
En cas de retrait ou de renonciation à la demande de marque communautaire ou à la marque communautaire contestée, ou en cas de retrait de l’opposition ou de la demande en déchéance ou en nullité, l’Office ne statue pas sur le fond de l’affaire, mais rend normalement une décision sur les frais. La partie qui met fin à la procédure supporte les taxes et les frais exposés par l’autre partie. Lorsque l’affaire est classée pour d’autres motifs, l’Office règle librement les frais. La décision sur les frais ne se fonde en aucun cas sur les hypothèses quant à la partie qui aurait eu gain de cause si une décision sur le fond avait été nécessaire. Par ailleurs, dans un délai d’un mois à compter de la notification de la décision fixant le montant des frais, la partie intéressée peut présenter une requête visant à en obtenir la réformation. Cette requête doit être motivée et accompagnée de la taxe correspondante (article 2, paragraphe 30, du RTMC).
Langue de la procédure
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DIRECTIVES RELATIVES À L’EXAMEN DES MARQUES COMMUNAUTAIRES
PRATIQUÉ À L’OFFICE DE L’HARMONISATION DANS LE MARCHÉ
INTÉRIEUR (MARQUES, DESSINS ET MODÈLES) SUR LES MARQUES
COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 4
LANGUE DE LA PROCÉDURE
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Table des matières
1 Introduction ................................................................................................ 3 2 Du dépôt de la demande à l’enregistrement (à l’exception de
l’opposition)................................................................................................ 3 2.1 Demande d’enregistrement ............................................................................ 3 2.2 Autres requêtes .............................................................................................. 4
3 Après l’enregistrement (à l’exception de la déchéance et de la nullité) .4 4 Opposition, déchéance et nullité............................................................... 4 5 Caractère immuable des règles linguistiques ..........................................5 6 Traductions et attestations relatives aux traductions ............................. 5 7 Non-conformité au régime linguistique .................................................... 5
Langue de la procédure
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1 Introduction
Article 119 du RMC Règle 95, règle 96 et règle 98 du REMC Communication n° 4/04 du président de l’Office
Les langues de l’Office sont au nombre de cinq, à savoir l’allemand, l’anglais, l’espagnol, le français et l’italien. Les demandes de marque communautaire peuvent toutefois être déposées dans n’importe quelle langue officielle de l’UE. Le RMC fixe les règles de détermination et d’utilisation de la langue de procédure. Ces règles peuvent varier d’une procédure à l’autre, en particulier selon qu’il s’agit d’une procédure ex parte ou d’une procédure inter partes.
La présente section traite exclusivement des dispositions horizontales communes à toutes les procédures. Les exceptions liées à certains types de procédures sont traitées dans les sections correspondantes des Directives.
2 Du dépôt de la demande à l’enregistrement (à l’exception de l’opposition)
2.1 Demande d’enregistrement
Une demande d’enregistrement d’une marque communautaire peut être déposée dans n’importe quelle langue officielle de l’UE.
Une deuxième langue doit être indiquée parmi les cinq langues de l’Office.
Au cours de la procédure, le demandeur peut utiliser:
la première langue, s’il s’agit d’une langue de l’Office; ou
la deuxième langue, à sa convenance, lorsque la première langue n’est pas une langue de l’Office.
L’Office utilise:
uniquement la première langue, s’il s’agit d’une langue de l’Office;
la première langue, s’il ne s’agit pas d’une langue de l’Office, conformément à l’arrêt «KIK» rendu par la Cour de justice de l’Union européenne (arrêt du 9/9/2003, C-361/01 P), sauf si le demandeur a donné son accord écrit à l’Office pour utiliser la deuxième langue, auquel cas l’Office agit en conséquence. L’accord concernant l’usage de la deuxième langue doit être donné séparément pour chaque dossier; il ne peut être donné pour l’ensemble des dossiers en cours ou futurs.
Ce régime linguistique s’applique tout au long de la procédure de demande et d’examen jusqu’à l’enregistrement, hormis en ce qui concerne les oppositions et les requêtes accessoires (voir le paragraphe suivant).
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2.2 Autres requêtes
Règle 95, point a), du REMC
Durant la période qui s’écoule entre le dépôt et l’enregistrement, toute requête, demande ou déclaration ne portant pas sur l’examen de la demande proprement dite, mais donnant lieu à une procédure accessoire (inspection publique, enregistrement d’un transfert ou d’une licence, requête en transformation, déclaration de division), peut être soumise dans la première ou la deuxième langue, à la convenance du demandeur de marque communautaire ou du tiers. La langue choisie devient alors la langue de procédure pour ces procédures accessoires. Ce régime linguistique est applicable que la première langue soit, ou non, une langue de l’Office.
3 Après l’enregistrement (à l’exception de la déchéance et de la nullité)
Règle 95, point b), du REMC
Toute requête, demande, déclaration de division ou renonciation, à l’exception d’une demande en déchéance ou en nullité, présentée après l’enregistrement de la marque communautaire, doit être soumise dans l’une des cinq langues de l’Office.
Exemple: le titulaire d’une marque communautaire peut, après l’enregistrement de cette dernière, déposer une demande d’enregistrement de licence en anglais et, quelques semaines plus tard, une demande de renouvellement en italien.
4 Opposition, déchéance et nullité
Règle 16 et règle 38, paragraphe 1, du REMC
Un acte d’opposition ou une demande en déchéance ou en nullité peut être déposé(e):
dans la première ou la deuxième langue de la demande de marque communautaire, à la convenance de l’opposant/du demandeur en déchéance ou en nullité, si la première langue est l’une des cinq langues de l’Office;
dans la deuxième langue, si la première langue n’est pas une langue de l’Office.
Cette langue devient la langue de la procédure d’opposition ou de la procédure en déchéance ou en nullité, sauf si les parties conviennent d’une autre langue (parmi les langues officielles de l’UE).
Un acte d’opposition ou une demande en déchéance ou en nullité peut également être déposé(e) dans l’une des autres langues de l’Office, à condition que, dans un délai d’un mois à compter de l’expiration du délai d’opposition ou de la date de dépôt de la demande en déchéance ou en nullité, l’opposant/le demandeur en déchéance ou en nullité produise une traduction dans une des langues dont l’utilisation est autorisée comme langue de procédure.
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5 Caractère immuable des règles linguistiques
Les règlements permettent certains choix parmi les langues disponibles au cours de la procédure (voir plus haut) et autorisent, dans certains délais, le choix d’une autre langue pour les procédures d’opposition et les procédures en déchéance ou en nullité. Toutefois, hormis ces exceptions, les règles linguistiques sont immuables. La première et la deuxième langue ne peuvent, en particulier, être modifiées en cours de procédure.
6 Traductions et attestations relatives aux traductions
Règle 98 du REMC
La règle générale est la suivante: lorsque la traduction d’un document est exigée, elle doit parvenir à l’Office dans le délai fixé pour le dépôt du document original. Ce principe est d’application sauf dérogation expresse prévue dans les règlements.
La traduction doit identifier le document auquel elle se réfère et reproduire la structure et le contenu du document original. L’Office peut exiger la production d’une traduction certifiée dans un délai spécifique, mais n’exerce ce droit que s’il a des raisons de douter de la fidélité de la traduction.
7 Non-conformité au régime linguistique
Dans le cas où le régime linguistique n’est pas respecté, l’Office enverra un courrier d’irrégularité. S’il n’est pas remédié à l’irrégularité, la demande ou la requête sera rejetée.
Pour de plus amples informations sur le régime linguistique de procédures spécifiques, les parties correspondantes des Directives peuvent être consultées.
Révocation de décisions, suppression d’inscriptions dans le registre et correction d’erreurs
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 6
RÉVOCATION DE DÉCISIONS, SUPPRESSION D’INSCRIPTIONS DANS LE REGISTRE ET CORRECTION D’ERREURS
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Table des matières
1 Révocation de décisions et suppression d’inscriptions dans le registre ....................................................................................................... 3 1.1 Erreur de procédure manifeste imputable à l’Office ...................... 3 1.2 Qui statue sur les demandes de révocation/suppression?........... 5 1.3 Aspects procéduraux ....................................................................... 5
1.3.1 Évaluation.......................................................................................... 5 1.3.2 Distinction selon qu’il y a une ou deux parties ...................................6
1.3.2.1 Procédures pour une partie.............................................................. 6 1.3.2.2 Procédure pour plus d’une partie ..................................................... 7
2 Correction d’erreurs dans les décisions et autres notifications ........... 8 2.1 Correction d’erreurs dans les décisions......................................... 8
2.1.1 Remarques générales .......................................................................8 2.1.2 Aspects procéduraux.........................................................................9
2.1.2.1 Délai ................................................................................................. 9 2.1.2.2 Évaluation......................................................................................... 9 2.1.2.3 Procédure......................................................................................... 9
2.2 Correction d’erreurs figurant dans les notifications autres que les décisions.................................................................................... 10
3 Rectification d’erreurs figurant dans les publications et correction d’erreurs figurant au registre ou dans l’enregistrement publié .......... 10
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1 Révocation de décisions et suppression d’inscriptions dans le registre
Article 80 du RMC
Sous certaines conditions, une décision prise par l’Office peut être révoquée ou une inscription dans le registre supprimée. La présente partie des directives concerne les aspects pratiques de la révocation/suppression conformément à l’article 80 du RMC; elle ne s’applique pas aux dessins ou modèles communautaires enregistrés.
La procédure de révocation peut être engagée soit par une partie à la procédure, soit par l’Office de sa propre initiative.
Une décision ne peut être révoquée que par une autre décision. Il en va de même pour les suppressions d’inscriptions dans le registre.
1.1 Erreur de procédure manifeste imputable à l’Office
Une décision ne peut être révoquée ou une inscription dans le registre supprimée que lorsque cette décision ou inscription est entachée d’une erreur de procédure manifeste imputable à l’Office.
Une décision/inscription est entachée d’une erreur de procédure manifeste lorsqu’une erreur a été commise dans la procédure (habituellement en cas d’omission d’une étape fondamentale de la procédure) ou lorsque la décision est adoptée/l’inscription effectuée sans tenir compte d’une action de procédure entreprise par les parties. Il convient de distinguer les erreurs de procédure des erreurs sur le fond, qui ne peuvent pas donner lieu à une révocation. La décision/l’inscription est erronée d’un point de vue procédural (c’est-à-dire qu’elle est entachée d’une erreur de procédure manifeste) si la procédure prévue par les règlements n’a pas été correctement appliquée.
La liste ci-après est une liste non exhaustive d’exemples d’erreurs de procédure manifestes nécessitant une révocation.
La marque communautaire est enregistrée en dépit du fait qu’elle avait antérieurement fait l’objet d’un retrait.
L’opposition a été jugée recevable même si certaines conditions de recevabilité n’étaient pas satisfaites (voir l’arrêt de la CJUE du 18 octobre 2012, «REDTUBE», C-402/11 P).
La marque communautaire est enregistrée en dépit d’une irrégularité dans le paiement de la taxe de dépôt.
La marque communautaire est enregistrée alors qu’elle a fait l’objet d’une opposition à laquelle il a été fait droit.
Le rejet de la marque communautaire sur la base de motifs absolus est notifié avant l’expiration du délai accordé au demandeur pour adresser des observations en réponse à l’objection, ou sans tenir compte des observations que le demandeur a déposées dans le délai imparti. (Lorsque le demandeur a répondu dans le délai prescrit, l’examinateur peut poursuivre le traitement de la
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demande, par exemple en rendant une décision, et n’est pas tenu d’attendre l’expiration du délai fixé dans la lettre d’objection.)
La marque communautaire est rejetée sur la base de motifs absolus, sans tenir compte de la demande valable du demandeur tendant à se voir accorder l’opportunité de produire des éléments de preuve du caractère distinctif acquis par l’usage (voir l’article 7, paragraphe 3, du RMC).
La marque communautaire est rejetée sur la base de motifs absolus, sans tenir compte des éléments de preuve dûment produits du caractère distinctif acquis par l’usage.
La marque communautaire est rejetée par la division d’opposition, sans tenir compte d’une demande de preuve de l’usage non traitée ou sans examiner la question de la preuve de l’usage.
La marque communautaire est enregistrée alors qu’une procédure d’opposition est pendante.
L’opposition est rejetée sur le fondement d’un défaut de preuve de l’usage, mais ○ aucun délai n’a été expressément notifié à l’opposant pour produire des
éléments de preuve de l’usage; ○ des éléments de preuve de l’usage ont été déposés dans le délai prescrit et
ont été ignorés.
La décision d’opposition a été rendue alors que la procédure était suspendue ou interrompue ou, de manière plus générale, alors qu’un délai accordé à l’une des parties n’avait pas encore expiré.
Toute violation du droit d’être entendu (observations non transmises à l’autre partie alors que cette partie, conformément au règlement ou à la pratique de l’Office, aurait dû se voir accorder un délai pour formuler une réponse).
Lors de la clôture d’un dossier en raison d’une limitation de la demande de marque communautaire contestée ou d’un retrait, l’Office a rendu une décision sur les frais, en ignorant un accord relatif aux frais conclu entre les deux parties qui figurait au dossier à la date concernée.
Un transfert de propriété a été inscrit au registre en l’absence de preuves suffisantes du transfert.
La question de savoir si ces erreurs de procédure ont résulté d’une erreur humaine ou du dysfonctionnement d’un outil informatique est sans importance.
L’effet de la révocation d’une décision ou de la suppression d’une inscription dans le registre est que la décision ou l’inscription est réputée n’avoir jamais existé. Le dossier est renvoyé à l’étape de la procédure à laquelle il se trouvait avant que la décision erronée soit adoptée ou que l’inscription erronée soit portée au registre.
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1.2 Qui statue sur les demandes de révocation/suppression?
Les décisions de révocation/suppression sont adoptées par le département ou l’unité qui a procédé à l’inscription ou qui a rendu la décision et sont susceptibles de recours, conformément à l’article 58, paragraphe 2, du RMC.
1.3 Aspects procéduraux
Article 80 du RMC
1.3.1 Évaluation
Les examinateurs doivent vérifier, premièrement, si la décision ou l’inscription est entachée d’une erreur de procédure manifeste, deuxièmement, si plus de six mois se sont écoulés depuis la notification de la décision ou de l’inscription dans le registre et, troisièmement, si un recours a été formé contre la décision/l’inscription au registre.
(a) Évaluation: il convient de vérifier si la décision ou l’inscription est entachée d’une erreur de procédure manifeste. Pour plus d’informations, voir ci-dessus au paragraphe 1.1.
(b) Six mois: chaque fois qu’un examinateur constate une erreur de procédure manifeste, il est indispensable d’établir si plus de six mois se sont écoulés depuis la notification de la décision ou de l’inscription dans le registre. Aucune révocation/suppression n’est possible si plus de six mois se sont écoulés (voir l’article 80, paragraphe 2, du RMC).
L’article 80 du RMC prévoit que la suppression ou la révocation «sont ordonnées» dans un délai de six mois à partir de la date d’inscription au registre ou de l’adoption de la décision. Ceci signifie que même si le délai a expiré, il est procédé à la suppression d’une inscription ou à la révocation d’une décision si l’Office est informé par écrit du fait que cette inscription ou décision est entachée d’une erreur manifeste de procédure dans un délai de six mois à partir de la notification de cette inscription/décision. Ceci signifie également qu’une inscription peut être supprimée ou une décision révoquée après l’expiration de la période de six mois si l’Office adresse une notification engageant la procédure de suppression ou de révocation dans un délai de six mois à partir de la notification de cette inscription/décision.
(c) Décision/inscription faisant l’objet d’un recours pendant: avant d’adresser un courrier notifiant aux parties son intention de supprimer une inscription ou de révoquer une décision, et avant de procéder effectivement à cette suppression/révocation, l’Office doit vérifier si un recours a été formé à l’encontre de la décision ou de l’inscription. Une décision ou une inscription ne peut pas être révoquée/supprimée en cas de recours pendant devant les chambres de recours (voir la décision du 28 avril 2009, «BEHAVIOURAL INDEXING», R 323/2008-G).
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1.3.2 Distinction selon qu’il y a une ou deux parties
La procédure applicable lorsqu’une seule partie est affectée est décrite ci-après au paragraphe 1.3.2.1. Il en va ainsi, par exemple, lorsque l’Office reçoit valablement des observations d’un tiers qui soulèvent des doutes mais que la demande de marque communautaire n’est pas bloquée et est admise à l’enregistrement, et lorsqu’une demande de marque communautaire est enregistrée bien que la taxe de dépôt n’ait pas été acquittée.
Les erreurs qui concernent la mauvaise gestion des dossiers après l’adoption d’une décision, par exemple lorsqu’une demande de marque communautaire est enregistrée alors qu’elle a été rejetée sur la base de motifs absolus, ne lèsent qu’une partie – le demandeur.
Si la révocation d’une décision est susceptible d'affecter plus d’une partie, il convient d’appliquer la procédure décrite ci-après au paragraphe 1.3.2.2. Par exemple, plusieurs parties sont affectées par la révocation d’une décision dans le cadre d’une procédure d’opposition lorsque l’Office a ignoré une demande de preuve de l’usage.
Les erreurs qui concernent la mauvaise gestion des dossiers après l’adoption d’une décision d’opposition, par exemple lorsqu’une demande de marque communautaire est enregistrée alors qu’elle avait été rejetée dans son intégralité, sont réputées affecter à la fois le demandeur et l’opposant.
Les erreurs lors de l’enregistrement d’un transfert de propriété affectent également plusieurs parties. Si la procédure est principalement ex parte, l’Office peut, selon le cas, considérer que plusieurs parties sont affectées: le nouveau titulaire, l’ancien titulaire et le tiers qui aurait dû être inscrit dans le registre.
1.3.2.1 Procédures pour une partie
Erreur détectée par l’Office
Si l’Office lui-même découvre qu’une erreur a été commise, il informe le demandeur/titulaire de son intention de révoquer la décision/supprimer l’inscription et fixe un délai pour le dépôt d’observations d’une durée d’un mois si le demandeur/titulaire a son siège social dans un État membre de l’UE, et de deux mois dans le cas contraire. La lettre doit exposer les motifs de la révocation/suppression.
Si le demandeur/titulaire fait part de son accord ou ne dépose aucune observation, l’Office révoque la décision/supprime l’inscription.
Si le demandeur/titulaire ne marque pas son accord avec la révocation ou la suppression, une décision formelle doit être adoptée. Cette décision est soumise aux exigences habituelles décrites dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans le cadre des procédures, paragraphe 7, Décisions.
Erreur notifiée par la partie affectée
Si le demandeur/titulaire informe l’Office par écrit d’une erreur qui sera entendue comme une demande de révocation/suppression, il n’est pas nécessaire de demander
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la présentation d’observations. Dans pareil cas, il convient de déterminer si la demande de révocation/suppression est recevable. Dans l’affirmative, la décision est révoquée ou l’inscription dans le registre supprimée. Si l’Office conclut à l’absence de motif de révocation/suppression, il adopte une décision de rejet de la demande de la partie exposant les motifs de ce rejet.
1.3.2.2 Procédure pour plus d’une partie
Erreur détectée par l’Office
Si l’Office lui-même découvre qu’une erreur a été commise, il informe les deux parties de son intention de révoquer la décision/supprimer l’inscription et fixe un délai pour la présentation d’observations dont la durée est en principe de deux mois (ramenée à un mois si les deux parties ont leur siège social respectif dans un État membre de l’UE).
Si les parties font part de leur accord ou ne produisent aucune observation en réponse, l’Office doit révoquer la décision/supprimer l’inscription dans le registre.
Si l’une des parties refuse la révocation/suppression, une décision motivée doit être adoptée. Cette décision est soumise aux exigences habituelles décrites dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans le cadre des procédures, paragraphe 7, Décisions.
Erreur notifiée par l’une des parties
Si la partie lésée par l’erreur informe l’Office par écrit d’une erreur qui sera entendue comme une demande de révocation/suppression, il convient de déterminer si la demande de révocation/de suppression est recevable. Dans l’affirmative, l’Office notifie à la partie qui a bénéficié de l’erreur (l’autre partie) de son intention de procéder à la révocation/suppression (et il adresse une copie de cette notification à la première partie pour information). L’Office fixe un délai pour la formulation d’observations dont la durée est en principe de deux mois (et peut être ramenée à un mois si la partie lésée a son siège social dans un État membre de l’UE).
Si l’autre partie fait part de son accord ou ne présente aucune observation en réponse, l’Office doit révoquer la décision/supprimer l’inscription.
Si l’autre partie refuse la révocation ou la suppression, une décision motivée doit être adoptée. Cette décision est soumise aux exigences habituelles décrites dans les Directives, partie A, Dispositions générales, section 2, Principes généraux à respecter dans le cadre des procédures, paragraphe 7, Décisions.
À titre d’exemple, lorsqu’un opposant informe l’Office qu’alors même qu’il avait vu son opposition accueillie et la demande de marque communautaire rejetée, la demande de marque communautaire a été enregistrée, le demandeur doit être informé et se voir accorder un délai de deux mois pour présenter ses observations. L’inscription sera supprimée indépendamment du fait que le demandeur marque ou non son accord ou qu’il ne répond pas.
Si la partie qui a bénéficié de l’erreur informe l’Office par écrit, il convient de déterminer si la demande de révocation/suppression est recevable. Dans l’affirmative, la partie
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lésée par l’erreur doit être informée en conséquence. Étant donné que la révocation/suppression interviendra au bénéfice de cette dernière, la décision peut être révoquée ou l’inscription supprimée au moment où le courrier est envoyé (aux deux parties). Il n’est pas nécessaire que la partie ayant bénéficié de l’erreur présente des observations, étant donné qu’il peut être considéré que par son courrier informant l’Office de l’erreur, elle a signifié son accord avec la révocation/suppression.
À titre d’exemple, lorsqu’un demandeur informe l’Office que sa demande de marque communautaire a été enregistrée alors qu’elle avait été refusée par décision de l’Office, l’inscription dans le registre doit être supprimée. Il n’est pas nécessaire d’entendre l’opposant.
Enfin, lorsqu’une révocation ou une suppression est devenue définitive, elle doit être publiée si l’inscription erronée avait déjà été publiée au registre. Si l’Office conclut à l’absence de motif de révocation d’une décision ou de suppression d’une inscription, il signifie le rejet de la demande concernée par courrier et adresse des copies de ce courrier et de la demande initiale à l’autre partie pour information.
2 Correction d’erreurs dans les décisions et autres notifications
Règle 53 du REMC
2.1 Correction d’erreurs dans les décisions
2.1.1 Remarques générales
En application de la règle 53 du REMC, lorsque l’Office constate, d’office ou sur demande de l’une des parties intéressées, une faute linguistique, une faute de transcription ou une erreur manifeste dans une décision, il veille à ce que cette faute ou erreur soit rectifiée par le service ou le secteur compétent. Il ressort du libellé que la seule finalité légitime des rectifications effectuées sur le fondement de cette disposition est de rectifier des fautes d’orthographe ou de grammaire, des fautes de transcription – comme des erreurs portant sur le nom des parties ou sur la forme écrite des signes – ou des erreurs qui sont si manifestes que le libellé ne pouvait être compris que dans le sens du libellé tel que rectifié. Cependant, lorsque l’erreur figure dans un motif formulé à titre surabondant dans une décision, la seule possibilité est de révoquer la décision, sous réserve, en outre, que toutes les conditions soient satisfaites.
L’Office utilise la même définition d’«erreur manifeste» en relation avec l’article 44, paragraphe 2, du RMC, et la règle 53 du REMC, que celle exposée au point B.16 des déclarations conjointes du Conseil et de la Commission portées au procès-verbal du Conseil lors de l’adoption du RMC: «...la notion d’«erreurs» (manifestes) inclut les erreurs dont la rectification s’impose à l’évidence en ce sens qu’aucun texte autre que celui résultant de la rectification n’a pu être envisagé».
La révocation au titre de l’article 80 du RMC se distingue de la rectification au titre de la règle 53 du REMC en ce que la révocation annule une décision, alors que la rectification d’erreurs est sans effet sur la validité de la décision et n’ouvre pas de nouveau délai de recours.
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Un exemple de faute de transcription serait le cas où il est fait référence à une marque de manière erronée, par exemple une marque «HAMMER» à laquelle il serait fait référence en utilisant le mot «HUMMER».
Un exemple d’erreur manifeste est l’inversion de la marque antérieure et de la marque contestée lors de la comparaison des signes.
2.1.2 Aspects procéduraux
2.1.2.1 Délai
Les règlements ne fixent pas de délai pour la rectification d’erreurs dans les décisions, ce qui suggère qu’il est possible d’effectuer des rectifications à tout moment, pour autant que ces rectifications ne créent pas de conflit avec le principe d’équité.
2.1.2.2 Évaluation
Les examinateurs doivent vérifier, premièrement, si l’erreur à rectifier est une faute linguistique, une faute de transcription ou une erreur manifeste et, deuxièmement, si la décision fait l’objet d’un recours.
(a) Évaluation: avant d’envoyer une lettre notifiant une rectification, l’examinateur doit vérifier si l’erreur à rectifier est une faute linguistique, une faute de transcription ou une erreur manifeste.
(b) Recours: l’examinateur doit également vérifier si la décision fait l’objet d’un recours. Aucune rectification ne peut être effectuée si un recours contre la décision est pendant devant les chambres de recours. Cependant, les chambres doivent être informées de la situation.
2.1.2.3 Procédure
La rectification des fautes linguistiques, fautes de transcription et erreurs manifestes s’effectue par l’envoi d’un rectificatif à la partie affectée ou aux parties affectées. Le courrier d’accompagnement doit comporter une brève explication des rectifications.
Une fois qu’il a été procédé aux rectifications, l’examinateur s’assure que les changements sont reportés dans la décision telle qu’elle apparaît dans la base de données de l’Office.
La date de la décision ou de l’inscription reste inchangée après la rectification. En conséquence, celle-ci n’a pas d’incidence sur le délai de recours.
Lorsque la fixation des frais fait partie d’un motif formulé à titre surabondant dans la décision, elle ne peut être rectifiée que par voie de révocation.
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2.2 Correction d’erreurs figurant dans les notifications autres que les décisions
Les erreurs dans les notifications autres que les décisions peuvent être corrigées par l’envoi d’une notification rectifiée indiquant que cette seconde notification remplace et annule celle envoyée précédemment. La notification doit être assortie d’excuses pour tout désagrément occasionné.
3 Rectification d’erreurs figurant dans les publications et correction d’erreurs figurant au registre ou dans l’enregistrement publié
Article 39 du RMC Règles 14, 27, 84 et 85 du REMC
L’article 39 du RMC prévoit que les demandes de marque communautaire qui n’ont pas été rejetées sur la base de motifs absolus doivent être publiées à l’expiration d’une période d’un mois à compter de la délivrance du rapport de recherche.
La règle 14 du REMC précise les modalités de la rectification des erreurs et des fautes figurant dans la publication de la demande effectuée conformément à l’article 39 du RMC.
La règle 27 du REMC fixe les modalités de la rectification des erreurs et fautes figurant dans l’enregistrement d’une marque communautaire ou dans une inscription portée au registre en application de la règle 84 du REMC, y compris toute décision du président rendue conformément à la règle 84, paragraphe 4, du REMC, et aux erreurs figurant dans la publication de ces inscriptions dans le registre.
La principale différence entre la rectification d’une inscription dans le registre conformément à la règle 27 et la suppression d’une inscription dans le registre conformément à l’article 80 du RMC est que, dans le premier cas, une partie seulement de la publication est concernée, tandis que dans le second cas, l’inscription au registre est supprimée dans son intégralité.
En cas d’erreur imputable à l’Office, ce dernier la rectifie, soit d’office (lorsqu’il a lui- même constaté l’erreur), soit sur requête du titulaire.
Les rectifications d’erreurs dans les demandes de marque communautaire qui ne nécessitent pas de republication de la demande à des fins d’opposition sont publiées dans la Partie B.2 du Bulletin. Les rectifications apportées conformément à la règle 14 du REMC qui nécessitent une republication de la demande à des fins d’opposition sont publiées dans la Partie A.2. Cependant, la republication n’est requise que dans le cas où la liste de produits et services initialement publiée était plus limitée.
Dans tous les cas, les rectifications effectuées conformément à la règle 14 ou à la règle 27 sont notifiées, selon le cas, à la partie affectée ou aux parties affectées.
Les erreurs peuvent être corrigées conformément à la règle 27, paragraphe 1, du REMC, dans les cas cités ci-dessous, sans limitation:
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Une classe figurant dans la demande fait défaut dans la publication.
La demande a été déposée pour le signe «x» et la publication fait référence au signe «y», ou la liste des produits et services publiée est erronée.
La marque communautaire a été enregistrée sans tenir compte d’une limitation.
Les rectifications d’erreurs dans des enregistrements de marque communautaire qui ne nécessitent pas de republication à des fins d’opposition sont publiées dans la rubrique B.4.2 du Bulletin. Les rectifications apportées conformément à la règle 27 du REMC qui nécessitent la republication d’une partie de la demande à des fins d’opposition sont publiées dans la rubrique A.2.1.2.
La republication à des fins d’opposition sera toujours nécessaire lorsqu’une rectification comprend la modification de la représentation de la marque ou un élargissement de la liste des produits et services déjà publiée. En ce qui concerne les autres rectifications, la décision de procéder ou non à une republication sera prise au cas par cas.
Les rectifications apportées à des inscriptions figurant au registre doivent être publiées conformément aux termes de la règle 27, paragraphe 3, et de la règle 85, paragraphe 2, du REMC. Les rectifications d’erreurs relatives figurant dans une inscription dans le registre sont publiées dans la rubrique B.4.2 du Bulletin. Tous les cas énumérés ci-dessus à titre exemplatif (de rectifications et de révocation/suppressions) doivent être publiés.
Aucune publication de rectification au titre de la règle 27 du REMC n’est nécessaire lorsque la publication initiale avait été effectuée dans la partie inappropriée du Bulletin. Conformément à la communication nº 11/98 du Président de l’Office du 15 décembre 1998, «l’effet juridique de la publication en vertu de l’article 9 paragraphe 3 du règlement sur la marque communautaire reste identique, qu’elle ait lieu dans la Partie B. 1 ou dans la Partie B. 2 du Bulletin».
Délai: il n’est prévu aucun délai pour effectuer les rectifications conformément aux règles 14 et 27 du REMC. Ces rectifications peuvent être faites à tout moment après la détection de l’erreur.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 7
RÉVISION
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Table des matières
1 Principes généraux ................................................................................... 3 1.1 Introduction ................................................................................................ 3 1.2 Dans les procédures ex parte....................................................................3 1.3 Dans les procédures inter partes .............................................................. 3
2 Révision applicable - procédure .............................................................. 4 2.1 Vérification de la formation du recours .................................................... 4 2.2 Vérification de la recevabilité du recours ................................................. 4 2.3 Vérification du bien-fondé du recours ...................................................... 5
2.3.1 Cas où il convient de faire droit au recours .................................................... 5 2.3.2 Cas où le recours est fondé mais où la révision ne peut pas être accordée . 5
2.4 Effet d’une requête en restitutio in integrum............................................6 2.5 Décision d’accorder la révision.................................................................6
2.5.1 Délai pour la prise décision ............................................................................ 6 2.5.2 Contenu de la décision ................................................................................... 6
2.6 Recours contre la décision........................................................................7 2.7 Communication de la décision..................................................................7
3 Révision non accordée - procédure......................................................... 7
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1 Principes généraux
Articles 61 et 62 du RMC
1.1 Introduction
La prise de décision concernant une décision attaquée relève de la compétence des chambres de recours. Conformément aux articles 61 et 62 du RMC, la chambre de recours renvoie la décision attaquée devant le département à l’origine de la décision pour qu’elle soit révisée. Cette mesure permet à l’instance à l’origine de la décision initiale de faire droit au recours si celui-ci est recevable et fondé. Les procédures inter partes ne peuvent faire l’objet d’un recours que si l’autre partie l’autorise (voir la décision du 11 août 2009, R 1199/2008-4 – «DIPLOMÃTICO/DIPLOMAT»).
L’objectif de la révision est d’éviter que les chambres de recours ne soient submergées de recours contre des décisions que l’Office a reconnu comme devant être rectifiées. Cependant, l’objectif de la révision n’est pas de supprimer les erreurs dans les décisions de l’Office sans changer l’issue du dossier, mais d’apporter au requérant l’aide attendue.
1.2 Dans les procédures ex parte
Une révision peut être accordée lorsqu’un recours qui relève de la compétence des chambres de recours au sens de l’article 58 du RMC a été introduit contre une décision.
Si la division ou l’instance de l’Office dont la décision est attaquée considère que le recours est recevable et fondé, elle doit y faire droit.
S’il n’est pas fait droit au recours dans un délai d’un mois après réception du mémoire exposant les motifs, le recours doit être immédiatement déféré à la chambre de recours, sans avis sur le fond.
1.3 Dans les procédures inter partes
La révision est également applicable dans les procédures inter partes. Celles-ci incluent les procédures d’opposition (y compris les décisions par lesquelles l’opposition est jugée irrecevable), les procédures concernant les demandes en déchéance ou en nullité, ainsi que certaines procédures concernant l’inspection publique.
La révision n’est pas applicable lorsque le délai d’un mois suivant la réception par l’Office du mémoire exposant les motifs du recours a expiré.
La révision suppose qu’il existe un recours en suspens. La révision n’est pas applicable lorsque le recours a été retiré avant que le délai réglementaire d’un mois pour la révision n’ait expiré et lorsqu’aucune décision concernant la révision n’a encore été rendue.
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2 Révision applicable - procédure
Articles 61 et 130 du RMC
Lorsque la révision est applicable, le greffe des chambres de recours transmet les pièces constituant le recours et toute communication ultérieure concernant le recours à la division de l’Office qui a rendu la décision.
La division concernée examine si la révision doit être accordée.
La révision est accordée uniquement lorsque le recours est recevable et fondé.
2.1 Vérification de la formation du recours
Article 60 du RMC Règle 49, paragraphe 3, du REMC Article 2, paragraphe 18, et article 8, paragraphes 3 et 4, du RTMC
Étant donné qu’un recours n’est considéré comme formé qu’après paiement de la taxe de recours, une décision attaquée pour laquelle la taxe de recours n’a pas été payée ne peut être révisée.
La division compétente doit dès lors vérifier que la taxe de recours a été entièrement acquittée dans les deux mois qui suivent la notification de la décision attaquée.
Si ce n’est pas le cas, la décision attaquée ne peut faire l’objet d’une révision et doit être déférée sans délai (pas nécessairement seulement à la fin du délai d’un mois) au greffe des chambres de recours.
Pour de plus amples informations concernant les taxes, voir les Directives, Partie A, Dispositions générales, Section 3, Paiement des taxes, coûts et tarifs.
2.2 Vérification de la recevabilité du recours
Articles 58-60 CTMR Règle 48 et règle 49, paragraphes 1 et 2, du REMC
La division compétente doit être sûre que le recours est recevable, c’est-à-dire qu’il satisfait aux exigences stipulées aux articles 58 à 60 du RMC et à la règle 48, paragraphe 1, point c), et paragraphe 2, du REMC, ainsi qu'à toutes les autres exigences auxquelles se réfère la règle 49, paragraphe 2, du REMC.
La division compétente ne peut en aucun cas contacter le requérant afin de remédier aux irrégularités formelles ou de fond du recours. Cette interdiction s'applique également aux contacts oraux. Lorsque les exigences de recevabilité du recours ne sont pas remplies, le dossier doit être déféré sans délai aux chambres de recours.
Lorsque la langue utilisée n'est pas la langue de procédure de la décision attaquée, la révision n'est pas accordée.
Révision
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Lorsque des renseignements essentiels, tels que le nom et l'adresse du requérant, manquent, ou lorsqu’il n’y a pas de signature ou d'autorisation, la révision n'est pas accordée.
2.3 Vérification du bien-fondé du recours
La division compétente doit s'assurer du bien-fondé du recours.
2.3.1 Cas où il convient de faire droit au recours
La date pertinente à prendre en compte pour évaluer le bien-fondé du recours est la date à laquelle la division compétente examine si la révision peut être accordée ou non.
Le recours est fondé lorsque la décision attaquée est incorrecte.
2.3.2 Cas où le recours est fondé mais où la révision ne peut pas être accordée
Article 7, paragraphe 3, et article 37, paragraphe 1, du RMC Règles 9, 11 et 13 du REMC
La révision est accordée seulement si les objections soulevées par l’Office ont été entièrement éliminées.
Par exemple, il ne peut être fait droit à un recours lorsque le demandeur de marque communautaire élimine seulement partiellement les irrégularités relevées par l’Office.
Un autre exemple est lorsque l’examinateur a émis des objections sur la liste des produits et services et que le demandeur de marque communautaire dépose une nouvelle liste de produits et services qui ne satisfait pas entièrement aux objections soulevées par l’examinateur et qui, par conséquent, doit être à nouveau examinée.
Un autre exemple est lorsque l’Office a rejeté une demande de marque communautaire pour des motifs absolus mais que le demandeur de marque communautaire invoque, dans son recours, que la marque a acquis un caractère distinctif par l’usage, lequel doit alors être démontré.
La révision n’est pas applicable lorsque l’accorder signifierait simplement rouvrir le dossier sans le résoudre. Il n’est pas nécessaire que la révision débouche sur une décision positive sur le fond (dans le cas d’une demande de marque communautaire, l’enregistrement ou au moins, la publication). La révision constitue une aide au requérant dans la mesure où il recherche une infirmation de la décision. Pour déterminer si une révision apporterait l’aide requise, la décision attaquée et les motifs sur lesquels elle s’appuie constituent la base de l’analyse.
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2.4 Effet d’une requête en restitutio in integrum
Articles 60 et 81 du RMC
La révision ne peut pas être accordée, lorsqu’un recours ou un mémoire exposant les motifs du recours n’a pas été déposé à temps mais est accompagné d’une requête en restitutio in integrum visant le rétablissement du délai de deux mois pour l’introduction d’un recours ou le dépôt d’un mémoire exposant les motifs. Le recours doit être déféré aux chambres de recours sans délai.
2.5 Décision d’accorder la révision
Article 61, paragraphe 2, du RMC Règles 51 et 52 du REMC
Si la division compétente conclut que la révision doit être accordée, elle doit rendre une décision à cet effet dans un délai d’un mois après la réception du mémoire exposant les motifs du recours.
2.5.1 Délai pour la prise décision
La décision doit être envoyée au plus tard le dernier jour du délai. Le fait que la date de notification de la décision soit postérieure à cette date n'est pas important. Si, par exemple, la décision est notifiée par courrier recommandé, la lettre recommandée doit être postée au plus tard le dernier jour du délai.
2.5.2 Contenu de la décision
Le contenu de la décision doit au moins prévoir l’annulation de la décision initiale et peut prévoir un traitement postérieur du dossier, par exemple, que la demande de marque communautaire soit enregistrée ou que l’enregistrement du transfert demandé soit inscrit dans les dossiers de la demande de marque communautaire.
La décision doit également indiquer si la taxe de recours doit ou non être remboursée.
Le remboursement de la taxe de recours n’est ordonné dans la mesure où l’équité exige le remboursement en raison d’une violation des formes substantielles. Le critère de base à prendre en compte est l’existence ou non d’une faute de l’Office à la date à laquelle la décision attaquée a été prise. Si la décision attaquée s’avère incorrecte, le remboursement doit être accordé. Si la décision attaquée était correcte à la date à laquelle elle a été prise, aucun remboursement n’est accordé à moins qu’il soit établi qu’un document ou une observation supprimant l’irrégularité relevée par l’Office a été en fait reçu par l’Office avant la décision mais non porté au dossier à temps.
Lorsque la taxe de recours a été payée à partir d’un compte courant, l’actuel titulaire du compte est remboursé sur ce même compte. Lorsque le compte n’a pas encore été débité, la décision dispose qu’aucune taxe de recours ne sera prélevée.
Révision
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2.6 Recours contre la décision
Article 58 du RMC
La décision d’accorder une révision n’est pas susceptible de recours.
Une décision refusant le remboursement de la taxe de recours est susceptible de recours indépendant.
2.7 Communication de la décision
Dès lors que la révision a été accordée, la division compétente en informe le greffe des chambres de recours.
3 Révision non accordée - procédure
Article 61, paragraphe 2, du RMC
Lorsque la division compétente arrive à la conclusion que les conditions d'octroi de la révision ne sont pas réunies, et au plus tard lors de l’expiration du délai d'un mois prévu à l'article 61, paragraphe 2, du RMC, la division compétente doit remettre le dossier aux chambres de recours sans avis ou déclaration.
Lorsque la division compétente remet le dossier aux chambres de recours sans avis ou déclaration, aucune décision n’est prise pour refuser la révision.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 8
RESTITUTIO IN INTEGRUM
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Table des matières
1 Principes généraux ................................................................................... 3
2 Critères d’octroi de la restitutio in integrum ........................................... 3 2.1 La condition de «toute la vigilance nécessitée par les
circonstances» ........................................................................................... 3 2.2 Perte de droits ou de moyens de recours comme conséquence
directe du non-respect d’un délai ............................................................. 5
3 Aspects procéduraux................................................................................ 5 3.1 Procédures auxquelles s’applique la restitutio in integrum.................... 6 3.2 Parties .........................................................................................................6 3.3 Délai imparti aux offices nationaux pour présenter une demande à
l’Office.........................................................................................................6 3.4 Délais exclus de la restitutio in integrum ................................................. 7 3.5 Effet de la restitutio in integrum................................................................ 8 3.6 Délai ............................................................................................................8 3.7 Taxe.............................................................................................................8 3.8 Langues ......................................................................................................9 3.9 Renseignements et preuves ......................................................................9 3.10 Compétence................................................................................................ 9 3.11 Publications.............................................................................................. 10 3.12 Décision, rôle d’autres parties dans la procédure de restitution.......... 10
4 Tierce opposition..................................................................................... 11
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1 Principes généraux
Article 81 du RMC Article 67 du RDMC
Une partie à une procédure devant l’Office peut être rétablie dans ses droits (restitutio in integrum) si, bien qu’ayant fait preuve de toute la vigilance nécessitée par les circonstances, elle n’a pas été en mesure de respecter un délai à l’égard de l’Office, si l’empêchement a eu pour conséquence directe, en vertu des dispositions des règlements, la perte d’un droit ou d’un moyen de recours (voir l’arrêt du 28 juin 2012, T-314/10, «Cook’s», points 16 et 17).
Le respect des délais est d’ordre public et la restitutio in integrum est susceptible de nuire à la sécurité juridique. Par conséquent, les conditions d’application de la restitutio in integrum doivent être interprétées de façon stricte (voir l’arrêt du 19 septembre 2012, T-267/11, «VR», point 35).La restitutio in integrum n’est accordée que sur requête adressée à l’Office et donne lieu à la perception d’une taxe.
Si la partie est représentée, tout manque de vigilance du représentant est imputable à la partie qu’il représente (voir l’arrêt du 19 septembre 2012, T-267/11, «VR», point 40).
2 Critères d’octroi de la restitutio in integrum
La restitutio in integrum est subordonnée à deux conditions (voir l’arrêt du 25 avril 2012, T-326/11, «BrainLAB», point 36):
a) la partie a agi avec toute la vigilance nécessaire au regard des circonstances;
b) l’empêchement (de respecter un délai) de la partie a eu pour conséquence directe la perte d’un droit ou celle d’un moyen de recours.
2.1 La condition de «toute la vigilance nécessitée par les circonstances»
Seuls des événements à caractère exceptionnel et, partant, imprévisibles selon l’expérience peuvent donner lieu à une restitutio in integrum (voir l’arrêt du 13 mai 2009, T-136/08, «Aurelia», point 26).
a) Exemples de cas où l’exigence de «toute la vigilance nécessitée» est respectée
En principe, la non-livraison par le service postal ou d’acheminement n’implique aucun manque de vigilance de la part de la partie concernée (voir la décision du 25 juin 2012, R 1928/2011-4, «Sun Park Holidays»). Les représentants des parties sont cependant tenus d’au moins s’enquérir à l’avance des délais de livraison habituels de leur société de livraison (dans le cas de lettres envoyées d’Allemagne en Espagne en vertu de la décision du 4 mai 2011, R 2138/2010-1, «Yellowline»).
Le degré de vigilance dont doivent faire preuve les parties pour pouvoir être rétablies dans leurs droits doit s’apprécier au regard de toutes les circonstances pertinentes,
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lesquelles incluent toute erreur commise par l’Office et ses répercussions. Dès lors, même si la partie concernée a manqué de vigilance, une erreur pertinente de la part de l’Office peut donner lieu à une restitutio (voir l’arrêt du 25 avril 2012, T-326/11, «BrainLAB», points 57 et 59).
Les circonstances telles que les catastrophes naturelles et les grèves générales sont considérées comme remplissant la condition de «toute la vigilance nécessitée».
b) Exemples de cas où l’exigence de «toute la vigilance nécessitée» n’est PAS respectée
Toute erreur résultant d’une mauvaise gestion des fichiers par les employés du représentant ou par le système informatisé lui-même est prévisible. Par conséquent, la vigilance nécessitée exigerait la mise en place d’un système de surveillance et de détection de telles erreurs (voir l’arrêt du 13 mai 2009, T-136/08, «Aurelia», point 18).
«La charge de travail exceptionnelle et les contraintes en matière d’organisation que les requérants allèguent avoir subies en raison de l’entrée en vigueur du règlement n° 40/94 sont dépourvues de pertinence» (voir l’arrêt du 20 juin 2001, T-146/00, «DAKOTA», point 62.)
Un calcul erroné du délai ne constitue pas un événement à caractère exceptionnel ne pouvant être prévu selon l’expérience (voir la décision du 5 juillet 2013, R 0194/2011-4, «PayEngine»).
Une erreur commise par le directeur du département «Renouvellements», qui contrôle les performances quotidiennes du personnel, ne constitue pas un événement à caractère exceptionnel (voir la décision du 24 avril 2013, R 1728/2012-3, «Part of lifting device»).
L’absence d’un membre important du service de comptabilité ne constitue pas un événement à caractère exceptionnel ou imprévisible (voir la décision du 10 avril 2013, R 2071/2012-5, «Starforce»).
Une erreur d’écriture dans un délai ne constitue pas un événement exceptionnel ou imprévisible (voir la décision du 31 janvier 2013, R 0265/2012-1, «Kansi»).
Une mauvaise compréhension de la loi en vigueur, par principe, ne constitue pas un «obstacle» au respect d’un délai (voir la décision du 14 juin 2012, R 2235/2011-1, «KA»).
Si un titulaire tarde à fournir des instructions, cela ne constitue pas un événement à caractère exceptionnel (voir la décision du 15 avril 2011, R 1439/2010-4, «Substral Nutri + Max»).
Les problèmes financiers de l’entreprise du titulaire, sa fermeture et la perte d’emplois ne constituent pas une raison pour le titulaire de ne pas respecter le délai prévu pour le renouvellement de sa marque communautaire (voir la décision du 31 mars 2013, R 1397/2010-1, «Captain»).
Les erreurs juridiques commises par un représentant professionnel ne donnent pas lieu à une restitutio (voir la décision du 16 novembre 2010, R 1498/2010-4, «Regine’s»). La suppression d’un délai par un assistant ne constitue pas un événement imprévisible (voir la décision du 28 juin 2010, R 0268/2010-2, «Orion»).
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2.2 Perte de droits ou de moyens de recours comme conséquence directe du non-respect d’un délai
Article 81, paragraphe 1, du RMC
Le non-respect du délai doit avoir eu pour conséquence directe la perte d’un droit ou d’un moyen de recours (voir l’arrêt du 15 septembre 2011, T-271/09, «Romuald Prinz Sobieski zu Schwarzenberg», point 53).
Article 42, paragraphe 2, article 76, paragraphe 2, et article 77, paragraphe 1, du RMC Règle 19, règle 20, paragraphes 1 à 5, et règle 40, paragraphes 1 à 3, du REMC
Ce n’est pas le cas lorsque les règlements offrent des options procédurales dont les parties à la procédure peuvent librement se prévaloir, telles que la requête d’une audition, demander que l’opposant apporte la preuve de l’usage sérieux de sa marque antérieure, ou encore solliciter une prorogation du délai de réflexion conformément à la règle 19 du REMC. Le délai de réflexion proprement dit ne peut donner lieu à la restitutio in integrum, étant donné qu’il ne s’agit pas d’un délai dans lequel une partie doit agir.
Article 36, paragraphes 1 et 4, et article 37 du RMC Règle 9, paragraphes 3 et 4, règle 10 et règle 11, paragraphes 1 et 3, du REMC
D’autre part, la restitutio in integrum s’applique à la réponse tardive à la notification de refus d’un examinateur s’il n’est pas fait droit à la demande dans le délai imparti car il existe dans ce cas un lien direct entre le non-respect du délai et le refus éventuel.
La restitutio in integrum s’applique également aux cas de présentation tardive de faits et d’arguments et de présentation tardive d’observations en réponse aux déclarations de l’autre partie dans les procédures inter partes si et seulement si l’Office refuse de les prendre en considération pour cause de présentation tardive. La perte de droits dans ce cas réside dans l’exclusion desdits arguments et observations des faits et moyens sur lesquels l’Office fonde sa décision. (En principe, l’Office écarte toute déclaration présentée après l’expiration du délai imparti dans le cadre d’une procédure inter partes.)
3 Aspects procéduraux
Article 81, paragraphe 2, du RMC Règle 83, paragraphe 1, point h), du REMC Article 67, paragraphe 2, du RDMC Article 68, paragraphe 1, point g), du REDMC
La restitutio in integrum n’est octroyée que dans des circonstances exceptionnelles, imprévisibles et indépendantes de la volonté de la partie concernée. Ces circonstances peuvent être, par exemple, une erreur commise par un service de courrier dans la transmission d’une communication à l’Office, une erreur provoquée ou commise par l’Office ou une grève générale.
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En revanche, une erreur humaine dans la gestion des procédures de renouvellement commise par le représentant ou la partie proprement dite, les problèmes de TI, les retards des services postaux, les difficultés économiques et les erreurs dans le calcul des délais ou dans la compréhension du droit applicable ne sont pas considérés comme des circonstances exceptionnelles (voir la décision du 14 juin 2012 dans l’affaire R 2235/2011-1, «KA», et l’arrêt du 19 septembre 2012, T-267/11, «VR»).
3.1 Procédures auxquelles s’applique la restitutio in integrum
La restitutio in integrum s’applique à toutes les procédures devant l’Office.
Sont concernées les procédures au titre du RMC ainsi que celles relatives aux dessins ou modèles communautaires enregistrés au titre du RDMC. Les dispositions respectives de ces règlements ne diffèrent pas sur le fond.
La restitutio in integrum s’applique aux procédures ex parte, inter partes et de recours.
En ce qui concerne la restitutio in integrum en relation avec le non-respect du délai prévu pour la formation d’un recours et la révision, voir la Partie A – Règles générales, Section 7 – Révision, des directives.
3.2 Parties
Article 81 du RMC Article 67 du RDMC
Est éligible au bénéfice de la restitutio in integrum toute partie à une procédure devant l’Office, c’est-à-dire non seulement le demandeur ou le titulaire d’une marque communautaire ou le demandeur ou le titulaire d’un dessin ou d’un modèle communautaire enregistré, mais aussi l’opposant, le demandeur en déchéance ou en nullité ou le contrefacteur présumé participant à une procédure conformément à l’article 54 du RDMC.
Le non-respect du délai doit être le fait de la partie concernée ou de son représentant.
3.3 Délai imparti aux offices nationaux pour présenter une demande à l’Office
Article 25, paragraphe 2, du RMC Article 35, paragraphe 1, et article 38, paragraphe 2, du RDMC
Le délai d’un mois pour la transmission d’une demande de marque communautaire ou de deux mois pour la transmission d’une demande de dessin ou modèle communautaire, déposée auprès d’un office national, doit être respecté par l’office national et non par le demandeur et n’ouvre dès lors pas droit au bénéfice de la restitutio in integrum.
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Conformément à l’article 38, paragraphe 2, du RDMC, la transmission tardive d’une demande d’enregistrement d’un dessin ou modèle communautaire entraîne un report de la date de dépôt de la demande à la date de la réception effective par l’Office des documents visés.
En outre, même en cas de non-respect du délai visé à l’article 25, paragraphe 3, du RMC pour la transmission d’une demande de marque communautaire, plutôt que de considérer que la demande de marque communautaire a été retirée, l’Office traite la demande de marque communautaire comme si elle lui était parvenue directement et non par l’intermédiaire d’un office national, ce qui a pour conséquence que la date de dépôt sera la date de réception effective par l’OHMI.
3.4 Délais exclus de la restitutio in integrum
Article 81, paragraphe 5, du RMC Article 67, paragraphe 5, du RDMC
Dans le souci de garantir la sécurité juridique, la restitutio in integrum ne s’applique pas aux délais visés dans les dispositions suivantes:
Article 29, paragraphe 1, et article 81, paragraphe 5, du RMC Règle 6, paragraphe 1, du REMC Article 41, paragraphe 1, et article 67, paragraphe 5, du RDMC Article 8, paragraphe 1, du REDMC
le délai de priorité, c’est-à-dire le délai de six mois prévu pour présenter une demande revendiquant la priorité d’une demande de marque antérieure ou d’une demande de dessin ou modèle antérieure conformément à l’article 29, paragraphe 1, du RMC ou à l’article 41, paragraphe 1, du RDMC. Cependant, la restitutio in integrum s’applique au délai de trois mois prévu pour communiquer le numéro de dossier et produire une copie de la demande antérieure visée à la règle 6, paragraphe 1, du REMC ou à l’article 8, paragraphe 1, du REDMC;
Article 41, paragraphes 1 et 3, et article 81, paragraphe 5, du RMC
le délai fixé pour former une opposition conformément à l’article 41, paragraphe 1, du RMC, y compris le délai prévu pour le paiement de la taxe d’opposition visée à l’article 41, paragraphe 3, du RMC;
Article 81, paragraphes 2 et 5, du RMC Article 67, paragraphes 2 et 5, du RDMC
les délais fixés pour la restitutio in integrum proprement dite, à savoir:
○ un délai de deux mois à compter de la cessation de l’empêchement pour la présentation de la requête en restitutio in integrum,
○ un délai de deux mois à compter de cette date pour accomplir l’acte non accompli,
○ un délai d’un an à compter de l’expiration du délai non observé pour le dépôt d’une requête en restitution in integrum.
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3.5 Effet de la restitutio in integrum
L’octroi de la restitutio in integrum a pour effet juridique rétroactif que le délai qui n’a pas été observé est considéré comme l’ayant été et que toute perte de droit survenue entre-temps sera réputée n’avoir jamais eu lieu. Toute décision prise par l’Office durant la période intermédiaire en raison du non-respect du délai sera nulle, ceci impliquant qu’une fois la restitutio in integrum accordée, il n’est plus nécessaire de former un recours contre ladite décision de l’Office pour la faire annuler. En effet, la restitutio in integrum rétablit le demandeur dans tous ses droits.
3.6 Délai
Article 47, paragraphe 3, et article 81, paragraphe 2, du RMC Article 13, paragraphe 3, et article 67, paragraphe 2, du RDMC
Les demandeurs doivent présenter leur demande de restitutio in integrum par écrit et l’envoyer à l’Office.
La requête doit être présentée dans un délai de deux mois à compter de la cessation de l’empêchement et au plus tard un an après l’expiration du délai non observé. L’acte non accompli doit l’être dans le premier délai visé. La date de la cessation de l’empêchement est la première date à laquelle la partie a eu connaissance ou aurait dû avoir connaissance des faits ayant conduit à l’empêchement. Si le motif d’empêchement était une absence ou une maladie du mandataire agréé chargé de l’affaire, la date de cessation de l’empêchement est la date de reprise de ses activités par le mandataire. En cas de non-présentation d’une demande de renouvellement ou de non-paiement de la taxe de renouvellement, le délai d’un an commence à courir le jour où la protection prend fin et non le jour de l’expiration du délai supplémentaire de six mois.
3.7 Taxe
Article 81, paragraphe 3, du RMC Article 2, point 19, du RTMC Article 67, paragraphe 3, du RDMC Annexe, point 15, du RTDMC
La taxe de restitutio in integrum doit être acquittée dans le même délai (voir le paragraphe 3, point 6). Si la taxe n’est pas acquittée dans le délai prévu, la requête en restitutio in integrum est réputée ne pas avoir été présentée.
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3.8 Langues
Article 199 du RMC Règle 95 du REMC Article 98 du RDMC Article 80 du REDMC
La requête en restitutio in integrum doit être présentée dans la langue ou dans l’une des langues de la procédure au cours de laquelle le non-respect du délai est survenu. Par exemple, dans la procédure d’enregistrement, il s’agit de la première langue mentionnée dans la demande. Dans la procédure d’opposition, c’est la langue de la procédure d’opposition et, dans la procédure de renouvellement, c’est l’une des cinq langues de l’Office.
3.9 Renseignements et preuves
Articles 78 et 81 du RMC Articles 65 et 67 du RDMC
La requête en restitutio in integrum doit être motivée et indiquer les faits et justifications invoqués à son appui. Étant donné que l’octroi d’une restitutio in integrum dépend essentiellement de faits, il est conseillé que le demandeur produise des preuves au moyen de déclarations faites sous serment ou solennellement.
De plus, l’acte non accompli doit être accompli en même temps que la requête en restitutio in integrum est introduite, au plus tard à l’expiration du délai prévu pour la présentation de la requête en restitutio in integrum.
3.10 Compétence
Article 81 du RMC Article 67 du RDMC
La division ou le département compétent pour statuer sur l’acte non accompli, c’est-à- dire compétent pour la procédure au cours de laquelle le non-respect du délai est survenu, est compétent pour statuer sur les requêtes en restitutio in integrum.
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3.11 Publications
Article 81, paragraphe 7, du RMC Règle 30, paragraphes 4 et 5, règle 84, paragraphe 3, points k) et l), et règle 85, paragraphe 2, du REMC Article 67 du RDMC Article 22, paragraphes 4 et 5, article 69, paragraphe 3, points m) et n), et article 70, paragraphe 2, du REDMC
Le RMC et le RDMC disposent que le rétablissement du titulaire dans ses droits doit être publié au Bulletin. Cette publication n’a lieu que si l’empêchement qui a abouti à la requête en restitutio in integrum a effectivement conduit à la publication du changement de statut de la demande ou de l’enregistrement de la marque communautaire ou du dessin ou modèle communautaire, étant donné que c’est le seul cas où des tiers ont pu se prévaloir de l’absence de ces droits. À titre d’exemple, la mention de l’octroi de la restitutio in integrum sera publiée si l’Office a publié la mention de l’expiration de l’enregistrement pour non-respect du délai de paiement de la taxe de renouvellement.
Dans le cas d’une telle publication, une inscription est également portée au registre.
La réception d’une requête en restitutio in integrum n’est pas publiée.
3.12 Décision, rôle d’autres parties dans la procédure de restitution
Articles 58 et 59 du RMC
Le demandeur en restitutio in integrum est la seule partie à la procédure en restitutio in integrum, même lorsque le non-respect du délai survient dans le cadre d’une procédure inter partes.
La décision sur la requête en restitutio in integrum est rendue, si possible, dans le cadre de la décision qui met fin à la procédure. Si, pour des raisons particulières, une décision provisoire est rendue par l’Office sur la requête en restitutio in integrum¸ un recours distinct ne sera généralement pas autorisé. Le demandeur en restitutio in integrum peut former un recours contre le rejet de sa requête en restitutio in integrum en même temps qu’un recours contre la décision qui clôt la procédure.
La décision d’accorder la restitutio in integrum n’est pas susceptible de recours.
Dans les procédures inter partes, l’autre partie à la procédure est informée du fait que la restitutio in integrum a été demandée et de l’issue de cette procédure. Si la restitutio in integrum est accordée, le seul moyen de recours de l’autre partie à la procédure est de former tierce opposition (voir le point 4 ci-dessous).
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4 Tierce opposition
Article 81 du RMC Article 67 du RDMC
Une tierce partie qui, durant la période comprise entre la perte de droit et la publication de la mention du rétablissement des droits,
a, de bonne foi, mis des produits sur le marché ou fourni des services sous un signe identique ou similaire à la marque communautaire ou
dans le cas d’un dessin ou modèle communautaire, a, de bonne foi, mis sur le marché des produits dans lesquels est incorporé ou auxquels est appliqué un dessin ou un modèle compris dans l’étendue de la protection du dessin ou du modèle communautaire enregistré,
peut former tierce opposition contre la décision rétablissant dans ses droits le demandeur ou le titulaire de la marque communautaire ou du dessin ou modèle communautaire.
Cette demande doit être déposée dans un délai de deux mois à compter de:
la date de publication, s’il y a eu publication;
à défaut, la date à laquelle la restitutio in integrum a pris effet.
Les règlements ne contiennent aucune disposition régissant cette procédure. La compétence en matière de tierce opposition appartient au département ou à l’unité qui a pris la décision de rétablir le demandeur dans ses droits. L’Office mettra en œuvre une procédure inter partes contradictoire.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE A
DISPOSITIONS GÉNÉRALES
SECTION 9
ÉLARGISSEMENT
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Table des matières
1 Introduction................................................................................................ 3
2 Règles relatives à l’examen...................................................................... 3 2.1 Extension automatique des marques communautaires aux nouveaux
États membres............................................................................................ 3 2.2 Demandes de marque communautaire en cours d’examen .................... 3 2.3 Caractère distinctif acquis par l’usage ..................................................... 4 2.4 Mauvaise foi................................................................................................ 5 2.5 Transformation ........................................................................................... 5 2.6 Autres conséquences pratiques ............................................................... 5
2.6.1 Dépôt auprès des offices nationaux ............................................................... 5 2.6.2 Représentation professionnelle ...................................................................... 6 2.6.3 Première et seconde langues......................................................................... 6 2.6.4 Traduction....................................................................................................... 6 2.6.5 Ancienneté...................................................................................................... 6 2.6.6 Recherche ...................................................................................................... 7
3 Règles relatives à l’opposition et à l’annulation..................................... 7
Annexe 1 ......................................................................................................... 10
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1 Introduction
Ce chapitre est consacré aux règles relatives à l’adhésion de nouveaux États membres à l’Union européenne et aux conséquences pour les titulaires des marques communautaires. Il porte à la fois sur les motifs absolus et relatifs.
L’article 165 du RMC contient les dispositions pertinentes relatives à l’élargissement et aux marques communautaires. Ces dispositions ont été introduites dans le règlement conformément au processus d’élargissement de 2004 (article 147 bis du RMC à l’époque) et sont restées inchangées au cours des processus d’élargissement successifs. La seule modification apportée au texte du règlement est l’ajout des noms des nouveaux États membres.
Le tableau de l’annexe 1 reprend la liste des nouveaux États membres ainsi que leur date d’adhésion et leur langue officielle.
2 Règles relatives à l’examen
2.1 Extension automatique des marques communautaires aux nouveaux États membres
L’article 165, paragraphe 1, du RMC établit le principe de base de l’élargissement, selon lequel toutes les demandes de marque communautaire et marques communautaires enregistrées existantes sont automatiquement étendues aux nouveaux États membres, sans aucune intervention supplémentaire de l’Office, de tout autre organe ou des titulaires des droits concernés. Il n’y a pas de taxe supplémentaire à acquitter ni de formalités administratives à accomplir. L’extension des demandes de marque communautaire ou marques communautaires existantes au territoire des nouveaux États membres permet de garantir que ces droits ont le même effet dans toute l’Union européenne et elle respecte le principe fondamental du caractère unitaire de la marque communautaire.
2.2 Demandes de marque communautaire en cours d’examen
L’article 165, paragraphe 2, du RMC contient une importante disposition transitoire, selon laquelle les demandes de marque communautaire en cours d’examen à la date de l’adhésion ne peuvent être refusées sur la base de motifs absolus de refus si ces motifs sont nés uniquement de l’adhésion d’un nouvel État membre (clause dite de «grandfathering»). En pratique, cela signifie qu’une demande de marque communautaire dont la date de dépôt est antérieure à la date de l’adhésion d’un nouvel État membre ne peut être refusée si elle est dépourvue de caractère distinctif, si elle est descriptive, générique, trompeuse ou contraire à l’ordre public ou aux bonnes mœurs dans la langue ou sur le territoire d’un nouvel État membre.
Pour les demandes dont la date de dépôt est postérieure à la date de l’adhésion, les motifs de refus énoncés à l’article 7, paragraphe 1, du RMC s’appliquent aussi au nouvel État membre et ce, même lorsque la date de priorité de la demande de marque communautaire est antérieure à la date de l’adhésion concernée. Le droit de priorité ne protège pas le demandeur d’une marque communautaire contre toute modification de la législation se rapportant à sa demande. Par conséquent, les examinateurs doivent appliquer les mêmes critères d’examen que pour toutes les autres langues officielles
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de l’Union européenne. Cela signifie que l’examinateur doit vérifier si la demande de marque communautaire est descriptive, et ainsi de suite, également dans le nouvel État membre.
Cependant, il convient d’appliquer ce principe avec prudence, puisqu’il signifie simplement que les critères d’application de l’article 7, paragraphe 1, du RMC ne doivent pas devenir plus stricts en raison de l’adhésion de nouveaux États membres. Inversement, il est parfois erroné de conclure qu’il est possible, dans tous les cas, d’obtenir l’enregistrement en tant que marques communautaires de termes descriptifs dans une langue ou sur le territoire d’un nouvel État membre si la date de dépôt de la demande de marque communautaire précède la date d’adhésion. Par exemple, un terme descriptif issu de la langue d’un nouvel État membre peut être rentré dans le langage courant ou être largement connu dans les anciens États membres (exemple: «vodka»). De même, des indications géographiques peuvent être déjà refusées comme étant des termes descriptifs (par exemple, Balaton ou Tokaj). Il y a également lieu de tenir compte des indications géographiques déjà protégées dans les nouveaux États membres et de la protection qui résulte de la législation communautaire ou de traités bilatéraux conclus entre les nouveaux États membres et l’Union européenne ou d’anciens États membres.
Plus précisément, les motifs de refus énoncés à l’article 7, paragraphe 1, points f) et g), du RMC, relatifs respectivement aux marques contraires à l’ordre public ou aux bonnes mœurs et aux marques trompeuses, sont uniquement concernés par cette disposition dans la mesure où le caractère trompeur ou l’atteinte à l’ordre public ou aux bonnes mœurs résulte d’une signification uniquement comprise dans une langue d’un nouvel État membre. L’Office interprète l’article 7, paragraphe 1, point f), du RMC conformément aux critères communautaires, quel que soit le niveau relatif de bonnes mœurs des différents pays de l’Union européenne.
Enfin, la disposition de l’article 165, paragraphe 2, du RMC ne concerne pas les motifs de refus énoncés à l’article 7, paragraphe 1, points e) et i), du RMC, qui portent respectivement sur les signes constitués exclusivement par la forme du produit lui- même, par la forme nécessaire à l’obtention d’un résultat technique ou par la forme qui donne une valeur substantielle au produit, et sur les badges et emblèmes non protégés par l’article 6 ter de la convention de Paris mais présentant un intérêt public particulier.
2.3 Caractère distinctif acquis par l’usage
Conformément à la pratique de l’Office, le caractère distinctif acquis par l’usage (article 7, paragraphe 3, du RMC) doit être présent à la date de dépôt et toujours l’être à la date de l’enregistrement de la marque communautaire. Lorsque le demandeur d’une marque communautaire dont la date de dépôt est antérieure à la date de l’adhésion est en mesure de démontrer que le caractère distinctif acquis existait à la date de dépôt de la demande, l’article 165, paragraphe 2, du RMC, exclut une objection fondée sur le motif que la marque n’a pas acquis un caractère distinctif par l’usage qui en a été fait dans les nouveaux États membres. Dès lors, le demandeur n’est pas tenu de prouver que la marque a acquis un caractère distinctif dans les nouveaux États membres.
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2.4 Mauvaise foi
L’Office considère le dépôt d’une demande de marque communautaire comme étant de mauvaise foi s’il a été effectué avant la date de l’adhésion et porte sur un terme descriptif, ou non enregistrable pour d’autres motifs, dans la langue d’un nouvel État membre dans le seul but d’obtenir des droits exclusifs sur un terme non enregistrable ou contestable pour d’autres motifs.
Ceci n’a pas d’incidences pratiques pendant la procédure d’examen car la mauvaise foi ne constitue pas un motif absolu de refus et en conséquence, l’Office n’a pas la possibilité de s’y opposer d’office. Il exercera son devoir à l’égard des dépôts effectués de mauvaise foi uniquement lorsqu’une demande en nullité lui sera présentée [article 52, paragraphe 1, point b), du RMC]. Les offices nationaux des nouveaux États membres sont également déterminés à agir contre les actions menées de mauvaise foi dans le contexte de l’élargissement. Les demandeurs doivent par conséquent garder à l’esprit que même en l’absence de motifs de refus au cours de l’enregistrement, l’enregistrement de leurs marques communautaires peut être contesté ultérieurement en vertu de l’article 52, paragraphe 1, point b, du RMC.
2.5 Transformation
Il est possible de demander la transformation d’une demande de marque communautaire en demande de marque nationale dans les nouveaux États membres à compter de la date de leur adhésion. La transformation est également possible lorsque la date de dépôt de la marque communautaire transformée est antérieure à la date de l’adhésion. Cependant, dans le cas d’un nouvel État membre, la demande transformée aura l’effet d’un droit antérieur régi par le droit national. Certains nouveaux États membres ont adopté des dispositions équivalentes à l’article 165 du RMC prévoyant que les marques communautaires étendues ont l’effet de droits antérieurs sur le territoire des nouveaux États membres uniquement à compter de la date de l’adhésion. En pratique, cela signifie que la date de la transformation dans un nouvel État membre ne peut être antérieure à la date de l’adhésion de cet État.
Si l’on prend le cas de l’adhésion de la Croatie par exemple, cela signifie que même si le dépôt d’une marque communautaire transformée remonte au 1er mai 2005 dans ce pays, la date de transformation sera non pas le 1er mai 2005 mais le 1er juillet 2013, c’est-à-dire la date d’adhésion de la Croatie.
La date de l’élargissement n’ouvre pas un nouveau délai de trois mois pour présenter une requête en transformation au titre de l’article 112, paragraphe 4, du RMC.
2.6 Autres conséquences pratiques
2.6.1 Dépôt auprès des offices nationaux
À compter de la date d’adhésion d’un nouvel État membre, une demande de marque communautaire peut également être déposée auprès de l’office national de cet État.
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2.6.2 Représentation professionnelle
À compter de la date de l’adhésion d’un nouvel État membre, les demandeurs (ainsi que les autres parties aux procédures devant l’Office) ayant leur siège ou domicile professionnel dans cet État ne doivent plus se faire représenter par un représentant professionnel. Par ailleurs, à compter de cette même date, les représentants établis dans le nouvel État membre peuvent figurer sur la liste des mandataires agréés tenue par l’Office conformément à l’article 93 du RMC et peuvent ainsi représenter les tiers devant l’Office.
2.6.3 Première et seconde langues
À compter de la date de l’adhésion d’un nouvel État membre (voir annexe 1), la ou les langue(s) officielle(s) de cet État peu(ven)t être utilisée(s) comme première langue pour les demandes de marque communautaire déposées à cette date ou postérieurement à cette date.
2.6.4 Traduction
Les demandes de marque communautaire dont la date de dépôt est antérieure à la date d’adhésion d’un nouvel État membre et les enregistrements de marque communautaire existants ne sont ni traduits ni publiés dans la langue de cet État. Les demandes de marque communautaire déposées à compter de la date d’adhésion d’un nouvel État membre sont traduites et publiées dans toutes les langues officielles de l’Union européenne.
2.6.5 Ancienneté
L’ancienneté d’une marque nationale enregistrée avant l’adhésion du nouvel État membre concerné ou même avant la création de l’Union européenne peut être revendiquée. Cette revendication peut cependant seulement être effectuée après la date d’adhésion. La marque enregistrée dans le nouvel État membre doit être «antérieure» à la marque communautaire. Dans la mesure où une marque communautaire étendue a, dans le nouvel État membre, l’effet d’un droit antérieur à compter de la date d’adhésion, la revendication d’ancienneté n’a de sens que lorsque la date de dépôt ou de priorité de la marque nationale antérieure précède la date d’adhésion.
Exemple 1: une même personne dépose une demande de marque communautaire le 1er avril 1996 et une demande de marque nationale en Roumanie le 1er janvier 1999. Après le 1er janvier 2007 (date de l’adhésion de la Roumanie), l’ancienneté de la demande de marque nationale roumaine peut être revendiquée.
Exemple 2: une même personne est titulaire d’un enregistrement international qui désigne d’abord l’Union européenne le 1er janvier 2005, puis la Roumanie le 1er janvier 2006. Après le 1er janvier 2007, l’ancienneté de la désignation roumaine peut être revendiquée même si celle-ci intervient ultérieurement à l’enregistrement international désignant l’Union européenne. En effet, la marque communautaire étendue prend effet à compter de la date d’adhésion du nouvel État membre (soit ici le 1er janvier 2007).
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2.6.6 Recherche
Les offices nationaux d’un nouvel État membre peuvent effectuer une recherche (article 38, paragraphes 2 et 3, du RMC) à compter de la date d’adhésion de cet État. Seules les demandes de marque communautaire dont la date de dépôt est égale ou postérieure à la date d’adhésion sont transmises à ces offices nationaux en vue de l’établissement de rapports de recherche.
3 Règles relatives à l’opposition et à l’annulation
1. Conformément à l’article 165, paragraphe 4, point b), du RMC, une demande de marque communautaire ne peut faire l’objet d’une opposition ou d’une déclaration de nullité au motif d’un droit national antérieur acquis dans un nouvel État membre avant la date d’adhésion de ce dernier.
Cependant, les demandes de marque communautaire déposées à la date de l’adhésion ou à compter de cette date ne sont pas soumises à cette clause dite de «grandfathering» et peuvent être rejetées sur opposition ou déclarées nulles en raison d’un droit national antérieur existant dans un nouvel État membre, sous réserve que le droit invoqué soit reconnu comme antérieur lors de la comparaison des deux dates de dépôt ou de priorité.
2. L’article 165, paragraphe 3, du RMC prévoit une exception à cette règle (transitoire) relative aux procédures d’opposition. Lorsqu’une demande de marque communautaire a été déposée au cours des six mois précédant la date d’adhésion, une opposition peut être formée s’il existait un droit antérieur dans un nouvel État membre lors de son adhésion, à condition que le droit en question
a) ait une date de dépôt ou de priorité antérieure et b) ait été acquis de bonne foi.
3. C’est la date de dépôt et non la date de priorité qui est décisive pour déterminer à quel moment une opposition peut être formée à l’encontre d’une demande de marque communautaire en raison de l’existence d’un droit antérieur dans un nouvel État membre. Concrètement, les conséquences des dispositions précitées transparaissent dans les exemples suivants liés à l’adhésion de la Croatie (1er juillet 2013):
a) Une demande de marque communautaire déposée avant le 1er janvier 2013 (la date de priorité n’est pas pertinente dans ce contexte) ne peut en aucun cas faire l’objet d’une opposition ou d’une déclaration de nullité au motif d’un droit national antérieur dans un nouvel État membre.
b) Une demande de marque communautaire dont la date de dépôt se situe entre le 1er janvier 2013 et le 30 juin 2013 (c’est-à-dire au cours des six mois précédant la date d’adhésion) peut faire l’objet d’une opposition par une marque croate, à condition que la date de dépôt ou de priorité de cette dernière soit antérieure à la date de dépôt ou de priorité de la demande de marque communautaire objet de l’opposition et que la marque nationale ait été demandée de bonne foi.
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c) Une demande de marque communautaire déposée à compter du 1er juillet 2013 inclus peut faire l’objet d’une opposition ou d’une déclaration de nullité s’il existe en Croatie une marque enregistrée ayant une date de dépôt ou de priorité antérieure en vertu des règles normalement en vigueur. L’acquisition de bonne foi ne constitue pas une condition. Ceci s’applique à l’ensemble des marques nationales et autres droits antérieurs non enregistrés déposés ou acquis dans un nouvel État membre préalablement à son adhésion.
d) Une demande de marque communautaire déposée à compter du 1er juillet 2013 inclus, mais dont la date de priorité est antérieure au 1er juillet 2013, peut faire l’objet d’une opposition ou d’une déclaration de nullité s’il existe en Croatie une marque nationale enregistrée ayant une date de dépôt ou de priorité antérieure en vertu des règles normalement en vigueur.
Cette exception transitoire se limite au droit de former une opposition et n’inclut pas le droit de présenter une demande d’annulation fondée sur un motif relatif. Cela signifie qu’après expiration du délai de six mois évoqué ci-avant, si aucune opposition n’a été introduite, la demande de marque communautaire ne peut plus faire l’objet d’une opposition ou d’une demande de déclaration de nullité.
4. Conformément à l’article 165, paragraphe 5, du RMC, l’utilisation d’une marque communautaire dont la date de dépôt est antérieure à la date d’adhésion d’un nouvel État membre peut être interdite, en vertu des articles 110 et 111, s’il existe une marque nationale antérieure enregistrée dans cet État et dont la date de dépôt ou de priorité précède la date d’adhésion et a été enregistrée de bonne foi.
Cette disposition s’applique en outre:
aux demandes de marques nationales déposées dans les nouveaux États membres, sous réserve qu’elles aient été enregistrées par la suite,
aux droits non enregistrés acquis dans les nouveaux États membres, visés à l’article 8, paragraphe 4, ou à l’article 53, paragraphe 2, du RMC à condition que la date d’acquisition du droit invoqué selon la législation nationale remplace la date de dépôt ou de priorité.
5. Lorsqu’une opposition se fonde sur une marque nationale enregistrée ou un autre droit dans le nouvel État membre, la possibilité de faire valoir ce droit valablement pour justifier l’opposition à l’encontre d’une demande de marque communautaire dépend du bien-fondé de cette opposition et ne relève pas d’une question de recevabilité.
6. L’acquisition de bonne foi de la marque nationale antérieure est présumée. Autrement dit, si la bonne foi est remise en question, l’autre partie à la procédure (le demandeur de la marque communautaire contestée dans le cas de l’article 165, paragraphe 4, du RMC ou bien le titulaire de la marque communautaire enregistrée dans le cas de l’article 165, paragraphe 5, du RMC) doit prouver que le titulaire du droit national antérieur obtenu dans un nouvel État membre a agi de mauvaise foi lors du dépôt de la demande nationale ou de l’acquisition du droit par un autre moyen.
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7. L’article 165 du RMC ne prévoit aucune disposition transitoire concernant les exigences liées à l’usage de la marque communautaire (articles 15 et 42 du RMC). Dans le cadre d’une procédure d’opposition, l’obligation de faire un usage sérieux de la marque intervient lorsque, sur requête du demandeur de la marque communautaire contestée, celui qui a formé opposition doit apporter la preuve de l’usage de la marque antérieure conformément à l’article 42, paragraphes 2 et 3, du RMC et à la règle 22 du REMC. Des problèmes relatifs à l’élargissement peuvent se poser en ce qui concerne le moment et le lieu d’utilisation de la marque antérieure.
Il convient de distinguer deux cas:
a) La marque antérieure est une marque nationale enregistrée dans un nouvel État membre.
Celui ayant formé opposition doit alors prouver que la marque antérieure a fait l’objet d’un usage sérieux. Cette situation ne peut survenir que dans le cadre d’une opposition à l’encontre soit d’une demande de marque communautaire dont la date de dépôt est postérieure à la date d’adhésion, soit d’une demande de marque communautaire déposée au cours des six mois précédant la date d’adhésion.
La marque nationale antérieure doit avoir fait l’objet d’un usage sérieux sur le territoire où elle est protégée au cours des cinq ans précédant la date de publication de la demande de marque communautaire contestée. À cet égard, il est indifférent que cet usage se rapporte ou non à une période pendant laquelle l’État concerné était déjà membre de l’Union européenne. En d’autres termes, la preuve de l’usage peut également porter sur une période antérieure à la date d’adhésion (soit avant le 1er juillet 2013 pour la Croatie).
b) La marque antérieure est une marque communautaire.
Lorsque le titulaire de la marque communautaire antérieure peut apporter la preuve de l’usage uniquement sur le territoire d’un nouvel État membre ou de plusieurs nouveaux États membres, étant donné que l’obligation d’utiliser la marque porte sur la période de cinq ans qui précède la date de publication de la demande de marque communautaire faisant l’objet d’une opposition, l’usage dans un nouvel État membre (ou dans plusieurs nouveaux États membres) ne peut être pris en compte que si l’État en question était membre de l’Union à la date de publication de la demande de marque communautaire contestée (l’article 43, paragraphe 1, du RMC dispose qu’il doit s’agir d’un usage «dans la Communauté»). Puisqu’avant leur date d’adhésion, les nouveaux États ne constituent pas des «États membres de la Communauté», il est donc impossible de prouver l’usage de la marque «dans la Communauté».
En conséquence, le délai de cinq ans ne devrait commencer à courir qu’à partir de la date d’adhésion considérée.
8. Il n’y a aucun problème transitoire particulier lié à la procédure d’opposition. Le droit conféré au titre de l’article 119, paragraphe 7, du RMC de choisir la langue de procédure parmi les langues officielles de l’Union européenne autres que les cinq langues de l’Office s’applique à compter de la date de l’adhésion.
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Annexe 1
États membres Date d’adhésion Langue Chypre, Estonie, Hongrie, Lettonie, Lituanie, Malte, Pologne, République tchèque, Slovaquie et Slovénie.
1er mai 2004 estonien, hongrois, letton, lituanien, maltais, polonais, slovaque, slovène et tchèque
Bulgarie et Roumanie 1er janvier 2007 bulgare et roumain Croatie 1er juillet 2013 croate
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE B
EXAMEN
SECTION 1
PROCÉDURES
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Table des matières
1 Introduction: vue d’ensemble de la procédure d’examen...................... 3
2 Recherche .................................................................................................. 4 2.1 Recherche communautaire........................................................................4 2.2 Recherche nationale .................................................................................. 4
3 Principes généraux de la procédure d’examen ...................................... 5 3.1 Aspects procéduraux concernant les observations de tiers et examen
des motifs absolus..................................................................................... 5 3.2 Décisions ....................................................................................................6
3.2.1 Recours .......................................................................................................... 6
3.3 Enregistrements internationaux désignant l’Union européenne ............7
4 Publication ................................................................................................. 7
5 Modifications de la demande de marque communautaire ..................... 8 5.1 Retrait de la demande de marque communautaire ..................................8
5.1.1 Déclaration de retrait ...................................................................................... 8 5.1.2 Caractère inconditionnel et contraignant de la déclaration ............................ 9 5.1.3 Mesures ........................................................................................................ 10
5.2 Limitation de la liste des produits et services dans une demande de marque communautaire ........................................................................... 10 5.2.1 Recevabilité procédurale d’une limitation..................................................... 10
5.3 Autres modifications................................................................................ 11 5.3.1 Nom, adresse et nationalité du demandeur ou de son représentant ........... 11 5.3.2 Autres éléments de la demande................................................................... 12 5.3.3 Inscription et publication des modifications .................................................. 13
5.4 Division de la demande de marque communautaire.............................. 13 5.4.1 Conditions..................................................................................................... 14 5.4.2 Recevabilité .................................................................................................. 15 5.4.3 Nouveau dossier et publication de celui-ci ................................................... 15
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1 Introduction: vue d’ensemble de la procédure d’examen
Cette partie des Directives donne une vue d’ensemble de la procédure d’examen, du dépôt à la publication de la demande de marque communautaire.
Une fois que la demande de marque communautaire a été déposée, une date de dépôt provisoire est accordée et l’Office délivre un récépissé. À ce stade initial, l’Office vérifie simplement que certaines conditions du règlement sur la marque communautaire (RMC) concernant la date de dépôt ont été respectées. La date de dépôt devient définitive quand la taxe de dépôt a été acquittée.
Le récépissé doit être soigneusement vérifié par le demandeur et l’Office doit être informé de toute donnée incorrecte. Le demandeur ne peut corriger que des informations qui ont une incidence sur la date de dépôt, telles que son nom, la représentation de la marque et la liste des produits et services, pour autant que l’Office en soit informé à la même date que celle de la présentation des informations incorrectes. Après cette date, toute modification sera soumise aux dispositions du RMC et du REMC, en particulier l’article 17 du RMC et l’article 43 du RMC. Pour de plus amples informations, voir le paragraphe 5 ci-après et les Directives, Partie B, Examen, Section 2, Formalités.
Une fois le récépissé délivré, l’Office procède à une vérification linguistique des éléments verbaux de la marque dans toutes les langues officielles de l’UE, suivie par une recherche communautaire.
Le paiement de la taxe de dépôt et de la taxe de recherches nationales (le cas échéant) est validé au plus tard un mois après le dépôt de la demande de marque communautaire. Si le demandeur a demandé que soient effectuées des recherches nationales et a payé la taxe correspondante, l’Office transmet la demande aux offices des États membres qui effectuent des recherches nationales. Pour de plus amples informations sur les recherches, voir le paragraphe 2 ci-après. Pour de plus amples informations sur les taxes, voir les Directives, Partie A, Dispositions générales, Section 3, Paiement des taxes et des frais.
Pendant la procédure d’examen, l’Office examine les choses suivantes: la date de dépôt, les formalités, la classification, la priorité et/ou l’ancienneté le cas échéant, les règlements régissant l’usage de la marque pour les marques collectives, et les motifs absolus de refus. Toutes ces étapes de l’examen peuvent être réalisées en parallèle car la procédure d’examen ne suit pas une séquence stricte.
Toute irrégularité est signifiée au demandeur, qui dispose alors d’un délai de deux mois pour y remédier et/ou présenter des observations. Toute décision de rejet partiel ou total d’une demande de marque communautaire doit indiquer les motifs pour lesquels la demande de marque communautaire est rejetée et informer le demandeur de ses possibilités de recours. Pour de plus amples détails, voir les paragraphes 3.2 et 3.2.1 ci-après.
Les demandes conformes aux exigences du règlement sont acceptées puis publiées et envoyées aux services compétents afin d’être traduites dans toutes les langues officielles de l’UE.
La dernière étape de la procédure d’examen est la publication de la demande dans la Partie A du Bulletin des marques communautaires. La publication a lieu un mois après
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la notification des rapports de recherche (recherche communautaire et recherche nationale si elle a été demandée), ce qui permet au demandeur de retirer sa demande s’il le souhaite. Pour de plus amples détails sur la publication, voir le paragraphe 4 ci- après.
2 Recherche
Article 38 du RMC Règle 5 bis et règle 10 du REMC Communications 4/99, 5/00 et 4/01 du président de l’Office
Le rapport de recherche identifie les droits antérieurs qui pourraient être incompatibles avec la demande de marque communautaire. Toutefois, même si le rapport de recherche n’indique pas de droits antérieurs similaires, une opposition peut encore être formée contre la demande de marque communautaire après sa publication.
Les résultats du rapport de recherche ont une valeur purement informative et donnent au demandeur la possibilité de retirer sa demande de marque communautaire avant publication de cette dernière. Les titulaires de marques communautaires antérieures sont informés des demandes de nouvelles marques communautaires similaires au moyen de lettres de surveillance.
Les éléments figuratifs sont classés selon la classification de Vienne.
2.1 Recherche communautaire
Après avoir délivré le récépissé, l’Office rédige un rapport de recherche communautaire couvrant:
1. les demandes de marque communautaire dont la date de dépôt ou de priorité est antérieure à celle de la demande en question;
2. les marques communautaires déjà enregistrées; et 3. les enregistrements internationaux antérieurs désignant l’Union européenne.
La recherche communautaire tient compte de la date de dépôt, des éléments verbaux de la marque, des éléments figuratifs de la marque (le cas échéant) et des classes de produits et services selon la classification de Nice. La recherche vise à identifier les marques antérieures similaires déposées pour les mêmes classes ou pour des classes dont l’Office considère qu’elles contiennent des produits et/ou services similaires.
Le rapport de recherche communautaire est envoyé au demandeur par courrier ordinaire ou par voie électronique. Une fois publiée la nouvelle demande, l’Office envoie une lettre de surveillance aux titulaires des marques ou demandes de marques communautaires antérieures citées dans le rapport de recherche.
2.2 Recherche nationale
Les demandes de marque communautaire qui incluent une demande valable de recherches nationales sont envoyées aux offices nationaux participant au système de recherche une fois qu’une date de dépôt a été accordée et que la classification a été
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validée. Une demande est valable si elle est introduite au moment du dépôt et si la taxe correspondante a été acquittée.
Les rapports nationaux de recherche sont établis par les offices qui participent au système de recherche.
Lorsqu’une demande de recherches nationales est introduite, tous les offices nationaux participant au système de recherche mènent des recherches dans un délai de deux mois conformément à la règle 5 bis du REMC. Cette approche du tout ou rien signifie que le demandeur ne peut pas choisir les offices participants qu’il souhaite voir mener la recherche.
Les titulaires d’enregistrements internationaux (EI) désignant l’UE qui souhaitent que soient effectuées des recherches nationales doivent envoyer leur demande et payer la taxe correspondante à l’OHMI dans un délai d’un mois suivant la date de notification de l’enregistrement international par l’Organisation mondiale de la propriété intellectuelle (OMPI).
Les offices nationaux sont responsables du format et du contenu des rapports nationaux de recherche. Le rôle de l’Office se limite à recevoir les rapports nationaux et à les envoyer avec le rapport de recherche communautaire. Le demandeur est libre de demander des informations complémentaires directement aux offices nationaux.
3 Principes généraux de la procédure d’examen
Cette section décrit uniquement les aspects procéduraux de l’examen des motifs absolus de refus. Pour les aspects de fond de l’examen des motifs absolus de refus, se référer aux Directives, Partie B, Examen, Section 4, Motifs absolus de refus, Marques collectives, Caractère distinctif acquis.
Le RMC vise à permettre aux titulaires d’enregistrer un droit valable sur tout le territoire de l’Union européenne à condition qu’il n’enfreigne pas les droits d’autrui. Bien que des droits ne puissent être conférés que conformément aux dispositions du RMC, le rôle de l’Office n’est pas de faire obstacle aux demandes, mais au contraire de les faciliter.
Dans le cadre de l’examen de chaque demande, la marque et les produits ou services visés par la demande doivent être pris en compte. L’Office doit tenir compte de la nature de l’activité commerciale concernée, de la manière dont les produits ou services sont fournis et du public pertinent, par exemple s’il s’agit de spécialistes ou du grand public.
3.1 Aspects procéduraux concernant les observations de tiers et examen des motifs absolus
Article 40 du RMC Communication 2/09 du président de l’Office
Des observations relatives à l’existence d’un motif absolu de refus peuvent être présentées par des tiers après la publication d’une demande. Les observations de tiers reçues avant la publication d’une demande de marque communautaire sont traitées au cours de l’examen des motifs absolus de refus. L’Office accepte les observations reçues pendant le délai d’opposition (trois mois à compter de la date de publication) ou
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déposées avant la clôture des procédures d’oppositions en cours. Les observations doivent être déposées dans une des langues de l’Office, à savoir, l’allemand, l’anglais, l’espagnol le français ou l’italien.
L’Office délivre un récépissé à la personne ayant formulé les observations (l’observateur), confirmant que lesdites observations ont été reçues et transmises au demandeur. La personne ayant formulé les observations ne devient pas partie à la procédure devant l’Office mais elle peut utiliser les outils de recherche en ligne pour vérifier le statut de la demande de marque communautaire concernée. L’Office n’informe pas la personne ayant formulé les observations des mesures éventuellement prises, telles que la formulation d’une objection à la suite de ces observations.
Toutes les observations sont transmises au demandeur, qui est invité à présenter ses commentaires le cas échéant. L’Office examine si les observations sont fondées, c’est- à-dire s’il existe un motif absolu de refus. Le cas échéant, l’Office émet une objection et peut rejeter la demande de marque communautaire si les commentaires du demandeur ou la limitation de la liste des produits et services ne résistent pas à l’objection formulée par l’Office.
Lorsqu’un point soulevé dans les observations a déjà été analysé au cours de l’examen d’une demande, il est peu probable qu’il donne lieu à des doutes sérieux après la publication.
L’Office peut également rouvrir la procédure d’examen des motifs absolus ou de tout autre motif, et ce à n’importe quel moment précédant l’enregistrement, par exemple lorsque des observations de tiers ont été présentées avant la publication de la demande ou lorsque l’Office relève de sa propre initiative qu’un motif de refus n’a pas été examiné. Après la publication de la demande, cette faculté ne peut être utilisée que dans des cas ne présentant aucune ambiguïté.
Pour de plus amples informations, voir les Directives, Partie B, Examen, Section 4, Motifs absolus de refus.
3.2 Décisions
Dans tous les cas où l’Office adopte des décisions ne faisant pas droit aux demandeurs, il doit motiver sa décision. Il doit examiner l’ensemble des arguments soulevés par le demandeur dans ses observations, dans la mesure où ils sont pertinents. Les décisions doivent non seulement faire référence aux parties pertinentes du RMC et du REMC mais également, être expressément motivées, sauf dans les cas les plus évidents (par exemple, en l’absence d’un document ou en cas de défaut de paiement d’une taxe).
Lorsque, par exemple, une décision est rendue sur la base de recherches effectuées sur internet, l’Office doit apporter au demandeur la preuve de ces recherches.
3.2.1 Recours
Articles 58 et 65 du RMC Décision 2009-1 du 16/06/2009 du présidium des chambres de recours
Les demandeurs disposent d’un droit de recours contre toute décision mettant fin à une procédure sans avoir fait droit à leurs prétentions. En pratique, toute décision de
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l’Office qui met fin à une procédure et que le demandeur conteste relève de cette catégorie. Toute communication écrite d’une telle décision doit également informer le demandeur de ce qu’un recours peut être formé contre la décision dans un délai de deux mois.
Les recours ont un effet suspensif. Durant le délai pendant lequel un recours peut être introduit, l’Office ne doit prendre aucune mesure sur laquelle il ne soit pas aisé de revenir (p. ex. publication ou saisie dans le registre). Il en va de même pour le délai courant jusqu’à l’adoption d’une décision finale si l’affaire est portée devant le Tribunal ou la Cour de justice de l’Union européenne (CJUE) par une recours formé au titre de l’article 65.
3.3 Enregistrements internationaux désignant l’Union européenne
Des informations sur l’examen d’une demande de marque communautaire résultant de la transformation d’un enregistrement international désignant l’Union européenne figurent dans les Directives, Partie M, Marques internationales.
4 Publication
Article 39 du RMC Règles 12, 14 et 46 du REMC
La publication est réalisée une fois que les rapports de recherches ont été envoyés au demandeur, à condition que la demande remplisse toutes les conditions requises en vue de son acceptation.
Les demandes sont publiées dans toutes les langues officielles de l’UE.
L’examinateur doit veiller à ce que figurent les éléments suivants, le cas échéant:
(a) numéro du dossier de demande (b) date de dépôt (c) reproduction de la marque (d) indication de ce qu’il s’agit d’une marque collective (e) indication du type de marque autre qu’une marque verbale, par exemple une
marque figurative, une marque tridimensionnelle, un hologramme, une marque sonore, une marque de couleur en tant que telle et des marques «autre»
(f) description de la marque (g) indication de la ou des couleurs (h) éléments figuratifs selon la classification de Vienne (i) déclaration de renonciation (j) acquisition du caractère distinctif par l’usage (k) nom, adresse et nationalité du demandeur (l) nom et adresse du représentant (m) première et deuxième langues (n) produits et services selon la classification de Nice (o) indications relatives à la priorité, le cas échéant (p) indications relatives à la priorité d’exposition (q) indications relatives à l’ancienneté (r) indications relatives à la transformation.
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Une fois que l’examinateur a vérifié que tous ces éléments sont corrects et après que l’Office a reçu la traduction dans toutes les langues officielles de l’UE, la demande est envoyée à l’équipe des publications.
5 Modifications de la demande de marque communautaire
Cette partie des Directives ne concerne que les questions pertinentes relatives aux modifications d’une demande de marque communautaire.
Pour les modifications apportées aux marques communautaires enregistrées, voir les Directives, Partie E, Opérations d’enregistrement, Section 1, Modifications d’un enregistrement.
5.1 Retrait de la demande de marque communautaire
Article 43, article 58, paragraphe 1, article 64, paragraphe 3, article 65, paragraphe 5 et article 119 du RMC Article 101 et article 102, paragraphe 2, du règlement de procédure du Tribunal Article 51 du règlement de procédure de la Cour de justice
5.1.1 Déclaration de retrait
Une demande de marque communautaire peut être retirée à tout moment tant qu’aucune décision finale la concernant n’a été prise.
Après la décision en première instance de l’Office, au niveau du recours, une demande peut être retirée pendant le délai de recours de deux mois même si aucun recours n’a effectivement été formé ou bien jusqu’à ce que le recours ait fait l’objet d’une décision de la chambre de recours. Cela s’applique à la fois aux procédures ex parte et inter partes (voir la décision du 27 septembre 2006 dans l'affaire R 0331/2006-G, «Optima» et la décision du 23 avril 2014, R 0451/2014-1, «SUPERLITE», paragraphe 18).
Au niveau du Tribunal, une demande peut être retirée dans le délai de recours de deux mois, augmenté d’un délai de distance de dix jours, conformément à l’article 102, paragraphe 2, du règlement de procédure du Tribunal. Au niveau de la Cour de justice de l’Union européenne (CJUE), le délai prescrit de deux mois pour former un pourvoi devant la CJUE contre une décision des chambres de recours est augmenté d’un délai de distance forfaitaire de dix jours (ordonnance du 19 juillet 2003 dans l’affaire T-15/03, «BLUE»). La décision de la chambre de recours ne peut être considérée comme définitive dans ce délai. La demande peut aussi être retirée jusqu’à l’achèvement de la procédure de recours devant le Tribunal
Au niveau de la CJUE, une demande peut être retirée dans le délai de deux mois pour former un pourvoi devant la CJUE, augmenté d’un délai de distance de dix jours, conformément à l’article 51 du règlement de procédure de la Cour de justice, ou avant que la CJUE n’ait rendu une décision finale et contraignante (voir l’ordonnance de la Cour du 18 septembre 2012, C-588/11, «OMNICARE»).
Lorsque l’affaire est pendante devant le Tribunal ou la Cour de justice, le demandeur doit demander à l’Office (et non au Tribunal ou à la Cour de justice) de la retirer. L’Office informe ensuite le Tribunal ou la Cour de justice de ce qu’il juge ou non le
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retrait acceptable et valable, mais le retrait n’est pas effectué tant que le Tribunal ou la Cour de justice n’a pas rendu de décision finale sur la question (voir par analogie l’arrêt du 16 mai 2013, T-104/12, «VORTEX»).
Toute déclaration de retrait présentée après l’expiration du délai de recours est irrecevable.
La déclaration de retrait doit revêtir la forme écrite. L’Office ne fournit pas de formulaire spécial. La déclaration n’est pas subordonnée au paiement d’une taxe.
La déclaration de retrait peut être rédigée dans la première ou la deuxième langue indiquée par le demandeur dans sa demande de marque communautaire.
Ce principe est également valable dans le cadre d’une procédure d’opposition. Toutefois, pour de plus amples informations sur les procédures dans lesquelles une limitation est apportée dans une langue autre que celle de la procédure d’opposition, voir les Directives, Partie C, Opposition, Section 1, Questions procédurales.
Pour de plus amples détails sur les limitations, voir le paragraphe 5.2 ci-après.
Bien que l’article 43, paragraphe 1, du RMC mentionne uniquement le retrait d’une demande de marque communautaire, le Tribunal a considéré que les oppositions peuvent aussi être retirées de la même manière que celle décrite ci-dessus (décision du 7 juillet 2014, R 1878/2013-1-«HOT CHILLYS», paragraphe 15).
5.1.2 Caractère inconditionnel et contraignant de la déclaration
Une déclaration de retrait prend effet dès sa réception par l’Office pour autant qu’un retrait de ladite déclaration ne parvienne pas à l’Office le même jour.
Cela signifie que si une déclaration de retrait et une lettre de retrait de cette déclaration parviennent à l’Office le même jour (indépendamment de l’heure effective de réception), la lettre de retrait annule la déclaration de retrait.
Une déclaration devenue effective ne peut pas faire l’objet d’un retrait.
Toute déclaration de retrait contenant des conditions ou des limites de temps est nulle. Ainsi, une déclaration de retrait ne peut exiger que l’Office adopte une décision particulière ou, dans le cadre d’une procédure d’opposition, que l’autre partie fasse une déclaration procédurale. Une telle exigence sera considérée comme une simple suggestion visant à permettre la résolution de l’affaire; l’Office informera l’opposant en conséquence et pourra inviter les parties à parvenir à un accord amiable. En outre, une déclaration de retrait est sans effet si elle porte sur certains produits et/ou services (retrait partiel) et qu’elle est soumise à la condition que l’Office accepte la demande pour les produits et/ou services restants. Au contraire, une telle déclaration sera considérée comme une invitation faite à l’Office de dresser une liste acceptable de produits et de services.
Lorsqu’un demandeur donne suite à un acte officiel en déposant une liste limitée de produits et de services (retrait partiel), l’Office vérifie si le retrait des produits et des services restants est déclaré sans équivoque et si la liste modifiée des produits et des services a le caractère d’une proposition ou contre-proposition du demandeur sous réserve d’acceptation par l’Office.
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5.1.3 Mesures
L’Office donne suite à la déclaration de retrait, veille à ce que le retrait total ou partiel soit publié au Bulletin si la demande de marque communautaire a déjà été publiée et classe le dossier de la demande de marque communautaire en cas de retrait total.
Pour de plus amples informations sur les conséquences d’un retrait total ou partiel au cours d’une procédure d’opposition, voir les Directives, Partie C, Opposition, Section 1, Questions procédurales.
Pour des informations détaillées sur le remboursement des taxes de dépôt, voir les Directives, Partie A, Dispositions générales, Section 3, Paiement des taxes et des frais.
5.2 Limitation de la liste des produits et services dans une demande de marque communautaire
Articles 43 et 119 du RMC
Le demandeur peut à tout moment limiter la liste des produits et des services de sa demande de marque communautaire, que cette limitation se fasse de sa propre initiative, en réponse à une objection formulée concernant la classification ou les motifs absolus de refus, ou dans le cadre d’une procédure d’opposition.
En principe, les déclarations de limitations suivent les mêmes règles que les déclarations de retrait. Voir le paragraphe 5.1 ci-dessus.
Lorsque l’affaire est pendante devant le Tribunal ou la Cour de justice, la limitation doit être présentée à l’Office (et non auprès du Tribunal ou de la Cour de justice). L’Office, qu’il considère la limitation demandée acceptable et valable ou non, en informe le Tribunal ou la Cour de justice, mais la limitation n’est pas appliquée tant que le Tribunal ou la Cour de justice n’a pas rendu de décision finale sur la question (voir par analogie l’arrêt du 16/05/2013, T-104/12, «VORTEX»).
5.2.1 Recevabilité procédurale d’une limitation
La limitation doit être recevable sur le plan procédural, voir paragraphe 5.1.2 ci-dessus.
Par principe, une limitation produit des effets à compter de la date à laquelle elle est reçue par l’Office. La limitation ne peut être retirée que si la lettre de retrait la concernant est reçue le même jour que la demande de limitation elle-même.
Deux exigences doivent être respectées pour qu’une limitation soit recevable:
1. Le nouveau libellé ne doit pas conduire à une extension de la liste des produits et des services.
2. La limitation doit constituer une description valable des produits et des services et ne s’appliquer qu’aux produits et aux services acceptables apparaissant dans la demande originale de marque communautaire. Pour de plus amples détails sur les limitations d’une demande de marque communautaire, voir les Directives, Partie B, Examen, Section 3, Classification.
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Si ces exigences ne sont pas satisfaites, l’Office doit refuser la limitation proposée et la liste des produits et services demeure identique (décision du 14 octobre 2013, R 1502/2013-4-«DARSTELLUNG EINES KREISES», paragraphes 12 à 16).
5.3 Autres modifications
Article 43, paragraphe 2, du RMC Règles 13 et 26 du REMC
Le présent paragraphe et les dispositions légales susvisées concernent uniquement les modifications de la demande de marque communautaire demandées par le demandeur de sa propre initiative et non les modifications ou limitations apportées à la suite d’une procédure d’examen, d’opposition ou de recours en raison d’une décision d’un examinateur, de la division d’opposition ou de la chambre de recours.
De la même manière, le présent paragraphe ne s’applique pas aux rectifications des erreurs figurant dans les publications de l’Office, qui sont réalisées d’office en vertu de la règle 14 du REMC.
Les modifications nécessitent une requête écrite formulée conformément au régime linguistique (pour plus d’informations, voir les Directives, Partie B, Examen, Section 2, Examen des formalités). Elles ne sont subordonnées au paiement d’aucune taxe.
Les éléments ci-après d’une demande de marque communautaire peuvent être modifiés:
le nom et l’adresse du demandeur ou de son représentant (voir le point 5.3.1 ci- après);
les fautes d’expression ou de transcription ou les erreurs manifestes, pour autant qu’une telle rectification n’affecte pas substantiellement la marque (pour de plus amples détails sur de telles modifications, voir les Directives, Partie B, Examen, Section 2, Formalités);
la liste des produits et des services (voir le point 5.2 ci-dessus).
5.3.1 Nom, adresse et nationalité du demandeur ou de son représentant
Règle 1, paragraphe 1, points b) et e), règles 26 et 84 du REMC Article 1, paragraphe 1, point b), article 19, paragraphe 7, et article 69, paragraphe 2, point d), du REDC
Le nom et l’adresse d’un demandeur ou de son représentant désigné peuvent être librement modifiés pour autant que:
toute modification dans le nom du demandeur ne résulte pas d’un transfert,
et
s’agissant du nom du représentant, il n’y ait pas de substitution d’un représentant par un autre.
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L’indication de la nationalité d’une personne morale peut également être modifiée librement pour autant que cette modification ne résulte pas d’un transfert.
Une modification du nom d’un demandeur qui n’affecte pas l’identité du demandeur est acceptable, tandis qu’une modification de l’identité du demandeur constitue un transfert. Pour de plus amples informations sur la procédure applicable dans les cas où demeure une incertitude sur le point de savoir si la modification est considérée comme un transfert, voir les Directives, Partie E, Opérations d’enregistrement, Section 3, Marques communautaires en tant qu’objets de propriété, Chapitre 1, Transfert.
Les modifications du nom d’un représentant sont également limitées à celles qui n’affectent pas l’identité du représentant désigné, par exemple en cas de modification du nom du représentant (à la suite d’un mariage/divorce) ou du nom d’un groupement de représentants. Il convient de distinguer une telle modification de nom de la substitution d’un représentant par un autre, cette dernière étant soumise aux règles qui régissent la désignation des représentants. Pour de plus amples informations concernant les représentants, voir les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle.
Les modifications de nom, d’adresse ou de nationalité peuvent résulter d’un changement de circonstances ou d’une erreur commise lors du dépôt.
La demande de modification du nom ou de l’adresse doit être introduite par le demandeur ou son représentant et doit contenir le numéro de la demande de marque communautaire ainsi que le nom et l’adresse du demandeur ou de son représentant, tels qu’ils sont enregistrés dans le dossier et tels qu’ils doivent être modifiés.
Il n’est pas nécessaire d’apporter la preuve de la modification. La requête en modification du nom ou de l’adresse n’est pas subordonnée au paiement d’une taxe.
Le demandeur doit indiquer son nom et son adresse officielle dans une demande introduite dans un format spécifique conforme aux dispositions légales précitées, et il peut les modifier ultérieurement en ayant recours au même format. Le nom et l’adresse seront enregistrés.
Les personnes morales ne peuvent avoir qu’une seule adresse officielle. En cas de doute, l’Office peut demander des preuves de la forme légale, du pays de constitution et/ou de l’adresse. Le nom et l’adresse officiels sont retranscrits en tant que domicile élu par défaut. Dans l’idéal, le demandeur ne devrait avoir qu’un seul domicile élu. Les modifications de la désignation officielle du demandeur ou de son adresse officielle seront enregistrées pour toutes les demandes de marque communautaire, les marques communautaires enregistrées et les dessins ou modèles communautaires enregistrés et, contrairement au domicile élu, elles ne peuvent pas être enregistrées uniquement pour des portefeuilles spécifiques de droits. En principe, ces règles s’appliquent mutatis mutandis aux représentants.
5.3.2 Autres éléments de la demande
D’autres éléments d’une demande de marque communautaire peuvent aussi être modifiés, tels que la représentation, le type de marque, la description de la marque et les déclarations de renonciation.
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À titre d’exemple, une erreur manifeste dans une revendication de priorité concernant l’indication du pays dans lequel la marque antérieure a été déposée et la date de dépôt peut être corrigée puisque la pièce présentée à l’appui de la revendication de priorité démontrera de manière manifeste quelle est la version correcte.
Pour de plus amples informations sur ces modifications, voir les Directives, Partie B, Examen, Section 2, Formalités.
5.3.3 Inscription et publication des modifications
Article 41, paragraphe 2, du RMC
Lorsqu’elle est acceptée, la modification est inscrite dans le dossier.
Si la demande de marque communautaire n’a pas encore été publiée, elle est publiée au Bulletin des marques communautaires sous sa forme modifiée.
Si la demande de marque communautaire a déjà été publiée, et (seulement) si la modification concerne la liste des produits et des services ou la représentation de la marque, la demande de marque communautaire sera publiée au Bulletin des marques communautaires sous sa forme modifiée. La publication de la demande modifiée peut faire courir un nouveau délai d’opposition de trois mois.
Toute autre modification ne fera pas l’objet d’une publication isolée, mais apparaîtra uniquement dans la publication de l’enregistrement.
5.4 Division de la demande de marque communautaire
Article 44 du RMC Règle 13 bis du REMC
Une demande de marque communautaire peut être divisée en plusieurs parties non seulement par suite d’un transfert partiel (voir les Directives, Partie E, Opérations d’enregistrement, Section 3, Marques communautaires en tant qu’objets de propriété, Chapitre 1, Transfert), mais aussi à l’initiative du demandeur de la marque communautaire. La division est particulièrement utile pour isoler une demande de marque communautaire contestée pour certains produits ou services tout en maintenant la demande initiale pour le reste. Pour de plus amples informations sur la division de marques communautaires, voir les Directives, Partie E, Opérations d’enregistrement, Section 1, Changements d’enregistrement.
Étant donné que le transfert partiel est gratuit et implique un changement de propriété, la requête en division d’une demande de marque communautaire est subordonnée au paiement d’une taxe et la demande de marque communautaire relève toujours du même demandeur. À défaut de paiement de la taxe, la requête est réputée ne pas avoir été déposée. La requête peut être présentée dans la première ou la deuxième langue indiquée par le demandeur dans sa demande de marque communautaire.
La division n’est pas possible pour les enregistrements internationaux en vertu du protocole de Madrid qui désignent l’UE. Le registre international est tenu par l’OMPI, et l’OHMI n’est pas compétent pour diviser un enregistrement international désignant l’UE.
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5.4.1 Conditions
Une demande de division doit comporter les renseignements suivants:
le numéro de dossier attribué à la demande de marque communautaire à diviser;
le nom et l’adresse ou le nom et le numéro d’identification du demandeur;
la liste des produits et des services visés par la demande divisionnaire ou la liste des produits et des services visés par chaque demande divisionnaire, si plus d’une nouvelle demande doit être créée;
la liste des produits et des services demeurant dans la demande originale de marque communautaire.
En outre, les produits et les services visés par la demande divisionnaire ne peuvent recouvrir ceux de la liste des produits et services demeurant dans la demande originale.
Toute irrégularité à cet égard est notifiée au demandeur qui dispose d’un délai de deux mois pour y remédier. S’il n’est pas remédié à l’irrégularité dans ce délai, la demande de division est rejetée.
Il existe également des périodes au cours desquelles la demande de division est irrecevable pour des raisons d’économie procédurale ou de sauvegarde des droits de tiers. Ces périodes sont les suivantes:
1. Au cours d’une procédure d’opposition, seuls les produits et les services non contestés peuvent être divisés. Il en va de même si l’affaire est pendante devant la chambre de recours, le Tribunal ou la Cour de justice. L’Office interprète les dispositions légales susvisées en ce sens qu’elles empêchent le demandeur de diviser tout ou partie des produits contestés pour former une nouvelle demande, ayant pour effet de devoir scinder la procédure d’opposition. Si une telle demande de division est présentée, le demandeur a la possibilité de la modifier en divisant les produits et services non contestés.
2. La division est exclue pendant le délai d’opposition de trois mois suivant la publication de la demande. Accepter une division pendant cette période serait contraire à l’objectif de ne pas diviser une procédure d’opposition et porterait préjudice aux tiers qui doivent se fier au Bulletin des marques communautaires pour connaître les éléments auxquels ils doivent s’opposer.
3. La division est également irrecevable pendant la période précédant l’octroi d’une date de dépôt, ce qui ne correspond pas forcément au premier mois suivant le dépôt. Pour de plus amples informations sur la date de dépôt, voir les Directives, Partie B, Examen, Section 2, Formalités.
À toutes fins utiles, au cours de la période suivant la publication de la demande, une division n’est recevable que si une opposition a été formée contre la demande, et uniquement pour la partie non contestée. L’objectif des dispositions citées est de permettre au demandeur d’enregistrer rapidement sa marque pour les produits non contestés, sans devoir attendre l’issue d’une longue procédure d’opposition.
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5.4.2 Recevabilité
Article 44, paragraphe 6, du RMC
Si l’Office accepte la déclaration de division, une nouvelle demande est créée à la date de l’acceptation sans effet rétroactif à la date de la déclaration.
La nouvelle demande conserve la date de dépôt ainsi que toute date de priorité et d’ancienneté. L’effet d’ancienneté deviendra alors partiel.
Toutes les requêtes et demandes introduites et toutes les taxes payées avant la date de réception par l’Office de la déclaration de division sont réputées avoir été introduites ou payées également en ce qui concerne la demande divisionnaire. Les taxes dûment acquittées pour la demande originale ne sont toutefois pas remboursables.
Les conséquences pratiques de cette disposition peuvent être illustrées par les exemples suivants:
si une demande d’enregistrement d’une licence a été présentée et que le paiement de la taxe d’enregistrement d’une licence a été reçu par l’Office avant la déclaration de division, la licence est enregistrée sur la base de l’enregistrement initial et inscrite dans le dossier du nouvel enregistrement. Aucune taxe supplémentaire n’est due;
si une demande de marque communautaire dans laquelle sont revendiquées six classes doit être divisée en deux demandes de trois classes chacune, aucune taxe par classe ne doit être acquittée à compter de la date de réception par l’Office de la déclaration de division. Les taxes acquittées avant cette date ne sont toutefois pas remboursables.
En cas d’irrecevabilité de la division, la demande originale demeure identique. Il est indifférent que:
la déclaration de division ait été réputée non déposée pour faute de paiement de la taxe;
la déclaration ait été refusée pour non-respect des conditions de forme;
la déclaration ait été jugée irrecevable par suite de sa présentation durant l’une des périodes d’irrecevabilité de la division.
Le scénario le plus défavorable pour le demandeur est celui dans lequel la déclaration de division n’est pas acceptée, mais cette circonstance n’a jamais aucune incidence sur la demande originale. Par la suite, le demandeur peut présenter à nouveau la déclaration de division, moyennant le paiement d’une nouvelle taxe.
5.4.3 Nouveau dossier et publication de celui-ci
Un nouveau dossier doit être créé pour la demande divisionnaire. Outre les documents qui figuraient dans le dossier de la demande originale, ce nouveau dossier doit contenir toute correspondance se rapportant à la déclaration de division, ainsi que toute
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correspondance future concernant la nouvelle demande. L’inspection de ce dossier sera illimitée selon les règles générales.
Si la déclaration de division concerne une demande de marque communautaire qui n’a pas encore été publiée, la demande divisionnaire et la demande originale sont publiées séparément et selon la procédure ordinaire, sans référence expresse de l’une à l’autre.
Si la déclaration de division concerne une demande de marque communautaire qui a déjà été publiée, l’existence d’une division est publiée en faisant référence à la demande originale. La nouvelle demande doit, en outre, être publiée avec toutes les informations requises à cet effet; une nouvelle période d’opposition ne sera toutefois pas ouverte. Une division n’est recevable que pour les produits pour lesquels une période d’opposition a déjà été ouverte sans qu’une opposition ait toutefois été formée.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE B
EXAMEN
SECTION 3
CLASSIFICATION
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Table des matières
1 Introduction................................................................................................ 3
2 La classification de Nice ........................................................................... 3
3 Outils administratifs à des fins de classification.................................... 4
4 Constitution d’une liste de produits et services..................................... 5 4.1 Clarté et précision ...................................................................................... 5
4.1.1 Principes généraux......................................................................................... 5 4.1.2 Utilisation d’expressions (p.ex. «à savoir», «en particulier») pour définir
l’étendue de la liste de produits et/ou services............................................... 6 4.1.3 Utilisation de l’expression «et/ou» .................................................................. 6 4.1.4 Ponctuation..................................................................................................... 7 4.1.5 Inclusion d’abréviations et d’acronymes dans les listes de produits et
services........................................................................................................... 7
4.2 Termes et expressions manquant de clarté et de précision.................... 8 4.2.1 Indications générales des intitulés de classe de la classification de Nice
considérées comme insuffisamment claires et précises ................................ 8 4.2.2 Termes vagues............................................................................................. 12 4.2.3 Revendication visant l’ensemble des produits/services de la classe ou
l’ensemble des produits/services de la liste alphabétique de la classe ....... 12 4.2.4 Référence à d’autres classes dans la liste ................................................... 13 4.2.5 Les marques dans une liste de produits et/ou services ............................... 13 4.2.6 Inclusion des expressions pièces et accessoires; composants et
accessoires dans les listes de produits et services...................................... 14 4.2.7 Utilisation des qualificatifs indéterminés....................................................... 14
5 Procédure d’examen ............................................................................... 14 5.1 Demandes parallèles................................................................................ 14 5.2 Objections................................................................................................. 15 5.3 Modifications ............................................................................................ 16 5.4 Ajout de classes ....................................................................................... 17
6 Annexe 1................................................................................................... 18
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1 Introduction
Pour qu’une date de dépôt lui soit accordée, toute demande de marque communautaire doit contenir une liste de produits et services (article 26, paragraphe 1, point c), du RMC). Cette liste doit être classée en fonction de l’Arrangement de Nice (article 28 du RMC et règle 2, paragraphe 1, du REMC).
La liste doit être établie de manière a) à faire apparaître clairement la nature des produits et services et b) à ne permettre la classification de chaque produit et de chaque service que dans une seule classe de la classification de Nice (règle 2, paragraphe 2, du REMC).
Il est fortement recommandé d’utiliser les outils informatiques administratifs mis au point par l’Office à des fins de classification (voir le paragraphe 3). Toute partie de la liste de produits et services ne correspondant pas aux données contenues dans les outils sera examinée suivant les principes définis dans les présentes Directives. Lorsque le demandeur sélectionne un terme figurant dans les outils disponibles, celui- ci ne fait pas l’objet de plus amples examens, ce qui permet d’accélérer la procédure d’enregistrement.
Les produits et services couverts par une demande de marque communautaire, y compris les indications générales des intitulés de classe, sont interprétés par l’Office sur la base de leur sens propre et usuel. La pratique antérieure de l’Office, selon laquelle l’utilisation de toutes les indications générales reprises dans l’intitulé d’une classe donnée constituait une revendication de l’ensemble des produits ou services compris dans cette classe, a été abandonnée en juin 2012, à la suite de l’arrêt du 19 juin 2012 dans l’affaire C-307/10, «IP Translator».
La présente partie des directives a pour objet de décrire la pratique de l’Office dans le cadre de l’examen de la classification des produits et services.
La première partie (paragraphes 1 à 4) expose les principes appliqués par l’Office. La deuxième partie (paragraphe 5) résume la procédure d’examen de la liste des produits et services.
En résumé, lorsqu’il examine la classification d’une liste de produits et services, l’Office exécute quatre tâches:
il vérifie si chaque produit ou service est suffisamment clair et précis; il s’assure que chaque terme relève bien de la classe indiquée dans la demande; il notifie les éventuelles irrégularités; il rejette la demande, en tout ou en partie, lorsqu’il n’est pas remédié à
l’irrégularité (règle 9, paragraphes 4 et 8, du REMC).
2 La classification de Nice
La version de la classification au titre de l’Arrangement de Nice en vigueur à la date de dépôt sera appliquée à la classification des produits ou services dans une demande (disponible à l’adresse suivante: http://tmclass.tmdn.org). La règle 2 dispose que le demandeur doit fournir une liste de produits et services répondant aux exigences suivantes:
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la liste doit être établie de manière à faire apparaître clairement la nature des produits ou des services et à permettre la classification de chaque produit et de chaque service;
les produits et services doivent être regroupés selon le modèle de la classification de Nice, chaque groupe étant précédé du numéro de la classe à laquelle appartiennent les produits ou services et présenté dans l’ordre de cette classification.
La classification de Nice se compose, pour chaque classe, des éléments suivants:
1. intitulés de classe: les intitulés de classe sont des indications générales relatives au secteur dont relèvent, en principe, les produits ou les services;
2. notes explicatives: celles-ci expliquent quels sont les produits ou les services qui sont susceptibles ou non de relever des intitulés de classe et qui doivent être considérés comme faisant partie intégrante de la classification;
3. liste alphabétique: celle-ci montre en quoi les différents produits ou services relèvent d’une classe spécifique;
4. remarques générales: celles-ci expliquent les critères à appliquer s’il est impossible de classer un terme sur la base des intitulés de classe ou de la liste alphabétique.
Plus d’informations sur la classification de Nice sont disponibles sur le site internet de l’Organisation mondiale de la propriété intellectuelle (OMPI) à l’adresse suivante: https://www.wipo.int.
3 Outils administratifs à des fins de classification
Lors du dépôt d’une demande par voie électronique, les utilisateurs peuvent sélectionner des termes pré-approuvés pour constituer leur liste de produits et services. Tous ces termes sélectionnables proviennent d’une base de données harmonisée et sont automatiquement acceptés à des fins de classification. L’utilisation de ces termes pré-approuvés facilite le processus d’enregistrement de la marque. La base de données harmonisée rassemble les termes acceptés à des fins de classification dans tous les offices de l’UE.
Si le demandeur utilise une liste de produits et services contenant des termes absents de la base de données harmonisée, l’Office s’assure, par le biais d’une procédure d’examen, qu’ils peuvent être acceptés.
Avant de déposer une demande, il est possible d’effectuer des recherches dans le contenu de la base de données harmonisée via l’outil de l’Office TMclass (http://tmclass.tmdn.org/ec2/). Cet outil rassemble les bases de données de classification des offices participants au sein et en dehors de l’UE, et indique si un terme peut être accepté par l’office concerné. Dans TMclass, les produits et services sont regroupés en fonction de caractéristiques communes du point de vue du marché, en commençant par les plus généraux pour terminer par les plus spécifiques. Ainsi, l’utilisateur peut effectuer sa recherche plus simplement et obtenir un meilleur aperçu du contenu de chaque classe, ce qui facilite le choix des termes appropriés.
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Ce regroupement et classement, également appelé «taxonomie», n’a aucun effet juridique. En particulier, l’étendue de la protection d’une marque communautaire est toujours définie par le sens propre et usuel des termes choisis, et non par la position des termes dans les outils de classification de l’Office.
4 Constitution d’une liste de produits et services
4.1 Clarté et précision
4.1.1 Principes généraux
Les produits ou les services pour lesquels la protection par la marque est demandée doivent être identifiés par le demandeur avec suffisamment de clarté et de précision pour permettre aux autorités compétentes et aux opérateurs économiques, sur cette seule base, de déterminer l’étendue de la protection demandée (arrêt du 19 juin 2012, C-307/10, «IP Translator», point 49).
Une description de produits et services est suffisamment claire et précise lorsque l’étendue de la protection peut être déduite de son sens propre et usuel. S’il n’est pas possible de définir l’étendue de la protection, un moyen d’obtenir suffisamment de clarté et de précision peut être de déterminer des facteurs tels que les caractéristiques, la finalité et/ou le segment de marché concerné. Les éléments suivants, entre autres, peuvent aider à déterminer le segment de marché1:
les consommateurs et/ou les circuits de vente; les compétences et le savoir-faire à utiliser/produire; les capacités techniques à utiliser/produire.
Un terme peut faire partie de descriptions de produits et services dans plusieurs classes; il peut être clair et précis dans une classe donnée sans plus de détails. Par exemple: meubles (classe 20), vêtements (classe 25), gants (classe 25).
Si une protection est demandée pour une catégorie spécialisée de produits et services ou un segment de marché spécialisé appartenant à une classe différente, une spécification supplémentaire du terme peut être nécessaire. Par exemple: mobilier spécial à usage médical (classe 10), mobilier spécial de laboratoire (classe 9), vêtements de protection (classe 9), vêtements spéciaux pour salles d’opération (classe 10), habits pour animaux (classe 18), gants de jardinage (classe 21), gants de base-ball (classe 28).
Des outils comme TMclass (http://tmclass.tmdn.org/ec2/) sont disponibles pour déterminer si une catégorie donnée de produits et services nécessite ou non cette spécification supplémentaire.
1 On entend par «segment de marché» un groupe d'entreprises qui achètent et vendent des produits et services tellement similaires qu'ils sont en concurrence directe.
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4.1.2 Utilisation d’expressions (p.ex. «à savoir», «en particulier») pour définir l’étendue de la liste de produits et/ou services
L’utilisation des expressions «à savoir» ou «ceux-ci étant» est acceptable, mais doit être considérée comme une limitation aux produits et services spécifiques énumérés ensuite. Par exemple, les termes produits pharmaceutiques, à savoir analgésiques, dans la classe 5, signifient que la demande ne couvre que les analgésiques et aucun autre type de produit pharmaceutique.
L’expression «notamment» peut également être acceptée si elle sert à indiquer un exemple des produits et services demandés. Par exemple, les termes produits pharmaceutiques, notamment analgésiques signifient que la demande couvre tous les types de produits pharmaceutiques, les analgésiques en étant un exemple.
La même interprétation s’applique à l’emploi des termes «y compris», «y compris, mais pas exclusivement», «en particulier» ou «principalement», comme dans l’exemple produits pharmaceutiques, y compris analgésiques.
Un terme qui serait normalement considéré comme insuffisamment clair ou précis peut être accepté pour autant qu’il soit explicité, p.ex. en utilisant «à savoir» puis une liste de termes acceptables. Un exemple serait appareils électriques, à savoir ordinateurs pour des produits de la classe 9.
Autres exemples d’usages acceptables
Classe 29: produits laitiers, à savoir fromage et beurre
Les produits seraient ainsi limités au fromage et au beurre uniquement, à l’exclusion de tous les autres produits laitiers.
Classe 41: mise à disposition d’équipements et d’installations sportifs, tous étant en extérieur.
Les services seraient ainsi limités à ceux couvrant les équipements et installations en extérieur uniquement, à l’exclusion des équipements et installationsen intérieur.
Classe 25: vêtements, tous étant des sous-vêtements
Les produits seraient ainsi limités à ceux considérés comme des sous-vêtements uniquement, à l’exclusion de tous les autres types de vêtements.
D’autres mots ou expressions peuvent souligner uniquement l’importance de certains produits, l’inclusion du terme ne limitant en aucune façon le reste de la liste. Quelques exemples:
Classe 29: produits laitiers, notamment fromage et beurre
Tous les produits laitiers seraient inclus; le fromage et le beurre sont probablement les produits du titulaire de marque qui remportent le plus de succès.
Classe 41: mise à disposition d’équipements et d’installations sportifs, par exemple pistes de course en extérieur.
Ici, un simple exemple, pris parmi plusieurs possibilités, est donné.
Classe 25: vêtements, y compris sous-vêtements
La couverture s’étend à tous les vêtements, et non pas seulement aux sous-vêtements.
4.1.3 Utilisation de l’expression «et/ou»
L’utilisation de barres obliques est acceptable dans les listes de produits et services. L’usage le plus fréquent de ces barres est celui qui en est fait dans l’expression
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«et/ou», qui signifie que les deux produits/services visés relèvent de la même classe. Par exemple:
produits chimiques/biochimiques; produits chimiques et/ou biochimiques; produits chimiques destinés à être utilisés dans l’industrie/la science; produits chimiques destinés à être utilisés dans l’industrie et/ou la science; services d’agences d’import/export.
4.1.4 Ponctuation
L’utilisation d’une ponctuation correcte est très importante dans une liste de produits et services, presque autant que les mots.
L’utilisation de virgules sert à séparer les produits ou services à l’intérieur d’une même catégorie ou expression. Par exemple, farine et préparations faites de céréales, pain, pâtisserie et confiserie de la classe 30 implique que les produits peuvent être ou sont fabriqués à partir de n’importe lequel de ces ingrédients.
L’utilisation d’un point-virgule signifie une séparation entre deux expressions. Par exemple, farine et préparations faites de céréales, pain, pâtisserie et confiserie, glaces comestibles; miel, sirop de mélasse; levure, poudre pour faire lever de la classe 30 implique que les expressions miel et sirop de mélasse sont indépendantes des autres termes et ne font pas partie des préparations faites de…
La séparation de termes à l’aide d’une ponctuation incorrecte peut entraîner des modifications de sens et une classification erronée.
Prenons l’exemple des logiciels informatiques pour machines textiles; machines agricoles de la classe 9. Dans cette liste de produits et services, l’inclusion d’un point- virgule signifie que l’expression machines agricoles doit être considérée comme une catégorie de produits indépendante. Toutefois, ces machines agricoles appartiennent à la classe 7, indépendamment du fait que l’intention ait été de protéger des logiciels informatiques à utiliser dans le domaine des machines textiles et des machines agricoles.
Un autre exemple est celui des services de vente au détail de vêtements; chaussures; chapellerie de la classe 35: l’utilisation d’un point-virgule fait des termes chaussures et chapellerie des produits distincts et non inclus dans les services de vente au détail. Dans de tels cas de figure, les termes devraient être séparés par des virgules.
4.1.5 Inclusion d’abréviations et d’acronymes dans les listes de produits et services
Les abréviations dans les listes de produits et services doivent être acceptées avec prudence. Une marque peut avoir une durée de vie indéfinie et l’interprétation d’une abréviation peut évoluer au fil du temps. Cela étant, une abréviation peut être autorisée à condition qu’elle n’ait qu’une seule signification à l’égard de la classe de produits ou services visés par la demande. Les exemples notoires CD-ROM et DVD sont acceptables dans la classe 9. Si l’abréviation est bien connue dans le domaine d’activité concerné, elle peut être acceptée, mais une solution plus pratique serait que
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les examinateurs commencent par rechercher l’abréviation ou l’acronyme sur internet, afin de déterminer s’il convient de le transcrire en mots ou d’indiquer sa signification entre crochets (en suivant l’exemple de l’OMPI).
Exemple
Classe 45 Services de conseil sur le dépôt et l’enregistrement de MC.
L’abréviation pourrait être transcrite en mots comme suit:
Classe 45 Services de conseil sur le dépôt et l’enregistrement de marques communautaires;
ou explicitée comme suit:
Classe 45 Services de conseil sur le dépôt et l’enregistrement de MC [marques communautaires];
Les acronymes peuvent être acceptés dans une liste de produits ou services à condition qu’ils soient compréhensibles et adéquats pour la classe visée par la demande.
4.2 Termes et expressions manquant de clarté et de précision
4.2.1 Indications générales des intitulés de classe de la classification de Nice considérées comme insuffisamment claires et précises
En collaboration avec les offices des marques de l’Union européenne, d’autres organisations et offices (inter)nationaux et associations d’utilisateurs, l’Office a établi une liste d’indications générales des intitulés de classe de la classification de Nice considérées comme insuffisamment claires et précises au sens de l’arrêt du 19 juin 2012, C-307/10, «IP Translator».
Les 197 indications générales des intitulés de classe de la classification de Nice ont été examinées au regard des exigences de clarté et de précision. Sur ces 197 indications, 11 ont été considérées comme manquant de la clarté et de la précision nécessaires pour spécifier l’étendue de la protection qu’elles accorderaient et, par conséquent, ne peuvent être acceptées sans spécifications supplémentaires. Ces indications sont indiquées ci-dessous en gras.
Classe 6 Produits métalliques non compris dans d’autres classes Classe 7 Machines et machines-outils Classe 14 Métaux précieux et leurs alliages et produits en ces matières ou en
plaqué non compris dans d’autres classes Classe 16 Papier, carton et produits en ces matières [papier et carton], non
compris dans d’autres classes Classe 17 Caoutchouc, gutta-percha, gomme, amiante, mica et produits en ces
matières [caoutchouc, gutta-percha, gomme, amiante et mica] non compris dans d’autres classes
Classe 18 Cuir et imitations du cuir, produits en ces matières [cuir et imitations du cuir] non compris dans d’autres classes
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Classe 20 Produits, non compris dans d’autres classes, en bois, liège, roseau, jonc, osier, corne, os, ivoire, baleine, écaille, ambre, nacre, écume de mer, succédanés de toutes ces matières ou en matières plastiques
Classe 37 Réparation Classe 37 Services d’installation Classe 40 Traitement de matériaux Classe 45 Services personnels et sociaux rendus par des tiers destinés à
satisfaire les besoins des individus
Les 186 autres intitulés de classe de la classification de Nice satisfont aux exigences de clarté et de précision et sont donc acceptables à des fins de classification.
Les raisons pour lesquelles chacun des 11 intitulés de classe de la classification de Nice refusés a été considéré insuffisamment clair et précis sont décrites ci-après.
Classe 6 Produits métalliques non compris dans d’autres classes Compte tenu des exigences de clarté et de précision, cette expression ne fournit pas une indication claire des produits couverts, étant donné qu’elle n’indique que ce en quoi les produits sont faits, et non de quels produits il s’agit. Elle couvre un large éventail de produits qui peuvent avoir des caractéristiques et/ou des finalités très différentes, dont la production et/ou l’utilisation peuvent nécessiter des niveaux très différents de compétences techniques et de savoir-faire, qui pourraient s’adresser à des consommateurs différents, être vendus par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
Classe 7 Machines et machines-outils Compte tenu des exigences de clarté et de précision, le terme machines ne donne pas une indication claire des machines qui sont couvertes. Les machines peuvent avoir des caractéristiques ou des finalités différentes; leur production et/ou utilisation peuvent nécessiter des niveaux très différents de compétences techniques et de savoir-faire; elles pourraient s’adresser à des consommateurs différents, être vendues par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
Classe 14 Métaux précieux et leurs alliages et produits en ces matières ou en plaqué non compris dans d’autres classes Compte tenu des exigences de clarté et de précision, l’expression produits en ces matières ou en plaqué non compris dans d’autres classes ne donne pas une indication claire des produits qui sont couverts, étant donné qu’elle indique simplement de quoi les produits sont constitués ou revêtus et non de quels produits il s’agit. Elle couvre un large éventail de produits qui peuvent avoir des caractéristiques très différentes, dont la production peut nécessiter des niveaux très différents de compétences techniques et de savoir-faire, qui pourraient s’adresser à des consommateurs différents, être vendus par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
Classe 16 Papier, carton et produits en ces matières, non compris dans d’autres classes
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Compte tenu des exigences de clarté et de précision, l’expression produits en ces matières [papier et carton], non compris dans d’autres classes ne donne pas une indication claire des produits qui sont couverts, étant donné qu’elle indique simplement la composition des produits et non de quels produits il s’agit. Elle couvre un large éventail de produits qui peuvent avoir des caractéristiques et/ou des finalités très différentes, dont la production et/ou l’utilisation peuvent nécessiter des niveaux très différents de compétences techniques et de savoir-faire, qui pourraient s’adresser à des consommateurs différents, être vendus par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
Classe 17 Caoutchouc, gutta-percha, gomme, amiante, mica et produits en ces matières non compris dans d’autres classes Compte tenu des exigences de clarté et de précision, l’expression produits en ces matières [caoutchouc, gutta-percha, gomme, amiante et mica] non compris dans d’autres classes ne donne pas une indication claire des produits qui sont couverts, étant donné qu’elle indique simplement la composition des produits et non de quels produits il s’agit. Elle couvre un large éventail de produits qui peuvent avoir des caractéristiques et/ou des finalités très différentes, dont la production et/ou l’utilisation peuvent nécessiter des niveaux très différents de compétences techniques et de savoir-faire, qui pourraient s’adresser à des consommateurs différents, être vendus par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
Classe 18 Cuir et imitations du cuir et produits en ces matières non compris dans d’autres classes Compte tenu des exigences de clarté et de précision, l’expression produits en ces matières [cuir et imitations du cuir] non compris dans d’autres classes ne donne pas une indication claire des produits qui sont couverts, étant donné qu’elle indique simplement la composition des produits et non de quels produits il s’agit. Elle couvre un large éventail de produits qui peuvent avoir des caractéristiques et/ou des finalités très différentes, dont la production et/ou l’utilisation peuvent nécessiter des niveaux très différents de compétences techniques et de savoir-faire, qui pourraient s’adresser à des consommateurs différents, être vendus par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
Classe 20 Produits, non compris dans d’autres classes, en bois, liège, roseau, jonc, osier, corne, os, ivoire, baleine, écaille, ambre, nacre, écume de mer, succédanés de toutes ces matières ou en matières plastiques Compte tenu des exigences de clarté et de précision, cette expression ne fournit pas une indication claire des produits couverts, étant donné qu’elle n’indique que ce en quoi les produits sont faits, et non de quels produits il s’agit. Elle couvre un large éventail de produits qui peuvent avoir des caractéristiques et/ou des finalités très différentes, dont la production et/ou l’utilisation peuvent nécessiter des niveaux très différents de compétences techniques et de savoir-faire, qui pourraient s’adresser à des consommateurs différents, être vendus par des canaux de distribution différents et, par conséquent, concerner des segments de marché différents.
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Classe 37 Réparation Compte tenu des exigences de clarté et de précision, cette expression ne donne pas une indication claire des services fournis, étant donné qu’elle indique simplement qu’il s’agit de services de réparation et qu’elle ne précise pas ce qui doit être réparé. Étant donné que les produits à réparer peuvent avoir des caractéristiques différentes, les services de réparation seront exécutés par des prestataires de services ayant des niveaux différents de compétences techniques et de savoir-faire, et ils peuvent concerner des segments de marché différents.
Classe 37 Services d’installation Compte tenu des exigences de clarté et de précision, cette expression ne donne pas une indication claire des services fournis, étant donné qu’elle indique simplement qu’il s’agit de services d’installation et qu’elle ne précise pas ce qui doit être installé. Étant donné que les produits à installer peuvent avoir des caractéristiques différentes, les services d’installation seront exécutés par des prestataires de services ayant des niveaux différents de compétences techniques et de savoir-faire, et ils peuvent concerner des segments de marché différents.
Classe 40 Traitement de matériaux Compte tenu des exigences de clarté et de précision, cette expression ne donne pas une indication claire des services fournis. La nature du traitement n’est pas claire, pas plus que les matériaux à traiter. Ces services couvrent un large éventail d’activités réalisées par des prestataires de services différents sur des matériaux aux caractéristiques différentes, requérant des niveaux très différents de compétences techniques et de savoir-faire, et ils peuvent concerner des segments de marché différents.
Classe 45 Services personnels et sociaux rendus par des tiers destinés à satisfaire les besoins des individus Compte tenu des exigences de clarté et de précision, cette expression ne donne pas une indication claire des services fournis. Ces services couvrent un large éventail d’activités réalisées par des prestataires de services différents, requérant des niveaux très différents de compétences et de savoir-faire, et ils peuvent concerner des segments de marché différents.
Les demandes de marques communautaires comportant l’une des onze indications générales susmentionnées seront refusées au motif qu’elles sont trop vagues. Le demandeur sera invité à préciser l’expression.
Les indications générales non acceptables ci-dessus peuvent devenir claires et précises si le demandeur suit les principes énoncés au paragraphe 3.4.1. Principes de clarté et de précision. Une liste non exhaustive de spécifications acceptables est présentée ci-après.
Expression non claire et imprécise Exemple d’expression claire et précise
Produits métalliques non compris dans d’autres classes (classe 6)
Éléments de construction métalliques (classe 6) Matériaux de construction métalliques (classe 6)
Machines (classe 7) Machines agricoles (classe 7) Machines pour la transformation de matières plastiques (classe 7)
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Machines à traire (classe 7)
Produits en métaux précieux ou en plaqué (classe 14) Œuvres d’art en métaux précieux (classe 14)
Produits en papier et carton (classe 16) Matières filtrantes en papier (classe 16)
Produits en caoutchouc, gutta-percha, gomme, amiante et mica (classe 17) Anneaux en caoutchouc (classe 17)
Produits en ces matières [cuir et imitations du cuir] (classe 18)
Porte-documents [articles de maroquinerie] (classe 18)
Produits, non compris dans d’autres classes, en bois, liège, roseau, jonc, osier, corne, os, ivoire, baleine, écaille, ambre, nacre, écume de mer, succédanés de toutes ces matières ou en matières plastiques (classe 20)
Garnitures de portes en plastique (classe 20) Figurines en bois (classe 20)
Réparation (classe 37) Travaux de cordonnerie (classe 37)Réparation d’ordinateurs (classe 37)
Services d’installation (classe 37) Installation de portes et de fenêtres (classe 37)Installation d’alarmes antivol (classe 37)
Traitement de matériaux (classe 40) Traitement de déchets toxiques (classe 40)Purification de l’air (classe 40)
Services personnels et sociaux rendus par des tiers destinés à satisfaire les besoins des individus (classe 45)
Investigations sur les antécédents de personnes (classe 45) Achats personnels pour des tiers (classe 45) Services d’agences d’adoption (classe 45)
Il convient de noter qu’il ne sera pas possible de rendre spécifique ou acceptable une expression vague en y ajoutant une expression telle que y compris ou notamment. L’exemple machines, y compris machines à traire ne serait pas acceptable, car il reste vague (voir le paragraphe 4.1.2.).
4.2.2 Termes vagues
Les principes énoncés ci-dessus en ce qui concerne la clarté et la précision sont applicables à l’ensemble des produits et services inclus dans la demande. Les expressions ne fournissant aucune indication claire sur les produits couverts doivent être refusées. En voici quelques exemples:
Appareils/instruments électriques/électroniques Services d’association Services de gestion d’installations
Ces expressions doivent toutes être spécifiées comme décrit ci-dessus, c’est-à-dire en précisant certains éléments comme des caractéristiques, une finalité et/ou un segment de marché identifiable.
4.2.3 Revendication visant l’ensemble des produits/services de la classe ou l’ensemble des produits/services de la liste alphabétique de la classe
Si le demandeur entend protéger l’ensemble des produits ou services inclus dans la liste alphabétique d’une classe donnée, il doit l’indiquer expressément en énumérant
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explicitement et individuellement ces produits ou services. Pour aider les demandeurs, l’utilisation de la structure hiérarchique (voir paragraphe 3 - Outils informatiques administratifs à des fins de classification) est encouragée.
Des demandes sont parfois soumises pour l’ensemble des produits de la classe X, l’ensemble des services de la classe X, l’ensemble des produits/services de la présente classe ou l’ensemble des produits/services de la liste alphabétique de la présente classe (ou formulation similaire). Cette spécification n’est pas conforme à l’article 26, paragraphe 1, point c), du RMC, qui exige une liste des produits ou services pour lesquels l’enregistrement est demandé. Par conséquent, aucune date de dépôt n’est attribuée.
Il arrive également que le demandeur énumère correctement certains produits et/ou services à couvrir et ajoute, à la fin de la liste, pour chaque classe, l’expression et tous les autres produits/services de cette classe ou et tous les produits/services de la liste alphabétique de cette classe (ou une formulation similaire). Dans ces cas, la demande ne sera acceptée que pour la partie des produits et/ou services correctement présentée. L’Office fera savoir au demandeur que ces déclarations ne sont pas acceptables à des fins de classification et qu’elles seront donc supprimées.
4.2.4 Référence à d’autres classes dans la liste
Les références à d’autres numéros de classe à l’intérieur d’une classe ne sont pas acceptables à des fins de classification. Par exemple, les descriptions (à la classe 39) services de transport de tous les produits compris dans les classes 32 et 33 ou (à la classe 9) logiciels informatiques dans le domaine des services compris dans les classes 41 et 45 ne sont pas acceptables, étant donné que, dans les deux cas, les expressions sont considérées comme étant floues et imprécises et comme ne garantissant aucune sécurité juridique quant à l’identité des produits et services couverts. Le seul moyen de surmonter l’objection à ces listes de produits et services est de spécifier, respectivement, les produits des classes 32 et 33 et les services des classes 41 et 45.
L’expression produits non compris dans d’autres classes n’est pas acceptable dans les classes de services, car cette expression n’a de sens que dans sa classe de produits d’origine.
Par exemple, l’intitulé de la classe 22 indique cordes, ficelles, filets, tentes, bâches, voiles, sacs (non compris dans d’autres classes). Dans ce contexte, la référence à non compris dans d’autres classes a un sens. Par contre, si la même expression est utilisée dans une liste de produits et de services d’une classe de services, elle n’aura pas de sens. Par exemple, les services de transport de cordes, ficelles, filets, tentes, bâches, voiles, sacs (non compris dans d’autres classes) compris dans la classe 39 ne pourraient pas être acceptés. La mention (non compris dans d’autres classes) doit être supprimée.
4.2.5 Les marques dans une liste de produits et/ou services
Il n’est pas permis de faire apparaître une marque dans une liste de produits et services comme s’il s’agissait d’un terme générique ou d’une catégorie de produits.
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Dans un tel cas de figure, l’Office refusera l’inclusion du terme et demandera qu’il soit remplacé par un terme générique pour les produits ou services concernés.
Exemple
Classe 9: Dispositifs électroniques pour la transmission du son et des images; lecteurs vidéo; lecteurs CD; iPods
iPod™ étant une marque, le demandeur sera invité à la remplacer par un synonyme, comme par exemple petit lecteur portable audio numérique pour le stockage de données dans différents formats, y compris MP3.
Parmi d’autres exemples, citons Caterpillar™ (la classification correcte serait véhicule chenillé), Discman™ (lecteur portable de disques compacts), Band-Aid™ (pansements), disques Blu Ray™ (disques de stockage optiques) ou Teflon™ (revêtement antiadhésif à base de polytétrafluoroéthylène). Cette liste n’est pas exhaustive; en cas de doute, l’examinateur consultera un expert compétent de l’Office.
4.2.6 Inclusion des expressions pièces et accessoires; composants et accessoires dans les listes de produits et services
Les expressions pièces et accessoires; composants et accessoires, qu’elles soient utilisées seules ou associées les unes aux autres, ne sont ni suffisamment claires ni suffisamment précises pour être utilisées à des fins de classification. Chacune de ces expressions nécessite davantage de précisions pour devenir acceptable dans la classe dont elle relève. Pour rendre ces expressions acceptables, il convient de présenter certains éléments comme des caractéristiques, une finalité et/ou un segment de marché identifiable. Par exemple:
pièces et accessoires pour véhicules motorisés est acceptable dans la classe 12; composants de construction en bois est acceptable dans la classe 19; accessoires de musique est acceptable dans la classe 14.
4.2.7 Utilisation des qualificatifs indéterminés
L’utilisation de qualificatifs tels que et autres, auxiliaires, et produits connexes et etc. dans une liste de produits ou services n’est pas acceptable, étant donné qu’elles manquent la clarté et la précision nécessaires (voir le paragraphe 4.1.)
5 Procédure d’examen
5.1 Demandes parallèles
Si l’Office s’efforce toujours de faire preuve de cohérence, le fait qu’une liste de produits et services ait déjà été acceptée par le passé en dépit d’une classification erronée n’entraînera pas forcément l’acceptation de la même liste dans le cadre de demandes ultérieures.
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5.2 Objections
Si l’Office juge nécessaire de modifier la liste des produits et services, il doit, si possible, en discuter avec le demandeur. Dans toute la mesure du possible, l’examinateur doit faire une proposition de classification correcte. Si le demandeur soumet une longue liste de produits et/ou services sans regroupement en numéros de classe ni classification, l’examinateur doit se limiter à formuler une objection au titre de la règle 2 et inviter le demandeur à fournir la liste sous une forme conforme.
Dans sa réponse, le demandeur ne peut sous aucun prétexte étendre la portée de la protection ou la gamme de produits ou services (article 43, paragraphe 2, du RMC).
Lorsque le demandeur n’indique aucune classe, ou n’a pas indiqué la ou les classes correspondant aux produits ou services concernés, l’explicitation de l’étendue de la protection demandée peut élargir le nombre de classes nécessaires à la liste de produits/services, mais cela ne suppose pas forcément que la liste ait été elle-même étendue.
Exemple
Une demande couvrant les bières, vins et thé de la classe 33 devrait être corrigée comme suit:
Classe 30: Thé.
Classe 32: Bières.
Classe 33: Vins.
Bien que les classes soient passées au nombre de trois, la liste des produits n’a pas été étendue.
Lorsque le demandeur a correctement attribué un numéro de classe à un terme déterminé, la liste est limitée aux produits compris dans cette classe. Par exemple, une demande couvrant le thé de la classe 30 ne peut pas être modifiée en indiquant le thé médicinal de la classe 5, vu que cela étendrait la protection au-delà des seuls produits visés par la demande.
Lorsqu’une modification de la classification est nécessaire, l’Office envoie une communication motivée soulignant la ou les erreurs détectées dans la liste de produits et services. Le demandeur est alors invité à modifier et/ou à préciser la liste. L’Office peut suggérer une façon de classifier les produits et/ou services.
Le délai initial accordé pour soumettre des observations sur la lettre notifiant une irrégularité de classification ne peut être prolongé qu’une seule fois. Aucune autre prorogation du délai ne sera accordée, sauf circonstances exceptionnelles.
L’Office envoie au demandeur une lettre l’informant de la liste définitive et validée des termes acceptés.
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5.3 Modifications
Voir également les Directives, Partie E, Opérations d’enregistrement, Section 1, Modification d’un enregistrement.
L’article 43, paragraphes 1 et 2, du RMC permet la modification d’une demande et notamment de la liste de produits et services, pour autant qu’«une telle rectification n’affecte pas substantiellement la marque ou n’étende pas la liste des produits ou services».
La modification peut être formulée en termes positifs ou négatifs. Les exemples suivants sont tous deux acceptables:
boissons alcoolisées, toutes étant du whisky et du gin; boissons alcoolisées, aucune n’étant du whisky ou du gin.
Étant donné qu’une modification ne peut pas étendre la liste de produits et services, elle doit consister en une limitation ou une suppression de certains termes figurant dans la demande initiale. Une fois que ces modifications (suppressions) ont été reçues (puis acceptées) par l’Office, les termes supprimés ne peuvent être réintroduits et la liste de produits/services restante ne peut être étendue.
Une limitation doit respecter certains critères:
1. Le demandeur ne peut pas exclure des produits et services qui ne sont pas visés par la demande et/ou qui ne sont pas compris dans la classe pertinente.
Par exemple, la limitation suivante ne serait pas acceptée:
Classe 32: sirops (demande initiale) pour sirops à l’exception des jus de fruits. Classe 3: cosmétiques à l’exception des produits désinfectants (classe 5).
2. La limitation doit être compréhensible et donner une indication suffisamment claire et précise (voir également le paragraphe 4.2) des produits ou services à exclure de la liste ou une indication suffisamment claire et précise des produits et services qui sont maintenus après la limitation.
Par exemple, la limitation suivante ne serait pas acceptée:
Classe 16: machines à écrire, concernant uniquement des services financiers.
3. La limitation ne doit pas contenir de référence à des marques.
Par exemple, la limitation suivante ne serait pas acceptée:
Classe 9: appareils de reproduction de son, à savoir iPods.
4. La limitation ne doit pas contenir une limitation territoriale qui contredit la nature unitaire de la marque communautaire.
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Par exemple, la limitation suivante ne serait pas acceptée:
Classe 7: machines à laver, uniquement destinées à la vente en France.
Une limitation peut avoir pour effet d’allonger la liste de produits et services par rapport à celle initialement déposée. Par exemple, même si la liste de produits et services initiale a été déposée sous les termes boissons alcoolisées, elle pourra être limitée à boissons alcoolisées, celles-ci étant des vins et des spiritueux, mais n’incluant pas le whisky et le gin et n’incluant pas non plus les liqueurs, les cocktails ou les combinaisons de boissons contenant des éléments de whisky ou de gin.
5.4 Ajout de classes
Au titre des dispositions de l’article 43, paragraphe 2, du RMC (voir ci-dessus), il est possible d’ajouter une ou plusieurs classes à une demande, mais uniquement lorsque les produits ou services inclus dans la demande initiale sont manifestement indiqués dans la mauvaise classe ou lorsqu’un produit ou service a été précisé et doit être classé dans une ou plusieurs nouvelles classes. Prenons par exemple la liste initiale de produits suivante:
Classe 33: boissons alcoolisées, y compris bière, vins et spiritueux.
La bière relevant de la classe 32, le demandeur sera invité à transférer ce terme vers la classe 32, même si la classe 32 ne figurait pas dans la demande initiale. Si le demandeur est d’accord, la demande couvrira alors des produits compris dans les classes 32 et 33.
Lorsque des classes sont ajoutées, des taxes additionnelles peuvent être demandées et il convient d’informer en conséquence le demandeur.
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6 Annexe 1
Table des matières
Introduction............................................................................................................... 20 Services publicitaires ............................................................................................... 20 Rafraîchissement de l’air et préparations parfumées ............................................ 20 Appareils pour le divertissement et jeux électroniques......................................... 20 Services d’association ou services fournis par une association à ses membres.................................................................................................................... 21 Appareils de beauté.................................................................................................. 21 Rassemblement de services .................................................................................... 21 Services de radiodiffusion et/ou de transmission.................................................. 22 Services de courtage................................................................................................ 22 Étuis (et sacs de transport)...................................................................................... 22 Services caritatifs ..................................................................................................... 22 Services de collecte et de stockage ........................................................................ 23 Jeux informatiques et appareils de jeux vidéo ....................................................... 23 Rideaux et stores...................................................................................................... 24 Fabrication sur commande/fabrication pour des tiers........................................... 25 Services de données ................................................................................................ 25 Services de conception............................................................................................ 25 Services d’imagerie numérique ............................................................................... 25 Produits téléchargeables ......................................................................................... 26 Électricité et énergie................................................................................................. 26 Appareils électroniques et électriques.................................................................... 26 Cigarettes électroniques .......................................................................................... 27 Franchisage .............................................................................................................. 27 Systèmes GPS – localisation, suivi et navigation .................................................. 27 Coiffure...................................................................................................................... 29 Services de location ................................................................................................. 29 Services d’aide humanitaire..................................................................................... 29 Services internet, services en ligne ........................................................................ 29 Kits, nécessaires et ensembles ............................................................................... 30 Leasing...................................................................................................................... 31 Vente par correspondance....................................................................................... 31 Manuels (pour ordinateurs, etc.).............................................................................. 31 Services de fabrication............................................................................................. 31 Services d’informations ........................................................................................... 32 Services en ligne ...................................................................................................... 32 Commande de services............................................................................................ 32
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Préparations parfumées et de rafraîchissement de l’air ........................................ 32 Services personnels et sociaux rendus par des tiers destinés à satisfaire les besoins des individus .............................................................................................. 33 Produits en métaux précieux ................................................................................... 33 Vêtements de protection .......................................................................................... 34 Services de location ................................................................................................. 34 Services de vente au détail et en gros .................................................................... 35 Suivi par satellite ...................................................................................................... 37 Ensembles................................................................................................................. 37 Services de réseautage social ................................................................................. 37 Édition de logiciels ................................................................................................... 37 Énergie solaire .......................................................................................................... 37 Services de stockage ............................................................................................... 38 Fourniture de…......................................................................................................... 38 Systèmes................................................................................................................... 38 Billets (pour les voyages, les divertissements, etc.) .............................................. 39 Jeux vidéo ................................................................................................................. 39 Environnement virtuel .............................................................................................. 39
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Introduction
Dans le cadre de la classification, il convient d’appliquer les principes généraux de la classification de Nice.
La présente annexe a pour objectif de clarifier la classification de certains termes posant problème. Elle propose également des notes sur les pratiques de classification (indiquant notamment les mots ou expressions à ne pas utiliser).
TMclass, la base de données de classification de l’Office, est disponible à l’adresse: http://tmclass.tmdn.org
Services publicitaires
En principe, les services publicitaires relèvent de la classe 35. Les principales indications se rapportant aux services publicitaires de la liste de services dans la classification de Nice sont les suivantes:
Publicité. Publicité radiophonique. Publicité télévisée. Mise en pages à buts publicitaires. Publication de textes publicitaires. Production de films publicitaires.
Ces indications couvrent la conception de matériel publicitaire et la production de publicités, étant donné qu’il s’agit de services qui seront fournis par des agences de publicité.
Rafraîchissement de l’air et préparations parfumées
Voir préparations parfumées et de rafraîchissement de l’air.
Appareils pour le divertissement et jeux électroniques
Suite aux modifications apportées à la classification de Nice le 1er janvier 2012 (10e édition), tous les jeux (qu’ils soient ou non électroniques) relèvent désormais de la classe 28.
Ils sont présentés comme suit dans la liste alphabétique:
Jeux (appareils pour -). Machines de jeux vidéo. Machines de jeux vidéo électroniques.
La plupart de ces dispositifs de la classe 28 sont fournis avec les jeux. Toutefois, si ces jeux ne sont pas chargés dans les dispositifs, ils sont enregistrés sur des supports de données ou sont téléchargeables. Dans ces cas, les jeux sont considérés comme des
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programmes de jeu spécialement adaptés à une utilisation avec des dispositifs de jeu et relèvent donc de la classe 9.
Voir également jeux informatiques.
Services d’association ou services fournis par une association à ses membres
Cette expression, ainsi que les expressions similaires, sont trop vagues pour être acceptables. Il convient de mentionner le type de service fourni, ou sa portée. Voici quelques exemples de spécifications acceptables:
Classe 35: services d’association sous la forme de services d’administration commerciale.
Classe 45: services fournis par une association à ses membres sous la forme de services juridiques.
Voir également services caritatifs.
Appareils de beauté
Classe 7: Vaporisateurs (machines) pour l’application de produits de bronzage artificiel.
Classe 8: Instruments/outils à usage esthétique actionnés manuellement. Aiguilles/appareils de tatouage. Appareils dépilatoires (électriques et non électriques).
Classe 10: Appareils de massage. Appareils de microdermoabrasion. Appareils pour le traitement de la cellulite. Lasers pour traitements cosmétiques. Appareils d’épilation au laser. Appareils de photoépilation.
La photoépilation est une procédure réalisée à l’aide de dispositifs à lumière pulsée. Ces derniers utilisent le même principe que les lasers (à savoir réchauffement des follicules pileux), mais ne sont pas des lasers.
Classe 11: Lampes à rayons ultraviolets à usage cosmétique. Bancs solaires. Appareils à vapeur pour le nettoyage de la peau.
Classe 21: Brosses et applicateurs cosmétiques.
Rassemblement de services
Voir commande de services et services de vente au détail et en gros.
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Services de radiodiffusion et/ou de transmission
Ces services relèvent de la classe 38; ils signifient tous deux la même chose. Les services fournis dans ce domaine couvrent uniquement la fourniture des moyens de communication (p.ex. la fourniture d’un réseau de câbles à fibres optiques; la fourniture de programmes de radiodiffusion ou de transmissions via des infrastructures de liaison satellite géostationnaires ou la location d’appareils et de systèmes de communication). La classe 38 ne couvre pas les programmes, publicités, informations ou conseils pouvant être transmis via les technologies de télécommunication ou de radiodiffusion. Ces services resteraient dans les classes appropriées.
Services de courtage
Il s’agit de services fournis par une personne ou une société vendant et achetant des produits en échange du versement d’honoraires ou de commissions. Ceux-ci peuvent être réclamés à l’acheteur ou au vendeur du bien (ou aux deux). Le courtier peut ne jamais voir les produits ou services en question.
Trois classes incluent des services de courtage. Ce sont les suivantes:
Classe 35: Courtage de listes de noms et d’adresses à des fins publicitaires.
Classe 36: [Un grand nombre de listes pour le] courtage de contrats à terme, de crédits d’émission de carbone, de biens immobiliers, d’obligations, de titres et d’autres produits financiers.
Classe 39: Services de courtage dans le domaine de la distribution, du transport et du stockage.
Étuis (et sacs de transport)
Les étuis (et sacs) adaptés au transport du produit qu’ils sont censés contenir sont, en principe, classés dans la même classe que le produit en question. Par example sacs pour ordinateurs relèvent de la classe 9.
Tous les sacs de transport non adaptés relèvent de la classe 18.
Services caritatifs
Cette expression est trop vague pour être acceptée dans une classe sans davantage de précisions.
Les services caritatifs sont définis par le service fourni. Ils peuvent donc être placés dans n’importe quelle classe de services, avec leur définition correcte. Par exemple:
Classe 35: Services caritatifs, à savoir travaux administratifs et travaux de bureau au sens large.
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Classe 36: Organisation de collectes à but caritatif; collectes de bienfaisance.
Classe 38: Services de télécommunication à des fins caritatives.
Classe 39: Services caritatifs, à savoir transport par ambulance.
Classe 40: Services caritatifs, à savoir services de traitement des eaux.
Classe 41: Services caritatifs, à savoir éducation et formation.
Classe 42: Services caritatifs, à savoir services de protection de l’environnement.
Classe 43: Services caritatifs, à savoir restauration (alimentation et boissons) et hébergement temporaire.
Classe 44: Services caritatifs, à savoir fourniture de services médicaux.
Classe 45: Services caritatifs, à savoir mentorat [personnel ou spirituel].
Services de collecte et de stockage
Lorsqu’il s’agit de biens physiques, les services de collecte et de stockage relèvent tous de la classe 39. Cette classe inclut dans ses listes le transport et l’entreposage. Seraient également inclus la collecte et le stockage physique de données, sous forme écrite ou enregistrées sur des supports (la classification de Nice inclut dans la classe 39 l’entreposage de supports de données ou de documents stockés électroniquement).
Les services de bureau consistant en la collecte, l’assemblage et la manipulation électroniques de données relèvent tous de la classe 35.
Le stockage de données numériques et le stockage électronique de données sont assimilés aux services d’hébergement, de sorte qu’ils relèvent donc de la classe 42. Les services de stockage informatique de données en nuage relèvent également de la classe 42.
Jeux informatiques et appareils de jeux vidéo
Les expressions jeux informatiques et jeux vidéo sont très similaires et sont traitées comme telles.
Les jeux informatiques sont définis comme suit dans le dictionnaire: 1. (Nom) «Tout jeu, enregistré sur cassette ou sur disque destiné à une utilisation
sur un ordinateur personnel, joué en manipulant une souris, une manette ou les touches du clavier d’un ordinateur en réponse aux graphiques affichés sur l’écran» (Collins English Dictionary).
Les expressions jeux informatiques/jeux vidéo, en tant que telles, ne sont donc acceptables que dans la classe 9. La définition de l’expression dans le dictionnaire
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indique clairement qu’il doit s’agir d’un jeu, donc d’un logiciel. Les expressions peuvent donc être acceptées dans la classe 9 sans plus de précisions.
Les jeux acceptables dans la classe 28 sont fournis avec les logiciels de jeu. Par exemple, les expressions suivantes peuvent toutes être acceptées dans la classe 28:
Jeux d’arcade. Machines de jeux vidéo d’arcade. Consoles de jeux informatiques. Jeux (appareils pour -). Dispositifs de jeux informatiques actionnés manuellement. Machines de jeux vidéo.
Rideaux et stores
Les stores, sous toutes leurs formes, peuvent être utilisés sur les fenêtres tant à l’intérieur qu’à l’extérieur. La classification de ces produits dépend de leur finalité et de leur composition matérielle.
Les rideaux sont généralement utilisés à l’intérieur et sont également classés en fonction de leur composition matérielle.
Voici quelques exemples d’expressions acceptables:
Classe 6: Stores d’extérieur métalliques. Stores d’extérieur métalliques faisant partie d’un bâtiment à des fins de sécurité.
Classe 17: Rideaux (de sécurité) en amiante (le matériau et la finalité déterminent la classification).
Classe 19: Stores [d’extérieur] ni métalliques ni en matières textiles. (Ces produits sont probablement en bois).
Classe 20: Stores (d’intérieur à lamelles). Stores vénitiens et stores verticaux pour fenêtres. Stores d’intérieur pour fenêtres. Stores (d’intérieur pour fenêtres) [mobilier]. Rideaux (de bambou). Stores en papier. Rideaux (de perles) [pour la décoration].
Classe 24: Stores d’extérieur en textile.
La grande majorité des rideaux relèvent de la classe 24, étant donné que la plupart des rideaux d’intérieur (parfois appelés «tentures») sont en textile ou en plastique.
Il convient de faire preuve de prudence en cas de référence aux murs-rideaux. Ceux-ci constituent un type de technique de construction de bâtiments et les produits qui y sont associés sont des matériaux de construction relevant de la classe 6 (pour les produits métalliques) ou de la classe 19 (pour les produits non métalliques).
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Fabrication sur commande/fabrication pour des tiers
Voir services de fabrication.
Services de données
Cette expression ne peut pas être acceptée seule: elle doit être précisée.
La fourniture de données peut relever de plusieurs classes, selon la manière dont les données sont fournies ou la nature des données fournies. Dans chaque cas, la nature exacte du service fourni devra être précisée: le terme fourniture de données ne suffit pas. Quelques exemples d’expressions acceptables sont présentés ci-après, de même que leur classification:
Classe 44: Mise à disposition de données (informations) relatives à l’utilisation de produits pharmaceutiques. (Cette expression désignerait la collecte systématisée de données ne pouvant être interprétées qu’en possédant une formation médicale spécialisée).
Classe 45: Mise à disposition et interprétation de données relatives au pistage des animaux.
(Cette expression désignerait des services relatifs à la localisation d’animaux perdus ou volés. Si les données avaient d’autres finalités, elles relèveraient alors d’autres classes, p.ex. la classe 42 pour des motifs de mesure ou des raisons scientifiques).
Services de conception
Les services de conception relèvent, en tant que tels, de la classe 42.
La conception de publicités et la conception de noms de marques relèvent toutes deux de la classe 35, étant donné qu’elles font toutes deux partie des services publicitaires.
De même, la conception d’aménagements paysagers, la conception d’art floral, la conception de gazon et l’aménagement [conception] de jardins relèvent de la classe 44, étant donné qu’il s’agit de services horticoles.
Services d’imagerie numérique
L’expression services d’imagerie numérique a été supprimée de la classe 41 dans la 10e édition de la classification de Nice. Elle ne peut donc pas être acceptée dans la classe 41 sans autre précision. En effet, l’imagerie numérique peut être incluse dans plusieurs classes, en fonction du domaine auquel le service fait référence, p.ex. le domaine médical, les technologies de l’information ou la photographie.
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Parmi les expressions acceptables figurent:
Imagerie numérique (retouche de photographies) – Classe 41. Services d’imagerie médicale – Classe 44. Imagerie numérique (services informatiques) – Classe 42.
Produits téléchargeables
Tous les produits téléchargeables relèvent de la classe 9. Il s’agit notamment des publications, de la musique, des sonneries de téléphone, des images, des photographies, des films ou des extraits de films. Un téléchargement a pour résultat l’enregistrement du produit dans le lecteur ou la mémoire d’un ordinateur, d’un téléphone ou d’un assistant numérique personnel, où il fonctionne indépendamment de la source d’où il provient. Ces produits peuvent également être appelés produits virtuels. Tous ces produits téléchargeables peuvent être vendus au détail.
Électricité et énergie
Nous présentons ci-dessous un guide de certains des produits et services ayant trait à l’électricité.
Classe 4: Énergie électrique.
Classe 7: Générateurs d’électricité.
Classe 9: Appareils et instruments pour la conduite, la distribution, la transformation, l’accumulation, le réglage ou la commande du courant électrique Piles solaires pour la production d’énergie Cellules et modules photovoltaïques.
Classe 36: Courtage d’électricité (voir également la note sur les services de courtage).
Classe 39: Distribution d’électricité. Stockage d’électricité.
Classe 40: Production d’électricité.
Voir énergie solaire.
Appareils électroniques et électriques
L’expression appareils/dispositifs/instruments électroniques et électriques est trop vague aux fins de la classification; elle n’est acceptable dans aucune classe de produits et doit être précisée.
Il est à noter que les spécifications des appareils/dispositifs/instruments électroniques et électriques telles que celles reprises ci-dessous sont également jugées trop vagues:
pour le contrôle de l’environnement;
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pour le ménage; pour utilisation dans des salons de coiffure.
Cigarettes électroniques
À des fins de classification, les cigarettes électroniques ou e-cigarettes ne sont acceptables que dans la classe 34, même si elles peuvent être utilisées à des fins médicales. Les parties non électroniques de ces types de cigarettes, comme les cartouches, les pulvérisateurs ou les substances (arômes) qu’elles contiennent relèvent également de la classe 34.
Les parties électroniques, comme les piles et les circuits pour cigarettes électroniques contrôlés par microordinateur, ne sont pas acceptées dans ces classes et relèvent, comme d’habitude, de la classe 9.
Franchisage
Le verbe «franchiser» fait référence à la cession ou à la vente d’une franchise à une autre partie. En tant que nom, «franchise» désigne «l’autorisation donnée par une société à un individu ou à un groupe de vendre ses produits ou services dans une zone donnée» (Oxford English Dictionary).
Sans plus de précision, l’Office n’acceptera pas les expressions services de franchise ou services de franchisage dans la classe 35. Pour être acceptées elles devront néanmoins être accompagnées d’autres précisions. Par exemple:
Classe 35 : Conseils commerciaux en matière de franchises
Classe 36: Services de financement ayant trait au franchisage.
Classe 45: Services juridiques ayant trait au franchisage.
Systèmes GPS – localisation, suivi et navigation
Les systèmes de navigation par GPS et satellite (classe 9) fournissent des services de localisation, de suivi et de navigation, afin de donner des informations à leur utilisateur.
Le moyen le plus facile de classer ces services est de les diviser en deux catégories: les services fournissant les télécommunications permettant d’utiliser ces services (classe 38), et les services fournissant des informations via le dispositif GPS. La gamme d’informations fournies dépasse le seul cadre des informations sur les itinéraires de voyage (classe 39). Elle peut inclure des informations relatives aux restaurants et logements (classe 43), des informations sur les points de vente (classe 35) ou des numéros de téléphone (classe 38).
L’utilisation de dispositifs GPS dans le cadre de la circulation de véhicules et de personnes peut également relever de plusieurs classes. Les services de planification
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d’itinéraires (classe 39) ont déjà été mentionnés. Cette classification s’étendrait également aux entreprises logistiques ou de transport de marchandises qui assurent le suivi de leurs véhicules à l’aide de ces dispositifs.
Les systèmes GPS peuvent également être utilisés en association avec d’autres technologies, afin de localiser la source d’un signal de téléphone portable. Si cette utilisation se déroule dans le cadre d’un service de télécommunication, elle relèvera de la classe 38. En revanche, si elle entre dans le cadre d’un service d’enquête pénale, elle sera incluse dans la classe 45.
D’autres services peuvent être associés aux services susmentionnés. Par exemple, la création de cartes pour les systèmes GPS relève de la classe 42. Les applications téléchargeables utilisées pour exploiter le service ou fournissant des «voix» supplémentaires appartiennent à la classe 9. Les services de vente au détail fournissant les applications téléchargeables relèvent de la classe 35.
Les exemples ci-après illustrent la manière dont ces expressions, ainsi que d’autres, sont classées.
Classe 35: Compilation et fourniture d’informations commerciales concernant les prestataires de services de navigation par GPS.
Classe 38: Transmissions par satellite. Fourniture d’informations publiques concernant les abonnés pour la navigation par GPS. Fourniture d’un accès à des informations générales transmises par satellite. Services de télécommunications pour la localisation et le suivi de personnes et d’objets. Suivi de téléphones portables via des signaux satellites. Localisation de téléphones portables via des signaux satellites. Fourniture d’un accès aux services de navigation GPS par transmission satellite. Transmission de données de navigation par satellite.
Classe 39: Fourniture de services de navigation par GPS. Fourniture de services d’informations sur le trafic par transmission satellite. Fourniture de services d’informations routières par transmission satellite. Services de localisation de véhicules et de produits à des fins logistiques. Services de suivi de véhicules et de produits à des fins logistiques.
Classe 42: Fourniture d’informations météorologiques par transmission satellite. Création de cartes GPS.
Classe 45: Fourniture d’informations civiques et d’utilité publique pour la navigation par GPS. Suivi et localisation de personnes disparues par transmission satellite. Suivi de personnes équipées de dispositifs de marquage électronique. Services de suivi de véhicules à des fins de sécurité. Services de localisation de véhicules à des fins de sécurité.
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Coiffure
La plupart des appareils de coiffure électriques et non électriques sont inclus dans la classe 8 (p.ex. fers à friser électriques; pinces à cheveux [bigoudis non électriques]; fers à tuyauter pour cheveux; etc.), à l’exception des produits suivants:
Classe 26: Bigoudis/rouleaux électriques (p.ex. BIGOUDIS CARMEN™).
Classe 26: Bigoudis.
Classe 11: Sèche-cheveux.
Classe 21: Peignes et brosses (non électriques et électriques).
Services de location
Voir services de location.
Services d’aide humanitaire
La pratique de l’Office en ce qui concerne les services d’aide humanitaire est la même que pour les services caritatifs; la nature des services doit être précisée (voir services caritatifs).
Services internet, services en ligne
L’expression services internet n’est ni suffisamment claire ni suffisamment précise pour être acceptée dans une classe quelconque. Elle doit être précisée.
Il existe toute une gamme de services, fournis par des particuliers et des entreprises à d’autres particuliers et entreprises, ayant trait à la création, à l’exploitation et à la maintenance de sites internet; ceux-ci sont couverts par les expressions qui s’y rapportent dans plusieurs classes.
Il existe une gamme encore plus étendue de services fournis à des clients par l’intermédiaire des télécommunications, y compris via internet. Il est possible de faire des achats sur internet, d’y obtenir des conseils bancaires, d’y apprendre une nouvelle langue ou d’y écouter une station de radio «locale» se trouvant à l’autre bout du monde.
En règle générale, le système de la classification de Nice s’applique sans distinction entre les services fournis en vis-à-vis, dans des locaux spécifiques, par téléphone ou en ligne à partir d’une base de données ou d’un site internet.
Parmi les expressions acceptables figurent:
Classe 35: Services publicitaires fournis sur internet.
Classe 36: Services bancaires en ligne.
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Classe 38: Services de fourniture d’accès à internet.
Classe 41: Services de jeux en ligne.
Classe 42: Fourniture de services d’assistance en ligne pour utilisateurs de programmes informatiques.
Classe 45: Services de réseautage social en ligne.
Kits, nécessaires et ensembles
Dans le commerce, il est courant de vendre certains produits en groupes de plusieurs articles. Si ces articles sont tous identiques (p.ex. un paquet de trois brosses à dents), la classification est simple. Toutefois, les groupes de produits peuvent être des pièces d’un autre article, ou posséder une fonction non définie par chacun des produits. Ces groupes de produits sont parfois désignés sous un terme collectif, comme «kit» ou «ensemble». Ces petits mots peuvent avoir de lourdes implications pour 1) l’acceptabilité des produits en tant que groupe et 2) la classification adéquate.
Un kit, ou nécessaire, peut désigner soit:
1. un ensemble de pièces prêtes à être assemblées pour former quelque chose (par exemple un kit pour une maquette d’avion) ;
2. un ensemble d’outils ou d’équipements destinés à une finalité particulière (p.ex. un kit de premiers soins).
Un ensemble est une série d’articles envisagés comme formant un groupe. Le nombre de ces articles peut être défini ou non (par exemple un ensemble de clés, un ensemble de casseroles, un ensemble de clubs de golf; un ensemble de couverts).
Les termes «kit» ou «nécessaire» apparaissent dans la classification de Nice, par exemple dans les exemples suivants:
Classe 3: Nécessaires de cosmétique.
Classe 5: Kits de premiers soins (kits de pansements et de médicaments).
Il peut arriver que les différents produits constituant le kit ou l’ensemble soient classés, individuellement, dans plusieurs classes. Toutefois, l’Office ne refusera pas ces expressions collectives, pour autant qu’elles aient du sens et/ou qu’elles soient couramment utilisées.
Il est nécessaire, au moment d’établir la classification correcte d’un kit ou d’un ensemble, de déterminer soit ce pour quoi le kit va être utilisé, soit si ses parties sont censées servir à fabriquer ou à construire quelque chose, ce que sera l’article fini.
Exemples d’usages acceptables:
Classe 8: Nécessaires de manucure et de pédicure.
Classe 9: Nécessaires mains libres pour téléphone.
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Classe 12: Kits de réparation de pneus (pour réparer une pièce de véhicule appartenant à la classe 12).
Classe 27: Kit de fabrication de tapis.
Classe 28: Modèles réduits prêts-à-monter [jouets] Kits de modèles réduits.
Classe 32: Kits de fabrication de bières.
Classe 33: Kits de fabrication de vins.
Leasing
D’après les remarques générales figurant dans la classification de Nice (10e édition), «les services de leasing sont analogues aux services de location et doivent donc être classés de la même façon. Toutefois, les services de crédit-bail financier sont classés en classe 36 en tant que services financiers».
Voir également services de location.
Vente par correspondance
Voir services de vente au détail et en gros.
Manuels (pour ordinateurs, etc.)
Les produits électroniques tels que les ordinateurs, imprimantes, photocopieuses et autres sont souvent livrés au client en tant que produits neufs accompagnés d’une liste d’instructions d’emploi. Ces instructions peuvent se trouver sous format papier (imprimé) ou électronique (enregistrement sur un disque, ou document téléchargeable ou non téléchargeable disponible sur le site internet du fabricant).
Exemples:
Classe 9: Manuels de logiciels et de matériel informatique et autres manuels connexes au format électronique, vendus avec ces produits.
Classe 16: Manuels vendus avec des logiciels ou du matériel informatique.
Services de fabrication
La fabrication n’est considérée comme un service que lorsqu’elle est réalisée pour des tiers; elle doit être spécifiée comme telle. La fabrication sur mesure de certains produits «uniques» pour des tiers, par exemple un voilier ou une voiture de sport, par un spécialiste du domaine relèverait de la classe 40. La construction sur mesure, par exemple, d’éléments de cuisine personnalisés relèverait de la classe 40, mais leur installation, elle, serait incluse dans la classe 37.
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Services d’informations
Les services d’agences de presse relèvent de la classe 38. Il s’agit essentiellement de réseaux ou de points de collecte permettant aux journalistes et à d’autres personnes de soumettre et d’obtenir du matériel d’actualité (sous forme d’articles, de textes ou de photographies). Ces agences ne remplissent aucune autre fonction telle que des services de rédaction ou de vérification.
Les services de reporters relèvent de la classe 41. L’actualité ne connaît aucune frontière: tout peut en devenir le sujet.
D’autres exemples:
Classe 38: Services de diffusion d’actualités.
Classe 40: Impression de journaux.
Classe 41: Présentation d’actualités (programmes). Publication d’actualités. Rédaction d’actualités.
En ce qui concerne les publications électroniques d’actualités, les podcasts d’actualités téléchargeables, les séquences d’actualités, les sujets d’actualités, les publications d’actualités, etc., sont tous des produits relevant de la classe 9.
Services en ligne
Voir services internet.
Commande de services
Les commandes de produits et/ou services pour des tiers peuvent être acceptées dans la classe 35 en tant que services commerciaux/de bureau. Il existe des particuliers et des entreprises qui fournissent des services consistant à résoudre différents problèmes pour le compte de tiers: par exemple, si vous devez faire réparer un robinet qui fuit, l’intermédiaire (prestataire de services) organisera les services d’un plombier à votre place. Cette classification est assimilée à l’expression services d’approvisionnement pour des tiers [achat de produits et de services pour d’autres entreprises] de la classification de Nice.
Préparations parfumées et de rafraîchissement de l’air
Il existe des préparations qui servent simplement à masquer des odeurs déplaisantes (parfums), mais aussi des préparations qui les «dissimuler» chimiquement et qui les éliminent (désodorisants) et leurs appareil. Les exemples ci-après illustrent la manière dont ces produits sont classés:
Classe 3: Parfums d’ambiance.
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Encens. Pots-pourris odorants. Produits pour parfumer le linge. Bois odorants. Produits pour fumigations [parfums]. Sprays désodorisants.
Classe 5: Désodorisants d’atmosphère Produits pour la purification de l’air.
Classe 11 : Appareils pour la désodorisation de l'air
Parmi les autres produits susceptibles de libérer des odeurs plaisantes figurent les bougies parfumées, qui relèvent de la classe 4 (la libération de parfum étant une caractéristique secondaire), ainsi que le papier d’armoire parfumé (inclus dans la classe 16, par analogie avec les matériaux d’emballage et vu qu’il est généralement fait en papier).
Services personnels et sociaux rendus par des tiers destinés à satisfaire les besoins des individus
L’indication générale services personnels et sociaux rendus par des tiers destinés à satisfaire les besoins des individus n’est pas suffisamment claire ni précise et ne sera pas acceptée par l’Office (voir également paragraphe 4.2).
Cette expression doit être précisée par le demandeur.
De nombreux services personnels et sociaux pouvant être classifiés relèvent de classes autres que la classe 45, comme par exemple:
Classe 36: Services d’assurance personnelle (comme l’assurance-vie).
Classe 41: Éducation personnelle.
Classe 44: Services médicaux personnels.
Classe 45: Escorte [protection rapprochée]. Services de consultance en matière d’apparence personnelle. Services de guide touristique personnel. Services d’achats personnels.
Produits en métaux précieux
L’indication générale produits en métaux précieux ou en plaqué, non compris dans d’autres classes de la classe 14 n’est pas suffisamment claire ni précise et ne sera pas acceptée par l’Office (voir également paragraphe 4.2). Cette expression doit être précisée par le demandeur.
Il convient de faire preuve de prudence au moment de classifier les produits en métaux précieux.
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Traditionnellement, la quasi-totalité des produits fabriqués à partir de métaux précieux ou en plaqué étaient regroupés dans la classe 14. On considérait que le matériau avait une influence sur la raison motivant l’achat du produit, ce qui influençait donc la classification du produit en question.
Depuis le 1er janvier 2007, la classification de nombreux produits qui auraient autrefois été inclus dans la classe 14 a été modifiée. Cette reclassification des produits est basée sur leur fonction, et non pas sur le matériau qui les compose.
Les produits suivants sont des exemples de produits classés selon leur fonction ou leur finalité:
Classe 8: Couverts en métaux précieux.
Classe 16: Plumes de stylos en or.
Classe 21: Théières en métaux précieux.
Classe 34: Coffrets à cigarettes et à cigares en métaux précieux.
Vêtements de protection
Si les articles portés (ou, parfois, transportés) ont comme fonction primaire la prévention de blessures graves et/ou permanentes ou de décès, ou la prévention, par exemple, d’expositions à des températures extrêmes, à des substances chimiques, à des radiations, à des incendies ou à des dangers environnementaux ou atmosphériques, ils relèvent de la classe 9.
Parmi ces produits de protection, citons par exemple les casques de protection portés sur les chantiers, ou encore les casques portés par les agents de sécurité, les cavaliers, les motocyclistes et les joueurs de football américain. Les gilets pare-balles, les chaussures avec renfort orteils en métal, les gilets résistants au feu et les gants en métaux de boucher constituent quelques exemples: ce ne sont pas des vêtements à proprement parler. Les tabliers, sarraus et salopettes qui ne font qu’apporter une protection contre les taches et la saleté ne relèvent pas de la classe 9, mais de la classe 25, en tant que vêtements ordinaires. Les articles de protection pour le sport (à l’exception des casques) relèvent de la classe 28: aucun d’entre eux ne protège contre la perte de la vie ou d’un membre.
Services de location
Les services de location sont, en principe, classés dans la même classe que les services fournis. Par exemple, la location de voitures relève de la classe 39 (transport), la location de téléphones de la classe 38 (télécommunications) et la location de distributeurs automatiques de la classe 35 (services de vente au détail). Le même principe s’applique aux services de leasing, que l’on retrouve dans TMclass dans toutes les classes de services.
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Services de vente au détail et en gros
Le service de vente au détail est défini comme étant «l’action ou l’activité de vendre des produits dans des quantités relativement petites dans un but d’utilisation ou de consommation» (Oxford English Dictionary); telle est ainsi définie l’étendue des services couverts par cette expression.
La note explicative de la liste de la classe 35 dans la classification de Nice indique que l’expression «le regroupement pour le compte de tiers de produits divers (à l’exception de leur transport) permettant aux clients de les voir et de les acheter commodément» est acceptable dans la classe 35. Les services de vente au détail sont classés par analogie à cette expression.
Toutefois, en ce qui concerne les services de vente au détail ou les services similaires de la classe 35 relatifs à la vente de produits, comme les services de vente en gros, les services de vente par correspondance et les services de commerce électronique, l’Office applique l’arrêt du 7 juillet 2005 dans l’affaire C-418/02, «PRAKTIKER»: l’expression services de vente au détail ne peut être acceptée que lorsque le type de produits ou de services à vendre ou à regrouper pour le compte de tiers est indiqué avec suffisamment de clarté et de précision (voir le paragraphe 4.1). Les expressions services de vente au détail d’un supermarché et, par extension, services de vente au détail d’un centre commercial, ainsi que les expressions similaires ne peuvent pas être acceptées, étant donné que les produits à vendre ne sont pas définis.
La 10e édition de la classification de Nice (version 2013) inclut l’expression services de vente au détail ou en gros de préparations pharmaceutiques, vétérinaires et hygiéniques ainsi que de fournitures médicales, qui montre la manière dont les expressions peuvent être formulées.
Quelques exemples de catégories de produits qui ne satisfont pas aux exigences de clarté et de précision:
articles de merchandising; produits du commerce équitable; accessoires de design; articles de cadeaux; souvenirs; articles de collection; articles ménagers.
Les services de vente au détail pour des indications générales des intitulés de classe non acceptables (voir le paragraphe 3.4.2) ne peuvent pas être acceptés. Par exemple, l’Office n’acceptera pas les services de vente au détail pour des machines. Par contre, l’expression services de vente au détail pour des machines agricoles serait suffisamment précise pour être acceptée.
En ce qui concerne la «vente au détail de services» (à savoir des services consistant à regrouper pour le compte de tiers des services divers afin que le consommateur puisse commodément comparer et acquérir ceux-ci), la Cour de justice a statué que ces services doivent également être formulés avec suffisamment de clarté et de précision pour permettre aux autorités compétentes et aux autres opérateurs économiques de
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savoir quels sont ceux que le demandeur envisage de regrouper (voir l’arrêt du 10 juillet 2014 dans l’affaire C-420/13, «Netto Marken-Discount»).
Cet arrêt confirme que le «regroupement de services» est une activité qui est en droit de jouir d’une protection. La Cour accorde ainsi davantage d’importance au fait de définir les services qui sont regroupés qu’à définir l’action de «regrouper» elle-même (en faisant ainsi écho à son arrêt antérieur du 07/07/2005, C-418/02, «Praktiker»).
Les termes exprimant cela devraient répondre à deux critères. Premièrement à celui d’employer les termes familiers «regrouper pour le compte de tiers …afin que le consommateur puisse comparer et acquérir ceux-ci …» afin de «délimiter» les services qui sont ainsi regroupés et de décrire l’activité de vente au détail elle-même, et deuxièmement, à celui de décrire les services qui font l’objet du regroupement en employant des termes qui sont compris et acceptables à part entière (par exemple, services juridiques, services de radiodiffusion, services de club d’amincissement, etc.). Afin de remplir les conditions fondamentales en matière de clarté et de précision, tel que confirmé par l’arrêt «IP Translator», toute demande concernant la vente au détail ou le «regroupement» de services doit donc être libellée à l’aide de ces termes.
Les exemples suivants sont des spécifications qui seront dorénavant considérées comme acceptables:
Le regroupement, pour le compte de tiers, de services juridiques divers, afin que le consommateur puisse commodément comparer et acquérir ceux-ci.
Le regroupement, pour le compte de tiers, de services de clubs d’amincissement, de services de vidéo sur demande et de services d’agences de détectives, afin que le consommateur puisse commodément comparer et acquérir ceux-ci.
Le regroupement, pour le compte de tiers, de services de radiodiffusion divers, afin que le consommateur puisse commodément comparer et acquérir ceux-ci.
Dans le cas du regroupement de services, des formules telles que «services de vente au détail liés à …», «services de vente au détail liés à la vente de …» et «services de vente au détail en ligne liés à …» n’apportent pas une distinction claire entre la vente au détail de services et la prestation de ces services à part entière.
Les exemples suivants ne seront donc pas acceptés et entraîneront une objection:
Services de vente au détail liés à des services de plats à emporter.
Services de vente au détail liés à la vente de services juridiques.
Services de vente au détail par correspondance liés à la vente de services de détectives.
L’arrêt de la CJUE ne doit pas être interprété comme fournissant un moyen d’obtenir une protection double pour des services destinés à être fournis à part entière (qu’ils relèvent de la classe 35 ou d’une autre classe). Il ne devrait pas non plus être perçu comme un moyen alternatif de fournir une protection pour la publicité desdits services. Ainsi, si une demande couvre «le regroupement pour le compte de tiers de services de télécommunications afin que le consommateur puisse commodément comparer et acquérir ceux-ci», ces services ne couvrent pas la
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prestation en tant que telle de services de télécommunications (ce qui relève de la classe 38), mais uniquement le regroupement de divers prestataires de services de télécommunications afin que le consommateur puisse commodément comparer et acquérir ces services.
Enfin, la spécification des produits ou services par des expressions telles que «y compris, en particulier, par exemple, avec, spécifiquement, tel que» n’est pas suffisamment précise, vu que toutes ces expressions signifient en principe «par exemple». Elles ne limitent pas les produits ou services qui suivent. Dès lors, elles devraient être remplacées par «à savoir» ou «ceux-ci étant», afin de limiter les produits ou services qui suivent ces expressions.
Suivi par satellite
Voir systèmes GPS – localisation, suivi et navigation.
Ensembles
Voir kits, nécessaires et ensembles.
Services de réseautage social
Services de réseautage social est une expression qui peut être acceptée dans la classe 45. Elle serait considérée comme un service personnel incluant l’identification et la présentation de personnes partageant les mêmes opinions à des fins sociales.
D’autres aspects de l’industrie du «réseautage social» pourraient relever de classes autres que la classe 45, par exemple:
Classe 38: Exploitation de services de forums de discussion. Mise à disposition de forums en ligne.
Édition de logiciels
L’édition de logiciels relève de la classe 41. Un éditeur de logiciels est une société d’édition active dans l’industrie du logiciel, entre le développeur et le distributeur. Selon sa définition, l’édition inclut la publication de journaux et l’édition de logiciels.
Énergie solaire
L’énergie solaire est l’énergie qui est tirée du soleil et convertie en chaleur ou en électricité.
Les produits ayant trait à la production et au stockage d’électricité provenant de l’énergie solaire sont inclus dans la classe 9.
Classification
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Les produits ayant trait à la production et au stockage de chaleur provenant de l’énergie solaire sont inclus dans la classe 11.
Les services ayant trait à la production d’électricité provenant de l’énergie solaire sont inclus dans la classe 40.
Classe 9: Cellules photovoltaïques. Panneaux, modules et cellules solaires.
Classe 11: Collecteurs solaires pour chauffage.
Classe 40: Production d’énergie.
Voir électricité et énergie.
Services de stockage
Voir services de collecte et de stockage.
Fourniture de…
Il convient de faire preuve de prudence au moment d’accepter cette expression lorsqu’elle est utilisée pour qualifier des services. Elle peut être acceptée dans certains cas, par exemple pour la fourniture d’électricité de la classe 39: l’expression est ici souvent étroitement liée à la distribution. Elle peut également être acceptée dans l’expression services de traiteurs pour la fourniture de repas (de la classe 43), étant donné que la matière fournie, ainsi que la nature du service, ont toutes deux été indiquées.
Dans l’expression fourniture de logiciels informatiques (classe 42), il est difficile de savoir quels sont les services fournis. Si cette classe inclut les services de conception, location, mise à jour et maintenance de logiciels informatiques, il n’est pas facile de déterminer si l’un de ces services est inclus dans le terme général fourniture. Ce mot est souvent utilisé en tant que synonyme apparent des services de vente au détail, mais la classe 42 n’inclut pas ces services, qui relèvent de la classe 35.
Systèmes
Il s’agit ici d’un autre terme pouvant être trop obscur ou imprécis pour être accepté.
Il ne peut être accepté que lorsqu’il est précisé d’une manière qui lui confère une signification claire et non équivoque. Par exemple, les expressions suivantes sont acceptables:
Classe 7: Systèmes d’échappement.
Classe 9: Systèmes de télécommunication. Systèmes informatiques. Systèmes d’alarme.
Classification
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Classe 16: Systèmes d’archivage.
Billets (pour les voyages, les divertissements, etc.)
Un billet représente une «promesse de fournir», dans le cadre d’un service ou d’un service de réservation, le droit à un service. Quelques exemples:
Classe 39: Émission de billets d’avion.
Classe 41: Services de billetterie (guichet).
Il est à noter que les billets ne sont pas considérés comme des produits vendus au détail relevant de la classe 35.
Jeux vidéo
Voir jeux informatiques.
Environnement virtuel
L’expression fourniture d’un environnement virtuel n’est ni suffisamment claire ni suffisamment précise, étant donné qu’elle peut porter sur différents domaines d’activité et plusieurs classes. Elle doit donc être précisée.
Parmi les expressions acceptables figurent:
Classe 38: Fourniture d’un forum de discussion virtuel. Fourniture d’un accès à un environnement virtuel.
Classe 42: Hébergement d’un environnement virtuel. Maintenance d’un environnement virtuel.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L'HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE B
EXAMEN
SECTION 4
MOTIFS ABSOLUS DE REFUS
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Table des matières
2.6 Ordre public et bonnes mœurs, article 7, paragraphe 1, point f), du RMC.............................................................................................................4 2.6.1 «Ordre public» ................................................................................................ 4
2.6.1.1 Notion et catégories ....................................................................................4 2.6.1.2 Dénominations variétales végétales............................................................5
2.6.2 Bonnes mœurs ............................................................................................... 7
2.7 Caractère trompeur: article 7, paragraphe 1, point g), du RMC ............ 10 2.7.1 Examen du caractère trompeur .................................................................... 10 2.7.2 Réalité du marché et habitudes et perceptions des consommateurs .......... 12 2.7.3 Marques ayant des connotations géographiques concernant le lieu
d’établissement du demandeur ou le lieu de provenance des produits et/ou services................................................................................................ 13
2.7.4 Marques faisant référence à une approbation, un statut ou une reconnaissance «officiels» ........................................................................... 14
2.7.5 Lien avec d’autres dispositions du RMC ...................................................... 15
2.8 Protection des drapeaux et autres symboles – article 7, paragraphe 1, sous h) et i), du RMC........................................................ 17 2.8.1. Protection des armoiries, drapeaux et autres emblèmes d’État, signes et
poinçons officiels de contrôle et de garantie au titre de l’article 7, paragraphe 1, sous h), du RMC – article 6 ter, paragraphe 1, sous a), et paragraphe 2 de la CP ................................................................................. 18 2.8.1.1 Examen des marques représentant ou contenant un drapeau national ....21 2.8.1.2. Examen des marques représentant ou contenant des armoiries et
d’autres emblèmes d’État ..........................................................................26 2.8.1.3 Examen des marques représentant ou contenant des signes et
poinçons officiels de contrôle et de garantie..............................................30 2.8.2. Protection des armoiries, drapeaux et autres emblèmes, sigles et
dénominations des organisations internationales intergouvernementales au titre de l’article 7, paragraphe 1, sous h), du RMC - article 6 ter, paragraphe 1, sous b) et c) de la CP ........................................................... 30
2.8.3. Protection des badges, emblèmes ou écussons autres que ceux visés par l’article 6 ter de la Convention de Paris au titre de l’article 7, paragraphe 1, sous i), du RMC .................................................................... 37
2.9 Article 7, paragraphe 1, point j), du RMC................................................ 43 2.9.1 Introduction ................................................................................................... 43 2.9.2 Application de l’article 7, paragraphe 1, point j), du RMC ............................ 45
2.9.2.1 AOP/IGP pertinentes.................................................................................45 2.9.2.2 Situations couvertes par l’article 103 du règlement (UE) n° 1308/2013
et l’article 16 du règlement (CE) n° 110/2008............................................46 2.9.2.3 Produits pertinents ....................................................................................54
2.9.3 AOP/IGP non protégées au titre des règlements (UE) n° 1308/2013 et (CE) n° 110/2008.......................................................................................... 56 2.9.3.1 AOP/IGP protégées au niveau national dans un État membre de l’UE .....57 2.9.3.2 AOP/IGP de pays tiers ..............................................................................57
2.10 Article 7, paragraphe 1, point k), du RMC............................................... 59 2.10.1 Introduction ................................................................................................... 59 2.10.2 Application de l’article 7, paragraphe 1, point k), du RMC ........................... 61
2.10.2.1 AOP/IGP pertinentes.................................................................................61
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2.10.2.2 Situations couvertes par l’article 13, paragraphe 1, du règlement (UE) n° 1151/2012.............................................................................................62
2.10.2.3 Produits pertinents ....................................................................................71 2.10.3 AOP/IGP non protégées au titre du règlement (UE) n° 1151/2012 ............. 74
2.10.3.1 AOP/IGP protégées au niveau national dans un État membre de l’UE .....74 2.10.3.2 AOP/IGP de pays tiers ..............................................................................75
2.11 Marques communautaires collectives .................................................... 77 2.11.1 Caractère des marques collectives .............................................................. 77 2.11.2 Titulaires ....................................................................................................... 79 2.11.3 Dispositions particulières concernant les motifs absolus de refus ............... 79
2.11.3.1 Nature descriptive des signes ...................................................................80 2.11.3.2 Caractère trompeur ...................................................................................81 2.13.3.3 Règlements d’usage contraires à l’ordre public et aux bonnes mœurs .....81
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2.6 Ordre public et bonnes mœurs, article 7, paragraphe 1, point f), du RMC
En vertu de l'article 7, paragraphe 1, point f), du RMC, sont refusées à l'enregistrement les marques qui sont contraires à l'ordre public ou aux bonnes mœurs. Cette disposition a pour objet d'empêcher l'enregistrement de marques dans les cas où l'octroi d'un monopole irait à l'encontre de l'état de droit ou serait perçu par le public pertinent comme portant directement atteinte aux normes morales fondamentales de la société.
L'Office estime que l'ordre public et les bonnes mœurs sont deux notions différentes, qui se recoupent à maints égards.
La question de savoir si les produits et services demandés peuvent être légalement mis à la vente sur le marché d'un État membre spécifique est dénuée de pertinence en ce qui concerne la question de savoir si le signe lui-même enfreint l'article 7, paragraphe 1, point f), du RMC (voir l’arrêt du 13 septembre 2005 dans l'affaire T-140/02, «Intertops», Recueil 2005, p. II-03247, point 33). Pour déterminer si une marque est ou non contraire à l'ordre public ou aux bonnes mœurs, il convient de se référer aux qualités intrinsèques de la marque demandée et non à des circonstances relatives au comportement de la personne du demandeur de la marque (voir l’arrêt «Interlops» précité, point 28). Dans son arrêt du 20 septembre 2011 dans l'affaire T-232/10, «Blason soviétique», le Tribunal a conclu que pour interpréter les notions d'«ordre public» et de «bonnes mœurs», il y a lieu de prendre en considération non seulement les circonstances communes à l’ensemble des États membres de l’Union, mais également les circonstances particulières à des États membres pris individuellement qui sont susceptibles d’influencer la perception du public pertinent situé sur le territoire de ces États (point 34).
La législation et la pratique administrative de certains États membres peuvent également être prises en considération dans ce contexte (pour évaluer des valeurs subjectives), non en raison de leur valeur normative, mais en tant que preuve de faits permettant d'évaluer la perception du public pertinent dans ces États membres (voir l’arrêt «Blason soviétique» précité, point 57). Dans pareil cas, l'illégalité de la marque communautaire demandée n'est pas le facteur déterminant pour l'application de l'article 7, paragraphe 1, point f), du RMC, mais possède plutôt une valeur probante quant à la perception du public pertinent dans le ou les États membres en question.
Compte tenu du fait que les circonstances particulières à des États membres pris individuellement peuvent ne pas être connues dans l'ensemble du territoire européen, la notification d'irrégularité devrait expliquer clairement ces circonstances afin de garantir que le demandeur est en mesure de comprendre pleinement le raisonnement qui sous-tend ce refus et d'y répondre en conséquence.
2.6.1 «Ordre public»
2.6.1.1 Notion et catégories
Ce motif de refus découle d'une évaluation fondée sur des critères objectifs. La notion d'«ordre public» fait référence à l'acquis de l'Union applicable dans un domaine spécifique, ainsi qu'à l'ordre juridique et à l'État de droit tels que définis dans les traités et le droit européen dérivé, qui reflètent une compréhension commune sur certaines valeurs et principes fondamentaux, tels que les droits de l'homme. Ainsi que cela est
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indiqué ci-dessus, la législation nationale peut également être prise en considération, non en raison de sa valeur normative, mais en tant que preuve de faits permettant d’évaluer la perception du public pertinent dans ces États membres.
Ci-dessous figure une liste non exhaustive d'exemples de situations dans lesquelles des signes sont affectés par cette interdiction:
1. Le 27 décembre 2001, le Conseil de l'Union européenne a adopté la position commune 2001/931/PESC relative à l'application de mesures spécifiques en vue de lutter contre le terrorisme (JO L 344 du 28.12.2001, p. 93), ultérieurement mise à jour par la position commune 2009/64/PESC du Conseil (JO L 23 du 27.1.2009, p. 37, disponible en ligne à l'adresse suivante: http://eur- lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:023:0025:0029:FR:PDF) , qui contient une liste des personnes et groupes qui facilitent, commettent ou tentent de commettre des actes terroristes sur le territoire de l'Union. Toute marque communautaire demandée réputée soutenir ou bénéficier à une personne ou à un groupe de cette liste sera refusée comme étant contraire à l'ordre public.
2. L'usage des symboles et noms d'organisations nazis est interdit en Allemagne [voir l’article 86a dt. StGB (code pénal allemand), BGBl. Nr. I 75/1998] et en Autriche [voir l’article 1er öst. Abzeichengesetz (loi autrichienne sur les insignes), BGBl. Nr. 84/1960 lu en conjonction avec l'article 1er öst. Verbotsgesetz (loi autrichienne sur la prohibition), BGBl. Nr. 25/1947]. Toute marque communautaire demandée qui utilise de tels symboles ou noms sera rejetée comme étant contraire à l'ordre public.
3. Étant donné que la notion d'«ordre public» couvre également la législation européenne spécifique en vigueur dans un domaine donné, et dans la mesure où il existe à la fois un règlement européen et une convention internationale contraignante pour l'UE interdisant l'octroi de droits exclusifs sur le nom d'une variété végétale enregistrée dans l'Union européenne, il est contraire à l'ordre public européen d'octroyer des droits de marque exclusifs sur le nom d'une variété végétale enregistrée dans l'Union européenne, lequel est par conséquent jugé descriptif en droit.
2.6.1.2 Dénominations variétales végétales
Les dénominations variétales végétales décrivent des variétés ou sous-espèces cultivées de plantes vivantes ou des semences agricoles. Le règlement (CE) Nº 2100/94 du Conseil (RCVV) établit un système communautaire de protection des variétés végétales en tant que seule et unique forme de droit de propriété industrielle sur les variétés végétales dans l’Union Européenne.
Une dénomination variétale (DV) doit assurer une identification claire et précise de la variété végétale et doit remplir plusieurs critères (article 63 RCVV). Le demandeur d’une variété végétale doit proposer une dénomination variétale adéquate, qui sera utilisée par tous ceux qui commercialisent une telle variété dans le territoire d’un membre de l’Union Internationale pour la Protection des Obtentions Végétales (UPOV), même après l’extinction de la protection communautaire des variétés végétales (article 17 RCVV).
Depuis 2005, l’Union Européenne est partie à la convention internationale pour la protection des obtentions végétales (convention UPOV), dont les dispositions font
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partie intégrante de l’ordre juridique de l’Union. Conformément à l'article 20, paragraphe 1, point a), de la convention UPOV, la variété sera désignée par une dénomination destinée à être sa désignation générique. En outre, chaque Partie contractante s'assure qu’aucun droit relatif à la désignation enregistrée comme la dénomination de la variété n'entrave la libre utilisation de la dénomination en relation avec la variété, même après l'expiration du droit d'obtenteur.
Ainsi, tant le RCVV que la convention UPOV imposent l’obligation d’utiliser les dénominations variétales afin de commercialiser des variétés végétales protégées ou des variétés dont la protection est venue à expiration.
L’utilisation des dénominations variétales permet au public de savoir quelle variété végétale est-il en train d’utiliser ou d’acheter, ainsi que, le cas échéant, l’obtenteur et l’origine de la variété. L’obligation d’usage des dénominations variétales contribue à la régulation du marché et à la sécurité des transactions dans les secteurs agricole et alimentaire, empêchant ainsi la contrefaçon et la possibilité de tromper le public. En conséquence, l’utilisation des dénominations variétales est une question d’intérêt public et de sécurité publique.
En vertu de l’article 18(2) RCVV, un tiers peut utiliser un droit conféré en ce qui concerne une dénomination identique à la dénomination variétale pour entraver la libre utilisation de cette dénomination uniquement si ce droit a été accordé avant l’attribution de ladite dénomination conformément à l’article 63 RCVV.
A contrario, l’article 18(2) RCVV implique qu’il n’y a pas lieu d’octroyer des droits exclusifs sur une dénomination identique à la dénomination variétale une fois que la DV a été attribuée conformément à l’article 63 RCVV.
L’OHMI considère que l’enregistrement d’une marque communautaire qui entrave la libre utilisation d’une dénomination variétale après son attribution à la variété en question est contraire à l’ordre public.
Par conséquent, les demandes de marque communautaire qui consistent en (ou qui contiennent des) signes que, s’ils étaient enregistrés, entameraient une monopolisation indue d’une dénomination variétale protégée, même après l'expiration du droit d'obtenteur, feront l’objet d’une objection sous la base de l'article 7, paragraphe 1, point f), du RMC, en relation avec l’article 18, paragraphe 2 du RCVV, qui prévoit la libre utilisation par des tiers de la dénomination d’une variété végétale en relation avec cette variété (usage descriptif).
L'Office communautaire des variétés végétales (OCVV), établi à Angers (France), est l'agence de l'Union européenne responsable de la mise en œuvre d'un système de protection des variétés végétales.
Il conserve un registre des noms des variétés végétales protégées. Tant les variétés protégées que celles dont le droit de l’obtenteur a expiré peuvent être trouvées, sur la base de leur dénomination variétale ou d’autres critères de recherche, dans la base de données CPVO Variety Finder1 qui est disponible sur l'intranet de l'Office et qui devrait être consultée par les examinateurs comme outil de référence lorsque le type de produits et/ou de services couverts par la demande de marque communautaire l'exigent.
1 http://www.cpvo.europa.eu/main/fr/accueil/bases-de-donnees/cpvo-variety-finder
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Notamment, lorsque la spécification d'une demande de marque communautaire fait référence à des plantes vivantes, semences agricoles, fruits frais, légumes frais ou des termes équivalents, l'examinateur doit vérifier que le ou les termes composant la marque ne coïncident pas avec le nom enregistré d'une variété végétale donnée. À cette fin, il consulte la base de données de l'OCVV pour s'assurer que le ou les termes de la demande ne coïncident pas avec le nom d'une variété végétale déjà inscrite dans le registre susmentionné. Sa recherche doit se limiter aux noms de variétés végétales enregistrés pour l'Union européenne.
Si la recherche montre que la marque communautaire demandée consiste en (ou contient) une reproduction identique de la dénomination variétale (que ce soit dans une marque verbale ou figurative), l'examinateur doit s’y opposer en vertu de l'article 7, paragraphe 1, point f), du RMC en ce qui concerne la plante, les semences agricoles, les fruits frais ou les légumes frais en question, ainsi que les fruits ou les légumes séchés, en conserve ou surgelés, étant donné que l’enregistrement d’une marque communautaire qui consiste en ou qui contient dénominations variétale inscrite dans le registre susmentionné est contraire à l’ordre public. Si, par exemple, une marque communautaire demandée pour des ‘fleurs’ contient une DV désignant une rose, la spécification des produits devra être limité afin d’exclure les ‘roses’. En outre, si plusieurs DV apparaissent dans la marque demandée –par exemple, une DV pour des ‘pommes’ et une autre pour des ‘fraises−, la spécification des produits devra être limité afin d’exclure les produits désignés par chaque DV, à savoir, les pommes et les fraises.
Finalement, les points c) et d) de l’article 7, paragraphe 1 du RMC peuvent trouver à s’appliquer (voir section 2.3 et 2.4) dans le cas où une DV est utilisée dans le marché mais elle n’a pas été publiée ou enregistrée à l’OCVV, ainsi que dans le cas des DV nationales.
2.6.2 Bonnes mœurs
Ce motif de refus concerne des valeurs subjectives, mais qui doivent être appliquées de manière aussi objective que possible par l'examinateur. Cette disposition interdit l'enregistrement en tant que marque communautaire de termes ou expressions blasphématoires, racistes ou discriminatoires, mais uniquement si cette signification est clairement véhiculée, sans la moindre ambiguïté, par la marque demandée; les critères à appliquer sont ceux d’une personne raisonnable ayant des seuils moyens de sensibilité et de tolérance (voir l’arrêt du 9 mars 2012 dans l'affaire T-417/10, «¡Que buenu ye! Hijoputa», point 21).
Il est normalement nécessaire de prendre en considération les produits et services désignés par la marque demandée, étant donné que le public pertinent peut varier selon les produits et services offerts et peut dès lors avoir des seuils de tolérance différents quant à ce qu'il juge clairement inacceptable. Par exemple, ainsi que la grande chambre l'a décrété dans sa décision du 6 juillet 2006 dans l'affaire R 0495/2005-G – «SCREW YOU» (point 29), «toute personne qui est suffisamment intéressée par les [sex toys] pour remarquer les marques sous lesquelles ils sont vendus n'est pas susceptible d'être offensée par un terme ayant des connotations obscènes». Néanmoins, bien que le Tribunal ait estimé que les produits et les services visés par la demande d’enregistrement restent importants afin d’identifier le public par référence auquel la perception du signe doit être examinée, il a également précisé que le public pertinent ne saurait être limité au public auquel les produits et services désignés par le signe sont adressés, puisque d’autres personnes, sans être concernées par lesdits produits et services, peuvent être confrontées à ce
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signe (arrêt du 5 octobre 2011 dans l'affaire T-526/09, «Paki», points 17 et 18 respectivement). En conséquence, le contexte commercial dans lequel s’insère une marque, au sens du public auquel s'adressent les produits et services désignés, n'est pas toujours le facteur déterminant pour établir que la marque est contraire aux bonnes mœurs (voir l’arrêt «¡Que buenu ye! Hijoputa» précité, point 24). Nous renvoyons aussi à la décision du 15 mars 2013 dans l'affaire R 2073/2012-4 − «CURVE», points 17 et 18 (T-266/13 – en attente de jugement).
Les signes ayant une connotation «négative» ne sont pas les seuls signes potentiellement offensants. L'usage banal de certains signes ayant une connotation extrêmement positive peut aussi être offensant (par exemple des termes ayant une signification religieuse ou des symboles nationaux ayant une valeur spirituelle et politique, notamment ATATURK pour le citoyen ordinaire européen d'origine turque - décision du 17 septembre 2012 dans l'affaire R 2613/2011-2 – ATATURK, point 31).
L'illégalité n'est pas un critère suffisant pour que s'applique cette partie de l'article 7, paragraphe 1, point f), du RMC: certains termes ou signes ne donneraient pas lieu à l'engagement de procédures devant les autorités ou tribunaux compétents, mais sont suffisamment offensants pour le grand public pour ne pas être enregistrés en tant que marques (voir la décision du 1er septembre 2011 dans l'affaire R 0168/2011-1 – «fucking freezing! by TÜRPITZ», point 16). En outre, des mesures sont prises pour veiller à ce que les enfants et adolescents, même s'ils ne constituent pas le public pertinent des produits et services en question, ne soient pas confrontés à des termes offensants dans les magasins qui sont ouverts au grand public. Les définitions du dictionnaire fournissent généralement un premier indice permettant de déterminer si le terme en question est offensant dans la langue concernée (décision «fucking freezing! by TÜRPITZ» précitée, point 25), mais le facteur clé doit être la perception du public pertinent dans le contexte spécifique du lieu et du mode de confrontation avec les produits et services en cause.
D'autre part, la chambre de recours a estimé que le terme KURO ne possédait pas pour le public hongrois la signification offensante que véhicule le terme «kúró» (qui signifie «pratiquer le coït» en français), étant donné que les voyelles «ó» et «ú» sont des lettres différentes des lettres «o» et «u» et se prononcent différemment de ces dernières (voir la décision du 22 décembre 2012 dans l'affaire R 482/2012-1 – «kuro», points 12 et suivants).
Il existe un risque certain que le libellé de l'article 7, paragraphe 1, point f), du RMC puisse être appliqué de manière subjective dans le but de refuser à l'enregistrement des marques qui ne sont pas du goût personnel de l'examinateur. Cependant, pour que le ou les termes puissent être refusés, ils doivent être perçus comme étant offensants par des personnes ayant un seuil de sensibilité normal (voir l’arrêt «¡Que buenu ye! Hijoputa» précité, point 21).
La notion de bonnes mœurs visée à l'article 7, paragraphe 1, point f), du RMC n'a rien à voir avec le mauvais goût ou la prise en considération des sentiments des personnes. Pour tomber sous le coup de cet article, une marque doit être perçue par le public pertinent, ou à tout le moins par une partie importante de celui-ci, comme allant directement à l'encontre des normes morales fondamentales de la société.
Nul n'est besoin d'établir que le demandeur cherche à choquer ou insulter le public concerné; le fait objectif que la marque communautaire demandée puisse être perçue comme étant choquante ou insultante suffit (voir la décision du 23 octobre 2009 dans
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l'affaire R 1805/2007-1, «Paki», point 27, confirmée par l'arrêt «Paki», précité, points 20 et suivants).
Enfin, l'application de l'article 7, paragraphe 1, point f), du RMC n'est pas limitée par le principe de la liberté d'expression (article 10 de la Convention de sauvegarde des droits de l'homme et des libertés fondamentales) étant donné que le refus d'enregistrement signifie uniquement que le signe ne bénéficie pas de la protection conférée par la législation relative aux marques et n'empêche pas le signe d'être utilisé - même dans le commerce (arrêt «¡Que buenu ye! Hijoputa» précité, point 26).
Exemples de demandes de marques communautaires rejetées (ordre public et/ou bonnes mœurs)
Signe Consommateurpertinent Ordre public / bonnes mœurs Affaire n°
BIN LADIN Consommateurmoyen
Bonnes mœurs et ordre public - la marque demandée sera comprise du grand public comme étant le nom du chef de l'organisation terroriste notoirement connue Al-Qaïda; les actes terroristes sont contraires à l'ordre public et aux principes moraux (point 17).
R 0176/2004-2
CURVE 300 Consommateurmoyen
Bonnes mœurs - «CURVE» est un terme offensant et vulgaire en roumain (il signifie «prostituées»).
R 0288/2012-2
CURVE Consommateurmoyen
Bonnes mœurs - «CURVE» est un terme offensant et vulgaire en roumain (il signifie «prostituées»).
R 2073/2012-4 (T-266/13 - en
attente de jugement)
Consommateur moyen
Bonnes mœurs - «fucking» est un terme offensant et vulgaire en anglais. R 0168/2011-1
Consommateur moyen
Bonnes mœurs - «HIJOPUTA» est un terme offensant et vulgaire en espagnol.
T-417/10
Consommateur moyen
Le code pénal hongrois interdit certains «symboles du despotisme», dont la faucille et le marteau, ainsi que l'étoile rouge à cinq branches symbolisant l'ancienne URSS. Cette législation ne s'applique pas en raison de sa valeur normative, mais plutôt en tant que preuve de la perception du public pertinent (points 59 à 63).
T-232/10
PAKI Consommateurmoyen Bonnes mœurs - «PAKI» est une insulte à caractère raciste en anglais. T-526/09
SCREW YOU
Consommateur moyen (de produits autres que des produits à caractère sexuel)
Bonnes mœurs - une proportion significative des citoyens ordinaires britanniques et irlandais trouveraient les termes «SCREW YOU» offensants et inacceptables (point 26).
R 0495/2005-G
FICKEN Consommateurmoyen
Bonnes mœurs - «FICKEN» est un terme offensant et vulgaire en allemand (il signifie «pratiquer le coït»).
(T-52/13)
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Signe Consommateurpertinent Ordre public / bonnes mœurs Affaire n°
ATATURK
Consommateur moyen parmi les citoyens ordinaires européens d'origine turque
L'usage banal de certains signes ayant une connotation extrêmement positive peut être offensant au sens de l'article 7, paragraphe 1, point f). ATATURK est un symbole national ayant une valeur spirituelle et politique pour le citoyen ordinaire européen d'origine turque.
R 2613/2011-2
Exemples de demandes de marques communautaires acceptées
Signe Consommateurpertinent Ordre public / bonnes mœurs Affaire n°
KURO Consommateurmoyen
Le fait qu'un terme, nom ou abréviation étranger présente certaines similitudes avec un terme offensant (tel que kúró) n'est pas en soi un motif suffisant pour refuser l'enregistrement de la marque communautaire demandée (point 20). Les voyelles hongroises «ó» et «ú» diffèrent clairement des lettres «o» et «u» dépourvues d'accent. En outre, les termes hongrois ne se terminent jamais par un «o» sans accent (points 15 à 18).
R 482/2012-1
SCREW YOU Consommateur moyen (de produits à caractère sexuel)
Une personne entrant dans un sex shop est peu susceptible d'être offensée par une marque contenant des termes à connotation sexuelle, obscène (point 26).
R 495/2005-G
DE PUTA MADRE Consommateurmoyen
Bien que «puta» signifie «prostituée» en espagnol, l'expression DE PUTA MADRE signifie «excellent» dans cette même langue (argot).
MC 3 798 469 MC 4 781 662 MC 5 028 477
2.7 Caractère trompeur: article 7, paragraphe 1, point g), du RMC
2.7.1 Examen du caractère trompeur
Aux termes de l’article 7, paragraphe 1, point g), du RMC, sont refusées à l’enregistrement les marques qui sont de nature à tromper le public, par exemple sur la nature, la qualité ou la provenance géographique du produit ou du service.
Conformément à la jurisprudence relative à l’article 3, paragraphe 1, point g), de la première directive sur les marques, dont le libellé est identique à celui de l’article 7, paragraphe 1, point g), du RMC, les cas de refus d’enregistrement visés par l’article 7, paragraphe 1, point g), du RMC supposent que l’on puisse retenir l’existence d’une tromperie effective ou d’un risque suffisamment grave de tromperie du consommateur (voir l’arrêt du 30 mai 2006, C-259/04, «Elizabeth Emanuel», point 47 et la jurisprudence citée).
Au vu de ce qui précède, l’Office, dans la pratique, émet la double hypothèse suivante:
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1. il n’y a aucune raison de supposer qu’une marque est demandée dans l’intention de tromper les consommateurs. Aucune objection fondée sur le caractère trompeur ne devrait être émise si un usage non trompeur de la marque est possible vis-à-vis des produits et des services spécifiés; en d’autres termes, on suppose que le signe sera utilisé de façon non trompeuse si cela est possible;
2. le consommateur moyen est raisonnablement attentif et ne devrait pas être considéré comme étant particulièrement vulnérable à la tromperie. En règle générale, une objection ne sera émise que lorsque la marque donne lieu à une attente manifeste qui est en manifeste contradiction avec, par exemple, la nature, la qualité ou la provenance géographique des produits.
Une objection devrait être émise lorsque la liste des produits et/ou services est formulée de telle sorte qu’un usage non trompeur de la marque est impossible.
Les deux exemples suivants illustrent des cas où les marques ont été considérées comme étant de nature trompeuse au regard de la totalité ou d’une partie des produits revendiqués2.
Marque et produits Motivation Affaire
LACTOFREE
pour du lactose compris dans la classe 5
La nature du signe conduirait immédiatement le consommateur concerné à croire que le produit en question, à savoir du «lactose», ne contient pas de lactose. Il est manifeste que si le produit commercialisé sous le signe «LACTOFREE» était effectivement du lactose, alors la marque serait clairement trompeuse.
NB : Article 7, paragraphe 1, point c) est également applicable
R 892/2009-1
TITAN (mot allemand pour «titane»)
pour constructions transportables et déplaçables; unités de construction transportables modulaires pour fabrication de constructions préfabriquées déplaçables; constructions préfabriquées déplaçables fabriquées à partir d’unités de construction transportables modulaires, aucun des produits précités n’étant en titane ou ne contenant du titane, compris dans les classes 6 et 19.
Pour tenter de surmonter une objection fondée sur le caractère descriptif, le demandeur a, au cours de la procédure de recours, proposé de limiter les spécifications dans les deux classes en ajoutant, à la fin, l’indication aucun des produits précités n’étant en titane ou ne contenant du titane. La chambre a considéré qu’une telle limitation, si elle avait été acceptée, aurait eu pour effet de rendre la marque trompeuse du point de vue du public germanophone, étant donné qu’il aurait supposé que les produits étaient en titane alors qu’en réalité, ce n’était pas le cas.
R 789/2001-3
2 Ces exemples concernent uniquement la question de savoir si une objection fondée sur le caractère trompeur devrait être émise ou non. Ce paragraphe ne traite pas des objections susceptibles d’être formulées au titre d’autres motifs absolus de refus. En conséquence, la possibilité qu’une marque donnée puisse faire l’objet à première vue d’une objection au titre de l’article 7, paragraphe 1, points b) et/ou c), du RMC (ou d’autres dispositions pertinentes à cet égard) n’est pas examinée ici.
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Une objection devrait être émise lorsque la liste des produits et/ou services, formulée de manière détaillée, contient des produits et/ou services à l’égard desquels un usage non trompeur est impossible.
Dans le cas (inventé) d’une marque «KODAK VODKA» pour les produits vodka, rhum, gin, whisky, une objection devrait être émise en ce qui concerne les produits spécifiques à l’égard desquels il est impossible d’utiliser la marque de manière non trompeuse, c’est-à-dire rhum, gin, whisky. Ces cas sont nettement différents de ceux (voir ci-dessous) où des formulations/catégories larges sont utilisées et où un usage non trompeur du signe est possible. Par exemple, aucune objection ne serait formulée en ce qui concerne la marque «KODAK VODKA» déposée pour des boissons alcooliques, étant donné que cette vaste catégorie inclut la vodka, à l’égard de laquelle la marque n’est pas trompeuse.
Aucune objection ne devrait être émise lorsque la liste des produits et/ou services est formulée de manière si générale qu’un usage non trompeur est possible.
Lorsque des catégories larges sont utilisées dans la liste des produits et/ou services, il y a lieu de se demander si une objection devrait être émise en ce qui concerne une catégorie entière parce que la marque est trompeuse uniquement à l’égard de quelques produits et/ou services relevant de cette catégorie. L’Office a pour politique de ne pas émettre d’objection dans de tels cas. L’examinateur devrait partir du principe que la marque sera utilisée de manière non trompeuse. En d’autres termes, il n’émettra pas d’objection fondée sur le caractère trompeur dès lors qu’il pourra identifier (dans une catégorie) un usage non trompeur.
Par conséquent, la règle est que l’article 7, paragraphe 1, point g), du RMC ne s’applique pas si la spécification est composée de catégories larges qui incluent des produits et/ou services pour lesquels l’usage de la marque serait non trompeur. Par exemple, dans le cas d’une marque «ARCADIA» demandée pour des «vins», il ne serait pas approprié d’émettre une objection au titre de l’article 7, paragraphe 1, point g), du RMC, puisque la vaste catégorie «vins» recouvre également des vins en provenance d’Arcadie (et étant donné qu’«Arcadia» - qui désigne une région viticole en Grèce - n’est pas une indication géographique protégée au niveau communautaire, le demandeur n’est nullement tenu de limiter la spécification uniquement aux vins en provenance d’Arcadie).
2.7.2 Réalité du marché et habitudes et perceptions des consommateurs
Lorsqu’il s’agit de déterminer si une marque donnée est trompeuse ou non, il convient de tenir compte de la réalité du marché et des habitudes et perceptions des consommateurs.
Afin d’apprécier le caractère trompeur d’une marque au titre de l’article 7, paragraphe 1, point g), du RMC, il convient de tenir compte de la réalité du marché (à savoir la façon dont les produits et services sont généralement distribués/offerts à la vente/achetés/fournis, etc.) ainsi que des habitudes de consommation et de la perception du public pertinent, lequel est généralement composé de personnes normalement informées et raisonnablement attentives et avisées.
Par exemple, dans la marque (inventée) «ELDORADO CAFÈ LATINO» désignant les produits café, produits utilisés comme succédanés du café, café artificiel, chicorée,
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arômes de chicorée; chocolat, produits utilisés comme succédanés du chocolat; thé, cacao; sucre, riz, tapioca, sagou; farine et préparations faites de céréales, pain, pâtisserie et confiserie, glaces comestibles; miel, sirop de mélasse; levure, poudre pour faire lever; sel, moutarde; vinaigre, sauces (condiments); épices; glace à rafraîchir compris dans la classe 30, l’examen devrait aboutir aux conclusions suivantes:
une objection au titre de l’article 7, paragraphe 1, point g), du RMC serait justifiée en ce qui concerne les produits utilisés comme succédanés du café, café artificiel, chicorée, arômes de chicorée, car l’utilisation de la marque sur ces produits serait forcément trompeuse. Une personne pourrait croire qu’elle a acheté du café alors qu’en réalité, ce ne serait pas le cas;
une objection au titre de l’article 7, paragraphe 1, point g), du RMC serait également justifiée en ce qui concerne le produit thé. Étant donné que ces produits peuvent être vendus dans un emballage assez similaire à celui utilisé pour le café et qu’ils sont souvent achetés de manière plutôt précipitée, il est probable que de nombreux consommateurs ne se livreront pas à une analyse de l’inscription figurant sur l’emballage, mais qu’ils choisiront ces produits sur le linéaire en croyant (à tort) qu’il s’agit de café;
cependant, en ce qui concerne le café, il n’existe aucune «contradiction manifeste» entre le produit revendiqué café et l’expression «CAFÈ LATINO», étant donné que la catégorie générale café peut également inclure du café en provenance d’Amérique latine. En conséquence, aucune objection au titre de l’article 7, paragraphe 1, point g), du RMC ne peut être émise pour la catégorie du café en soi. La même logique s’applique en ce qui concerne les produits qui pourraient être aromatisés au café (tels que les produits chocolat, glaces comestibles et pâtisserie et confiserie) - une hypothèse d’usage non trompeur devrait être formulée, et il n’apparaît pas nécessairement de contradiction entre ledit énoncé et les produits;
enfin, pour les autres produits concernés, à savoir miel, pain, vinaigre etc., la présence de l’expression «CAFÈ LATINO» ne donnera lieu à aucune attente. En ce qui concerne ces produits, cette expression sera considérée comme étant manifestement dépourvue de caractère descriptif et, dès lors, il n’existera aucune possibilité de tromperie effective. Sur le marché «réel», le café n’est pas présenté sur les mêmes linéaires ou dans les mêmes rayons que le pain, le miel ou le vinaigre. En outre, les produits en question ont une apparence et un goût différents et sont normalement distribués dans un emballage différent.
2.7.3 Marques ayant des connotations géographiques concernant le lieu d’établissement du demandeur ou le lieu de provenance des produits et/ou services
Lorsqu’il s’agit de marques dotées de certaines connotations «géographiques» concernant le lieu d’établissement du demandeur ou le lieu de provenance des produits et/ou services, il convient de noter ce qui suit.
En règle générale, l’Office n’émettra pas d’objection fondée sur le caractère trompeur compte tenu du lieu géographique d’établissement du demandeur (adresse). En effet, un tel lieu géographique n’a, en principe, aucun rapport avec la provenance géographique des produits et services, c’est-à-dire le lieu effectif de production/d’offre des produits et services désignés par la marque.
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À titre d’exemple, une demande de marque figurative contenant les mots MADE IN USA pour des vêtements compris dans la classe 25, déposée par une société ayant son siège en Suède, ne pourrait pas faire l’objet d’une objection au titre de l’article 7, paragraphe 1, point g), du RMC. Dans de tels cas, l’Office part du principe que le titulaire fait un usage non trompeur de la marque.
Un caractère trompeur apparaîtrait néanmoins dans l’hypothèse où une demande de marque figurative contenant les mots MADE IN USA serait déposée par une société ayant son siège aux États-Unis d’Amérique pour une liste de produits limitée de façon spécifique: articles d’habillement fabriqués au Viêt Nam, bien que, dans la pratique, il est peu probable que de tels cas se présentent.
Dans certains cas, le signe pourrait évoquer, dans l’esprit des consommateurs, certaines impressions/attentes quant à la provenance géographique des produits ou de leur concepteur, qui pourraient ne pas correspondre à la réalité. Par exemple, des marques telles que ALESSANDRO PERETTI ou GIUSEPPE LANARO (exemples inventés) désignant des vêtements ou des articles de mode en général pourraient laisser entendre au public pertinent que ces produits sont conçus et fabriqués par un styliste italien, ce qui pourrait ne pas être le cas.
Cependant, une telle circonstance ne suffit pas en soi à rendre ces marques trompeuses. En effet, de «fausses impressions/attentes» engendrées par la marque n’équivalent pas à une tromperie effective lorsque le signe est simplement évocateur. Dans pareils cas, il n’existe pas de contradiction manifeste entre l’impression/attente qu’un signe peut évoquer et les caractéristiques/qualités des produits et services qu’il désigne.
2.7.4 Marques faisant référence à une approbation, un statut ou une reconnaissance «officiels»
Il convient de noter que, conformément à la pratique de l’Office, sont acceptables les marques susceptibles d’évoquer une approbation, un statut ou une reconnaissance officiels sans donner la nette impression que les produits et/ou services proviennent d’un organisme public ou d’une organisation officielle, ou sont approuvés par ces derniers.
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Les deux exemples suivants illustrent des cas où les marques concernées, bien qu’allusives ou évocatrices, n’ont pas été jugées trompeuses:
Marque et services Motivation Affaire
THE ECOMMERCE AUTHORITY
pour des services commerciaux, à savoir, fourniture de classements et d’autres informations concernant les vendeurs, produits et services dans le domaine du commerce électronique, compris dans la classe 35, et services de recherche, de conseils et d’informations dans le domaine du commerce électronique, compris dans la classe 42.
La chambre a considéré que la marque n’était pas trompeuse, étant donné qu’elle ne donnait pas la nette impression que les services provenaient d’une organisation gouvernementale ou officielle (cependant, la chambre a confirmé le refus en vertu de l’article 7, paragraphe 1, point b), au motif que la marque était dépourvue de caractère distinctif, étant donné qu’elle serait perçue par le public anglophone comme une simple déclaration d’autopromotion revendiquant quelque chose quant au niveau de compétence des prestataires de services).
R 803/2000-1
pour, entre autres, l’enseignement de la pratique du ski,
compris dans la classe 41.
La chambre a considéré que les consommateurs français comprendraient que la marque faisait allusion au fait que les services étaient fournis en France, par un centre d’enseignement français, et concernaient l’apprentissage du ski «à la française». Elle a ajouté que le public français n’avait aucune raison de croire, de par la simple présence d’un logo tricolore (qui ne reproduit pas le drapeau français), que les services étaient fournis par les pouvoirs publics, voire cautionnés par ces derniers.
R 235/2009-1
confirmé par le Tribunal dans l’affaire T-41/10
2.7.5 Lien avec d’autres dispositions du RMC
Les explications ci-dessus visent à définir le champ d’application de l’article 7, paragraphe 1, point g), du RMC. Bien qu’elles soient examinées dans les sections des Directives qui leur sont spécifiquement consacrées, les dispositions suivantes peuvent être particulièrement pertinentes dans le cadre de l’examen des motifs absolus et des scénarios de caractère trompeur potentiel.
Article 7, paragraphe 1, points b) et c), du RMC
Conformément à la pratique actuelle de l’Office, si, à la suite d’une objection fondée sur le caractère descriptif et/ou l’absence de caractère distinctif, le demandeur de marque communautaire propose une limitation dans le but de surmonter ladite objection, et si la limitation proposée satisfait aux exigences prescrites (demande inconditionnelle et convenablement formulée), la liste des produits et/ou services originale sera limitée en conséquence. Toutefois, si la limitation en question (bien que surmontant l’objection initiale) a pour effet de rendre la marque demandée trompeuse, dans ce cas, l’examinateur devra émettre une objection fondée sur le caractère trompeur au titre de l’article 7, paragraphe 1, point g), du RMC. L’exemple suivant illustre ce scénario:
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La marque «ARCADIA» était initialement demandée pour des vins, spiritueux (boissons) et liqueurs compris dans la classe 33. L’examinateur a émis une objection car la marque était descriptive de la provenance géographique de vins, dans la mesure où l’Arcadie est une région grecque connue pour sa production viticole (cependant, il convient de noter qu’«Arcadia» n’est pas une indication géographique protégée). Le demandeur a proposé de limiter la spécification des produits pour exclure les vins produits en Grèce ou, si cela était préférable, d’inclure uniquement les vins produits en Italie. L’examinateur a fait valoir que la limitation proposée rendrait la marque trompeuse, étant donné qu’elle véhiculerait des informations erronées quant à la provenance des produits. Dans le cadre de la procédure de recours, la chambre a confirmé le raisonnement de l’examinateur (voir la décision du 27 mars 2000, R 246/1999-1 – «ARCADIA», paragraphe 14).
Article 7, paragraphe 1, point h), du RMC
Cette disposition exclut de l’enregistrement les marques communautaires qui consistent en/contiennent des drapeaux et autres symboles d’États, d’une part, et des drapeaux et autres symboles d’organisations intergouvernementales internationales, d’autre part, qui sont protégés en vertu de l’article 6 ter de la convention de Paris et dont l’inclusion dans la marque n’a pas été expressément autorisée par les autorités compétentes. Lorsqu’il s’agit des drapeaux et autres symboles d’organisations intergouvernementales internationales, le problème survient lorsque le public pourrait croire, à tort, qu’eu égard aux produits et/ou services concernés, il existe un lien entre le demandeur de marque communautaire et l’organisation internationale dont le drapeau ou symbole apparaît dans la marque communautaire.
Article 7, paragraphe 1, points j) et k), du RMC (indications géographiques protégées)
Ces dispositions excluent les marques de vins ou de spiritueux, d’une part, et d’autres produits agricoles, d’autre part, qui comportent ou qui sont composées d’indications géographiques protégées (IGP) ou d’appellations d’origine protégées (AOP), lorsque la liste des produits concernés ne précise pas que ceux-ci ont l’origine géographique affichée. Conformément aux règles directement applicables des règlements européens spécifiques correspondants qui sous-tendent ces dispositions, l’Office doit formuler une objection vis-à-vis de demandes de marques communautaires lorsque l’indication géographique protégée fait l’objet d’une utilisation abusive ou lorsque lesdites demandes véhiculent une indication erronée ou trompeuse quant à la provenance, l’origine, la nature ou les qualités essentielles des produits concernés.
Article 17, paragraphe 4, du RMC (transfert)
En vertu de cette disposition, s’il résulte de façon manifeste des pièces établissant le transfert qu’en raison de celui-ci, la marque communautaire sera propre à induire le public en erreur, notamment sur la nature, la qualité ou la provenance géographique des produits ou des services pour lesquels elle est enregistrée, l’Office refusera d’enregistrer le transfert, à moins que l’ayant cause n’accepte de limiter l’enregistrement de la marque communautaire à des produits ou à des services pour lesquels elle ne sera pas trompeuse (voir aussi Part E. Section 3. Point 3.6).
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Article 51, paragraphe 1, point c), du RMC (causes de déchéance)
Si, lorsqu’il examine une marque en vertu de l’article 7, paragraphe 1, point g), du RMC, l’examinateur doit limiter l’examen à la signification véhiculée par le signe vis-à- vis des produits et/ou services concernés (ce qui signifie que la façon dont le signe est effectivement utilisé n’a aucune importance), aux termes de l’article 51, paragraphe 1, point c), du RMC, la façon dont le signe est utilisé est décisive, étant donné que, conformément à cette disposition, le titulaire d’une marque communautaire enregistrée peut être déclaré déchu de ses droits si, par suite de l’usage qui en est fait par son titulaire ou avec son consentement, la marque est propre à induire le public en erreur, notamment sur la nature, la qualité ou la provenance géographique des produits et/ou services concernés.
2.8 Protection des drapeaux et autres symboles – article 7, paragraphe 1, sous h) et i), du RMC
L’article 6 ter de la Convention de Paris (CP) a pour but d’exclure l’enregistrement et l’utilisation des marques qui sont identiques ou, dans une certaine mesure, similaires à des emblèmes d’État ou à des emblèmes, sigles et dénominations d’organisations internationales intergouvernementales.
«Les raisons en sont qu’un tel enregistrement ou une telle utilisation porterait atteinte au droit de l’État à contrôler l’usage des symboles de sa souveraineté et pourrait en outre induire le public en erreur quant à l’origine des produits auxquels de telles marques seraient appliquées.» (G.H.C. Bodenhausen, Guide d’application de la Convention de Paris pour la protection de la propriété industrielle, telle que révisée à Stockholm en 1967, page 96). Dans ce contexte, le terme «origine» doit être compris comme provenant de ou étant approuvé par l’administration compétente, non comme étant produit sur le territoire de cet État ou, dans le cas de l’UE, dans l’UE.
L’article 7, paragraphe 1, sous h), concerne les symboles suivants:
armoiries, drapeaux et autres emblèmes, signes et poinçons officiels qui appartiennent à des États et qui ont été communiqués à l’OMPI, même si, s’agissant des drapeaux, une telle communication n’est pas obligatoire;
armoiries, drapeaux et autres emblèmes, sigles et dénominations des organisations internationales intergouvernementales qui ont été communiqués à l’OMPI, à l’exception de ceux qui ont déjà fait l’objet d’accords internationaux destinés à assurer leur protection (voir, par exemple, la Convention de Genève du 12 août 1949 pour l’amélioration du sort des blessés et des malades dans les forces armées en campagne, dont l’article 44 protège l’emblème de la Croix- Rouge sur fond blanc, les mots «Croix-Rouge» ou «Croix de Genève» et des emblèmes analogues).
La Cour de Justice a clairement indiqué que ces dispositions pouvaient s’appliquer que la demande concerne des produits ou des services, et que les champs d’application de l’article 7, paragraphe 1, sous h) et de l’article 7, paragraphe 1, sous i), du RMC sont analogues. Il convient donc de supposer que les deux articles accordent une protection au moins aussi étendue, étant donné qu’ils poursuivent le même objectif, à savoir celui d’interdire l’utilisation d’emblèmes spécifiques présentant un intérêt public à défaut d’autorisation des pouvoirs compétents (voir arrêt du 16 juillet 2009, «RW feuille d’érable», C-202/08 P et C-208/08 P, points 78, 79 et 80).
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2.8.1. Protection des armoiries, drapeaux et autres emblèmes d’État, signes et poinçons officiels de contrôle et de garantie au titre de l’article 7, paragraphe 1, sous h), du RMC – article 6 ter, paragraphe 1, sous a), et paragraphe 2 de la CP
Conformément à l’article 6 ter, paragraphe 1, sous a), de la CP, l’enregistrement, soit comme marque de fabrique ou de commerce, soit comme élément de ces marques, des armoiries, drapeaux et autres emblèmes d’État des pays de l’Union (c’est-à-dire les pays auxquels la CP s’applique), signes et poinçons officiels de contrôle et de garantie adoptés par eux, ainsi que toute imitation au point de vue héraldique, sera refusé si l’autorité compétente n’a pas donné son autorisation.
Les membres de l’Organisation mondiale du commerce (OMC) jouissent de la même protection en vertu de l’article 2, paragraphe 1, de l’accord sur les ADPIC, selon lequel les membres de l’OMC doivent se conformer aux articles premier à 12 et à l’article 19 de la Convention de Paris.
Par conséquent, pour tomber sous le coup de l’article 7, paragraphe 1, sous h), du RMC, une marque:
doit constituer exclusivement une reproduction identique ou une «imitation héraldique» des symboles susmentionnés;
doit contenir une reproduction identique ou une «imitation héraldique» des symboles susmentionnés.
En outre, l’autorité compétente ne doit pas avoir donné son autorisation.
Les armoiries sont constituées d’un dessin ou d’une image représentée sur un écusson. Voir l’exemple suivant.
Armoiries bulgares – base de données 6 ter n° BG2
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Les drapeaux nationaux sont généralement constitués d’un dessin rectangulaire distinctif utilisé comme symbole d’une nation. Voir l’exemple suivant.
Drapeau croate
L’expression «autres emblèmes d’État» est plutôt vague. Elle désigne généralement tout emblème représentant le symbole de la souveraineté d’un État, y compris les écussons des familles régnantes ainsi que les emblèmes des États appartenant à une fédération partie à la Convention de Paris. Voir l’exemple suivant.
Emblème de l’État danois – base de données 6 ter n° DK3
Les signes et poinçons officiels de contrôle et de garantie ont pour objectif de certifier qu’un État, ou une organisation dûment autorisée à cet effet par un État, s’est assuré que certains produits satisfont à une norme donnée ou présentent un certain niveau de qualité. Plusieurs États utilisent des signes et poinçons officiels de contrôle et de garantie pour les métaux précieux ou des produits tels que le beurre, le fromage, la viande, le matériel électrique, etc. Ces signes et poinçons officiels peuvent également s’appliquer aux services, par exemple dans le domaine de l’éducation, du tourisme, etc. Voir les exemples suivants.
Signe espagnol officiel pour la promotion de l’exportation n° ES1
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Poinçon britannique pour des articles en platine n° GB 40
Il convient de noter que l’article 6 ter de la CP ne protège pas les symboles susmentionnés contre toutes les imitations, mais seulement contre les «imitations héraldiques». La notion «d’imitation héraldique» doit être interprétée en ce sens que «... l’interdiction d’imitation d’un emblème concerne cependant uniquement les imitations de celui-ci au point de vue héraldique, c’est-à-dire celles qui réunissent les connotations héraldiques qui distinguent l’emblème des autres signes. Ainsi, la protection contre toute imitation du point de vue héraldique se réfère non à l’image en tant que telle, mais à son expression héraldique. Aussi y a-t-il lieu, afin de déterminer si la marque comprend une imitation du point de vue héraldique, de considérer la description héraldique de l’emblème en cause» (voir l’arrêt de la Cour de Justice de l’Union européenne du 16 juillet 2009, C-202/08 P et C-208/08 P, point 48).
Par conséquent, lorsqu’il s’agit d’établir une comparaison «au point de vue héraldique» au sens de l’article 6 ter de la CP, il convient de tenir compte de la description héraldique de l’emblème concerné et non de toute description géométrique du même emblème, dont le caractère est par nature beaucoup plus précis. En effet, si la description géométrique de l’emblème devait être prise en considération, cela «... conduirait à refuser la protection de l’article 6 ter, paragraphe 1, sous a), de la Convention de Paris à l’emblème à la moindre nuance entre les deux descriptions. D’autre part, le cas de la conformité graphique avec l’emblème utilisé par la marque est déjà couvert par la première partie de cette disposition, de sorte que l’expression ‘toute imitation au point de vue héraldique’ doit être comprise comme ayant une portée additionnelle» (voir ibidem, point 49).
Par exemple, un examinateur doit tenir compte de la description héraldique de
l’emblème européen – «sur fond azur, un cercle composé de douze étoiles d’or à cinq rais dont les pointes ne se touchent pas» – et non de sa description géométrique: «l’emblème est constitué par un rectangle bleu dont le battant a une fois et demi la longueur du guindant. Les douze étoiles d’or s’alignent régulièrement le long d’un cercle non apparent, dont le centre est situé au point d’intersection des diagonales du rectangle. Le rayon de ce cercle est égal au tiers de la hauteur du guindant. Chacune des étoiles à cinq branches est construite dans un cercle non apparent, dont le rayon est égal à un dix-huitième de la hauteur du guindant. Toutes les étoiles sont disposées verticalement, c’est-à-dire avec une branche dirigée vers le haut et deux branches s’appuyant sur une ligne non apparente, perpendiculaire à la hampe. Les étoiles sont disposées comme les heures sur le cadran d’une montre. Leur nombre est invariable.»
En outre, les armoiries et autres emblèmes héraldiques sont dessinés à partir d’une description relativement simple, comportant des indications quant à l’arrangement et à la couleur du fond, ainsi que l’énumération des différents éléments (tels un lion, un aigle, une fleur, etc.) qui constituent l’emblème, avec la mention de leurs couleurs et de
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leurs positions dans l’emblème. Cependant, cette description héraldique ne comporte pas d’indications détaillées quant au dessin de l’emblème et aux éléments particuliers qui le constituent, de sorte que plusieurs interprétations artistiques d’un seul et même emblème sont possibles à partir de la même description héraldique. Si chacune de ces interprétations peut présenter des différences de détail par rapport aux autres, il n’en demeure pas moins qu’elles seront toutes des imitations «au point de vue héraldique» de l’emblème concerné (voir l’arrêt du 28 février 2008, T-215/06, points 71 et 72).
Ainsi, une marque ne reproduisant pas exactement un emblème d’État peut néanmoins être visée par l’article 6 ter, paragraphe 1, sous a), de la Convention de Paris, lorsqu’elle est perçue par le public concerné comme imitant un tel emblème. En ce qui concerne l’expression «imitation au point de vue héraldique» figurant dans cette disposition, il y a toutefois lieu de préciser que toute différence entre la marque dont l’enregistrement est demandé et l’emblème d’État, détectée par un spécialiste de l’art héraldique, ne sera pas nécessairement perçue par le consommateur moyen qui, en dépit de différences au niveau de certains détails héraldiques, peut voir dans la marque une imitation de l’emblème en question (voir l’arrêt de la CJUE du 16 juillet 2009, C-202/08 P et C-208/08 P, points 50 et 51).
En outre, pour que l’article 6 ter, paragraphe 1, sous a), de la Convention de Paris s’applique, il n’est pas nécessaire d’examiner l’impression globale produite par la marque en tenant compte également de ses autres éléments (verbaux, figuratifs, etc.).
En effet, l’article 6 ter, paragraphe 1, sous a), de la Convention de Paris s’applique non seulement à des marques, mais également à des éléments de marques reprenant ou imitant des emblèmes d’État. Il suffit, par conséquent, qu’un seul élément de la marque demandée représente un tel emblème ou une imitation de celui-ci pour que l’enregistrement en tant que marque communautaire soit refusé (voir aussi l’arrêt du 21 avril 2004, «ECA», T-127/02, points 40 à 41).
2.8.1.1 Examen des marques représentant ou contenant un drapeau national
L’examen des marques représentant ou contenant un drapeau national comporte trois étapes:
1 Trouver une reproduction officielle du drapeau protégé. 2 Comparer le drapeau avec la marque demandée. La marque demandée
représente-t-elle exclusivement ou contient-elle une reproduction identique du drapeau (b)? Ou la marque représente-t-elle exclusivement ou contient-elle une imitation héraldique de ce drapeau (b)?
3 Vérifier s’il existe des éléments prouvant que l’enregistrement du drapeau a été autorisé par l’autorité compétente.
1 Trouver le drapeau protégé
Comme indiqué ci-dessus, les États ne sont pas obligés d’inclure les drapeaux dans la liste des emblèmes qui doit être communiquée à l’OMPI. En effet, les drapeaux sont censés être connus.
Toutefois, certains drapeaux ont été inclus dans la liste qui peut être consultée en utilisant l’outil «Recherche structurée article 6 ter» mis à disposition par l’OMPI. À défaut, les examinateurs doivent consulter les sites internet officiels des
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gouvernements concernés, et des encyclopédies et/ou des dictionnaires afin de pouvoir consulter une reproduction exacte du drapeau national.
2 Comparer le drapeau avec la marque demandée
a) La marque demandée représente-t-elle exclusivement ou contient-elle une reproduction identique d’un drapeau? Le cas échéant, passer à l’étape suivante.
b) La marque représente-t-elle exclusivement ou contient-elle une imitation héraldique d’un drapeau?
S’agissant des drapeaux, la marque doit être comparée à la description héraldique du drapeau en cause. Par exemple, dans l’arrêt rendu le 5 mai 2011 (T-41/10 - ESF École du ski français), le drapeau français a été décrit comme un drapeau de forme rectangulaire ou carrée et formé de trois bandes verticales de largeur égale, de couleurs bleue, blanche et rouge.
L’examinateur utilisera la description héraldique, qui donne des indications quant à l’arrangement et à la couleur du fond, ainsi que l’énumération des différents éléments (tels un lion, un aigle, une fleur, etc.) qui constituent le drapeau avec la mention de ses couleurs, de sa position et de ses proportions pour parvenir à une conclusion sur une imitation héraldique.
En principe, le drapeau et la marque (ou la partie de la marque dans laquelle le drapeau est reproduit) doivent être relativement similaires pour qu’une imitation héraldique soit constatée.
Voir l’exemple suivant où une «imitation héraldique» d’un drapeau a été constatée:
Drapeau Demande de marque communautaire refusée
Drapeau suisse Demande de marque communautaire 8 426 876
L’utilisation d’un drapeau en noir et blanc peut néanmoins être considérée comme une imitation héraldique lorsque le drapeau représente ou contient des caractéristiques héraldiques uniques. Par exemple, la représentation en noir et blanc du drapeau canadien ci-dessous est considérée comme une imitation héraldique.
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Drapeau Demande de marque communautaire refusée
Drapeau canadien Demande de marque communautaire 2 793 495
En revanche, pour les drapeaux constitués uniquement de bandes de trois couleurs (verticales ou horizontales) une reproduction en noir et blanc ne sera pas considérée comme une imitation héraldique étant donné que les drapeaux de ce type sont assez répandus.
Comme indiqué ci-dessus, la présence d’autres éléments dans les marques n’a aucune importance, comme confirmé par le refus, par la chambre de recours, de la demande de marque communautaire 10 502 714.
Drapeau Signe
Les drapeaux, par exemple, de la Belgique, de la République tchèque, de la France, de l’Italie, de la Lettonie, de l’Autriche, de la Finlande et de la Suède.
Demande de marque communautaire 10 502 714, R 1291/2012-2
«(…) les drapeaux (…) sont tous représentés dans la marque et seront immédiatement reconnus en tant que tels par le public originaire de ces pays de l’UE, ainsi que de nombreux autres sur le territoire pertinent. (…) Ils ne sont pas unis les uns aux autres de telle sorte que leurs caractéristiques individuelles sont supprimées. Il convient aussi de noter que les drapeaux qui figurent en dessous de la marque (…) ne sont pas présentés à l’envers mais sont représentés exactement comme ils le seraient en temps normal.
Comme l’indique la Cour dans son arrêt du 16 juillet 2009, C-202/08 P et C-208/08 P, «RW feuille d’érable», point 59, l’article 6 ter, paragraphe 1, sous a), de la convention de Paris s’applique non seulement à des marques, mais également à des éléments de marques reprenant ou imitant des emblèmes d’État. Il suffit, par conséquent, qu’un seul élément de la marque demandée représente un tel emblème ou une imitation de celui-ci pour que l’enregistrement en tant que marque communautaire soit refusé. (…) Par conséquent, doivent être rejetés les arguments du requérant selon lesquels même si la marque reprend différents drapeaux nationaux, il ne s’agit que d’une petite partie de la marque qui est couverte par la présence d’éléments additionnels et que ces éléments sont plus dominants et distinctifs» (points 18 et 19).
Si la forme d’un élément est différente de celle d’un drapeau (circulaire par exemple), cet élément n’est pas considéré comme une imitation héraldique. D’autres formes différentes qui ne sont pas des imitations héraldiques sont présentées dans les exemples suivants:
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Drapeau Demande de marque communautaire acceptée
Demande de marque communautaire 5 851 721
Drapeau italien Demande de marque communautaire 5 514 062
Drapeau suisse Demande de marque communautaire 6 015 473
Drapeau finlandais Demande de marque communautaire 7 087 281
Drapeau Demande de marque communautaire acceptée
Drapeau suédois Demande de marque communautaire 8 600 132
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Drapeau danois Demande de marque communautaire 8 600 173
Drapeau français Marque communautaire 4 624 987, T-41/10
Il importe d’établir une distinction entre la demande de marque communautaire n° 8 426 876 (ayant fait l’objet d’une opposition) et la demande de marque communautaire n° 6 015 473 (n’ayant pas fait l’objet d’une opposition). Dans cette dernière, il a été décidé de ne pas soulever d’objection en raison du nombre de modifications apportées: une modification au niveau de la forme (un carré devenu un cercle), une modification des proportions (les traits blancs de la croix dans la demande de marque communautaire n° 6 015 473 sont plus longs et plus fins que dans le drapeau) et une modification au niveau de la couleur, étant donné que la croix dans la demande de marque communautaire n° 6 015 473 contient une ombre.
R-1291/2012-2 (Demande de marque communautaire n° 10 502 714)
Arguments de la chambre de recours:
18. Ainsi que cela est indiqué à juste titre dans la décision attaquée, la marque contient manifestement plusieurs éléments de drapeaux. Chacun de ces éléments peut être perçu en tant que tel et, pour le consommateur moyen dans l’Union européenne, la plupart, si ce n’est la totalité de ces éléments, sont évidents et facilement reconnaissables. Si l’on peut soutenir, par exemple, que les drapeaux écossais ou anglais ne sont pas aussi connus que le drapeau de la Grande-Bretagne, les
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drapeaux, par exemple, de l’Italie, de la Lettonie, de la France, de la Suède, de la Finlande, de la République tchèque, de l’Autriche et de la Belgique sont tous représentés dans la marque et seront immédiatement reconnus en tant que tels par le public originaire de ces pays de l’UE, ainsi que de nombreux autres sur le territoire pertinent. À l’évidence, les drapeaux sont reliés entre eux pour former une délimitation circulaire, mais ils ne sont pas unis les uns aux autres de telle sorte que leurs caractéristiques individuelles sont supprimées. Il convient aussi de noter que les drapeaux qui figurent en dessous de la marque (les drapeaux écossais, belge, tchèque, français, anglais et suédois) ne sont pas présentés à l’envers mais qu’ils sont représentés exactement comme ils le seraient en temps normal.
19. Ainsi que la Cour l’a indiqué dans son arrêt du 16 juillet 2009, C-202/08 P et C- 208/08 P, «RW feuille d’érable», point 59, l’article 6 ter, paragraphe 1, point a), de la convention de Paris s’applique non seulement à des marques, mais également à des éléments de marques reprenant ou imitant des emblèmes d’État. Il suffit, par conséquent, qu’un seul élément de la marque demandée représente un tel emblème ou une imitation de celui-ci pour que l’enregistrement en tant que marque communautaire soit refusé. Par conséquent, doivent être rejetés les arguments du requérant selon lesquels même si la marque reprend différents drapeaux nationaux, il ne s’agit que d’une petite partie de la marque qui est couverte par la présence des éléments additionnels et que ces éléments sont plus dominants et distinctifs.
21. Il résulte de ce qui précède que l’enregistrement de la marque demandée doit être refusé en raison de l’absence d’autorisation des autorités compétentes conformément à l’article 7, paragraphe 1, point h), du RMC, lu en conjonction avec l’article 6 ter de la convention de Paris.
3 Vérifier si l’enregistrement a été autorisé
Une fois que l’examinateur a constaté que la marque représente ou contient un drapeau ou une imitation héraldique de celui-ci, il/elle doit vérifier s’il existe des éléments prouvant que l’enregistrement a été autorisé par l’autorité compétente.
En l’absence de tels éléments, l’examinateur s’opposera à l’enregistrement de la marque demandée. L’objection reproduira le drapeau officiel en couleur et indiquera la source de la reproduction.
Une telle objection ne peut être retirée que si le demandeur apporte la preuve que l’autorité compétente de l’État concerné a autorisé l’enregistrement de la marque.
Portée du refus: s’agissant des drapeaux nationaux, les marques qui tombent sous le coup de l’article 7, paragraphe 1, sous h), du RMC doivent être refusées pour tous les produits et services demandés.
2.8.1.2. Examen des marques représentant ou contenant des armoiries et d’autres emblèmes d’État
Les mêmes étapes que celles qui sont mentionnées concernant les drapeaux nationaux sont suivies lors de l’examen des marques qui représentent ou contiennent des armoiries ou d’autres emblèmes d’État.
Toutefois, pour être protégés, les armoiries et autres symboles d’État doivent figurer sur la «liste des armoiries et emblèmes d’État». Cette liste peut être consultée en
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utilisant l’outil «Recherche structurée article 6 ter» mis à disposition par l’OMPI à l’adresse https://www.wipo.int/ipdl/fr/6ter/.
La base de données article 6 ter de l’OMPI donne des indications sur les éléments écrits et contient des références aux catégories du code de classification de Vienne. Par conséquent, le meilleur outil de recherche est ce code.
Dans ces exemples, le symbole protégé, qui représente très souvent des éléments récurrents tels que des couronnes, des licornes, des aigles, des lions, etc. ou contient de tels éléments, et la marque (ou la partie de la marque dans laquelle le symbole est reproduit) doivent être très similaires.
Pour obtenir des informations générales sur ce point et les descriptions héraldiques, veuillez vous référer à l’explication contenue au paragraphe 2.8.1.1 «Examen des marques représentant ou contenant un drapeau national» ci-dessus.
Voici deux exemples dans lesquels une «imitation héraldique» d’un symbole national a été constatée:
Emblème protégé Demande de marque communautaire refusée
Emblème britannique: numéro 6 ter: GB4 Demande de marque communautaire 5 627 245,T-397/09
.
Emblème canadien: numéro 6 ter: CA2 Demande de marque communautaire 2 785 368(CJUE C-202/08)
Le Tribunal a constaté que la marque demandée n° 5 627 245 contenait, presque à l’identique, les supports de l’écu protégés par l’emblème GB4. La seule différence réside dans les couronnes incluses dans les deux signes. Cependant, le Tribunal a considéré que toute différence entre la marque et l’emblème d’État, détectée par un spécialiste de l’art héraldique, ne serait pas nécessairement perçue par le consommateur moyen qui, en dépit de différences au niveau de certains détails héraldiques, peut voir dans la marque une imitation de l’emblème en question. Partant, le Tribunal a conclu que c’est à juste titre que la chambre de recours a constaté que la marque demandée contenait une imitation du point de vue héraldique de l’emblème
Motifs absolus de refus
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GB4, protégé en vertu de l’article 6 ter de la Convention de Paris (T-397/09, points 24- 25).
Dans l’exemple reproduit ci-dessous, l’examinateur a conclu à une «imitation héraldique» d’emblèmes d’État. Cependant, la décision a été annulée par la chambre qui a considéré que le signe demandé n’est pas identique à l’emblème national de l’Irlande. Il ne contient pas une imitation des emblèmes nationaux de l’Irlande non plus et ne reproduit pas des détails héraldiques caractéristiques de ces emblèmes (R 0139/2014-5, paragraphe 16):
Emblème d’État Demande de marque communautaire
Emblèmes de l’État irlandais: numéros 6 ter: EI 11 - EI 14
Demande de marque communautaire n° 11 945 797
Il importe également de noter que les reproductions en noir et blanc d’armoiries et d’autres emblèmes d’État peuvent néanmoins être considérées comme des imitations héraldiques lorsque le symbole protégé représente ou contient des caractéristiques héraldiques uniques (voir l’exemple de l’emblème canadien).
En outre, la présence d’autres éléments dans les marques refusées à l’enregistrement n’a aucune importance.
Il y a même imitation héraldique lorsque le symbole protégé est reproduit en partie seulement dès lors que la partie qui est reproduite en partie seulement représente le(s) élément(s) important(s) du symbole protégé et une/des caractéristique(s) héraldique(s) unique(s).
Le cas suivant est un exemple d’imitation héraldique partielle étant donné que l’élément important du symbole protégé, à savoir l’aigle avec les flèches sur l’emblème, est une représentation héraldique unique et que ses caractéristiques héraldiques sont imitées dans la marque communautaire demandée:
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Emblème protégé Demande de marque communautaire refusée
Emblème du Département de la Justice des États-Unis; numéro 6 ter: US40
Demande de marque communautaire 4 820 213
Dans l’exemple suivant, il n’y a pas d’imitation héraldique d’un emblème d’État:
Emblème protégé Demande de marque communautaire acceptée
Numéro 6 ter: AT10 Demande de marque communautaire 8 298 077
La marque communautaire demandée n° 8 298 077 n’est pas une imitation héraldique du symbole autrichien étant donné qu’elle diffère par sa forme et que les lignes figurant à l’intérieur de la croix blanche dans le symbole autrichien ne sont pas présentes dans la marque communautaire demandée.
Une fois que l’examinateur a constaté qu’une marque reproduit un symbole (ou qu’elle constitue une imitation héraldique de celui-ci), il doit vérifier s’il existe des éléments prouvant que l’enregistrement a été autorisé par l’autorité compétente.
En l’absence de tels éléments, l’examinateur s’opposera à l’enregistrement de la marque demandée. L’objection reproduira le symbole protégé et indiquera son numéro 6 ter.
Une telle objection ne peut être retirée que si le demandeur apporte la preuve que l’autorité compétente de l’État concerné a autorisé l’enregistrement de la marque.
Portée du refus: s’agissant des symboles d’État, les marques qui tombent sous le coup de l’article 7, paragraphe 1, sous h), du RMC doivent être refusées pour tous les produits et services demandés.
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2.8.1.3 Examen des marques représentant ou contenant des signes et poinçons officiels de contrôle et de garantie
L’examinateur doit suivre les mêmes étapes que pour les drapeaux nationaux, les armoiries et autres emblèmes d’État protégés mentionnés ci-dessus.
Cependant, la portée du refus est limitée. Les marques qui représentent ou contiennent une reproduction identique/imitation héraldique de signes et poinçons officiels de contrôle et de garantie seront refusées uniquement pour les produits qui sont identiques ou similaires à ceux auxquels lesdits symboles s’appliquent (article 6 ter, paragraphe 2, de la CP).
2.8.2. Protection des armoiries, drapeaux et autres emblèmes, sigles et dénominations des organisations internationales intergouvernementales au titre de l’article 7, paragraphe 1, sous h), du RMC - article 6 ter, paragraphe 1, sous b) et c) de la CP
En vertu de l’article 6 ter, paragraphe 1, sous b) et c) de la CP, l’enregistrement, soit comme marque de fabrique ou de commerce, soit comme élément de ces marques, des armoiries, drapeaux et autres emblèmes, sigles et dénominations des organisations internationales intergouvernementales (dont un ou plusieurs pays de l’Union sont membres) ainsi que toute imitation au point de vue héraldique sera refusé à défaut d’autorisation des pouvoirs compétents.
Les membres de l’OMC jouissent de la même protection en vertu de l’article 2, paragraphe 1, de l’accord sur les ADPIC, selon lequel les membres de l’OMC doivent se conformer aux articles premier à 12 et à l’article 19 de la Convention de Paris.
En outre, la marque doit être de nature à suggérer, dans l’esprit du public, un lien entre l’organisation en cause et les armoiries, drapeaux, emblèmes, sigles ou dénominations ou de nature à tromper le public quant à l’existence d’un lien entre la titulaire et l’organisation.
Les organisations internationales intergouvernementales (OII) comprennent des organismes tels que les Nations Unies, l’Union postale universelle, l’Organisation mondiale du tourisme, l’OMPI, etc.
Dans ce contexte, l’Union européenne ne doit ni être considérée comme une organisation internationale classique ni comme une association d’États, mais plutôt comme une «organisation supranationale», c’est-à-dire une entité autonome dotée de droits souverains et d’un ordre juridique indépendant des États membres, qui s’impose tant aux États membres qu’à leurs ressortissants dans les domaines relevant de la compétence de l’UE.
D’une part, les traités ont conduit à la création d’une Union autonome au profit de laquelle les États membres ont renoncé à une partie de leur souveraineté. Les tâches qui ont été confiées à l’UE se distinguent nettement de celles des autres organisations internationales. Alors que ces dernières assument essentiellement des tâches techniques précises, les domaines d’action de l’UE touchent, dans leur ensemble, à l’essence même des États.
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Toutefois, les compétences des institutions de l’UE sont limitées à certains domaines et aux objectifs fixés par les traités. Elles ne sont pas libres de fixer leurs objectifs comme le ferait un État souverain. En outre, l’UE ne dispose ni de la toute-puissance qui caractérise un État ni de la capacité de se doter de nouvelles compétences («principe de la compétence pour statuer sur sa propre compétence»).
Nonobstant la nature juridique particulière de l’UE, et aux seules fins de l’application de l’article 7, paragraphe 1, sous h), l’Union européenne est apparentée à une organisation internationale. Dans la pratique, il sera tenu compte du fait que le domaine d’activité de l’UE est si vaste (voir l’arrêt du 15 janvier 2013, «EUROPEAN DRIVESHFT SERVICES», T-413/11, point 69) que l’examinateur trouvera très probablement un lien entre les produits et les services en cause et les activités de l’UE.
Les drapeaux et les symboles de l’Union européenne les plus importants, protégés par le Conseil de l’Europe, sont les suivants:
numéro 6 ter: QO188 numéro 6 ter: QO189
Les symboles suivants sont protégés pour la Commission:
numéro 6 ter: QO245 numéro 6 ter: QO246 numéro 6 ter: QO247
Les symboles suivants sont protégés pour la Banque centrale européenne:
numéro 6 ter: QO852 numéro 6 ter: QO867
L’examen des marques qui contiennent les armoiries, le drapeau ou d’autres symboles d’une organisation internationale intergouvernementale comprend quatre étapes.
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1 Trouver une reproduction officielle du symbole protégé (qui peut être un sigle ou une dénomination).
2 Comparer le symbole avec la marque demandée.
3 Vérifier si la marque demandée est de nature à suggérer, dans l’esprit du public pertinent, un lien entre la titulaire et l’organisation internationale ou de nature à tromper le public quant à l’existence d’un tel lien.
4 Vérifier s’il existe des éléments prouvant que l’enregistrement a été autorisé par l’autorité compétente.
1 Trouver le symbole protégé (ou le sigle ou la dénomination)
Pour bénéficier d’une protection, les symboles des organisations internationales intergouvernementales doivent être inclus dans la liste correspondante. Contrairement à ce qui se passe concernant les drapeaux nationaux, cette condition s’applique également aux drapeaux des organisations internationales.
La base de données correspondante peut être consultée via l’outil «Recherche structurée article 6 ter» mis à disposition par l’OMPI. Dans ce cas également, le meilleur outil de recherche est le code de classification de Vienne.
2 Comparer le symbole avec la marque demandée
La marque demandée représente-t-elle exclusivement ou contient-elle une reproduction identique du symbole protégé d’une organisation internationale intergouvernementale ou la marque demandée représente-t-elle ou contient-elle une imitation héraldique dudit symbole?
a) La marque demandée représente-t-elle exclusivement ou contient-elle une reproduction identique du symbole protégé? Le cas échéant, passer à l’étape suivante.
b) La marque demandée représente-t-elle exclusivement ou contient-elle une imitation héraldique dudit signe?
Le test est le même que celui appliqué aux drapeaux et symboles nationaux, à savoir que le symbole protégé et la marque (ou la partie de la marque dans laquelle le symbole protégé est reproduit) doivent être très similaires. Il en va de même pour les sigles et les dénominations des organisations internationales intergouvernementales (voir la décision de la chambre de recours dans l’affaire R 1414/2007-1 «ESA»).
Les marques suivantes ont été refusées à l’enregistrement car il a été considéré qu’elles contenaient des «imitations héraldiques» du drapeau de l’Union européenne protégé en vertu du numéro 6 ter QO188:
Motifs absolus de refus
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Demande de marque communautaire 2 305 399
Demande de marque communautaire 448 266
Demande de marque communautaire 6 449 524
Demande de marque communautaire 7 117 658
Demande de marque communautaire 1 106 442
(T-127/02)
Marque communautaire 4 081 014 (1640 C)
Demande de marque communautaire 2 180 800
(T-413/11)
Pour les imitations héraldiques du drapeau de l’Union européenne (QO188 ci-dessus), les points suivants sont considérés comme importants: a) il y a douze étoiles à cinq rais, b) les étoiles forment un cercle et leurs pointes ne se touchent pas, et c) les étoiles se détachent sur un fond plus sombre.
Il convient notamment de tenir compte du fait que «l’élément figuratif représentant un cercle composé de douze étoiles est l’élément le plus important de l’emblème de l’Union européenne («l’emblème») car il véhicule des messages forts: a) le cercle d’étoiles dorées représente la solidarité et l’harmonie entre les peuples d’Europe et b) le chiffre douze est un symbole de perfection, de plénitude et d’unité. L’autre élément de l’emblème est un fond suffisamment coloré pour faire ressortir le l’élément figuratif» (voir la décision de la chambre de recours dans l’affaire R 1401/2011-1, point 21).
Il résulte de ce qui précède que la représentation du drapeau de l’Union européenne en noir et blanc peut néanmoins être considérée comme une imitation héraldique lorsque les étoiles se détachent sur un fond sombre, de telle sorte que la représentation donne l’impression d’être une reproduction en noir et blanc du drapeau de l’UE (voir demande de marque communautaire 1 106 442 ci-dessus).
Motifs absolus de refus
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En revanche, l’exemple suivant illustre un cas de figure dans lequel la reproduction en noir et blanc d’un cercle d’étoiles ne donne pas l’impression d’être une reproduction en noir et blanc du drapeau de l’Union européenne:
Les trois exemples suivants ne sont pas considérés comme représentant des imitations héraldiques du drapeau de l’Union européenne étant donné qu’ils ne reproduisent pas un cercle composé de douze étoiles (les deux demandes de marques ont donc été acceptées):
Demande de marque communautaire 5 639 984 Demande de marquecommunautaire 6 156 624
Le cas suivant n’est pas une imitation héraldique car, même si les étoiles sont jaunes, il n’y a pas de fond bleu (ou de couleur sombre):
3 Vérifier si la marque demandée est de nature à suggérer, dans l’esprit du public pertinent, un lien entre la titulaire et l’organisation internationale ou de nature à tromper le public quant à l’existence d’un tel lien.
Un lien est suggéré non seulement lorsque le public pense que les produits ou les services proviennent de l’organisation en question, mais également lorsque le public risque de croire que lesdits produits ou services bénéficient de l’approbation ou de la garantie de l’organisation ou qu’ils sont liés d’une autre manière à celle-ci (voir l’arrêt du Tribunal du 15 janvier 2013, «EUROPEAN DRIVESHAFT SERVICES», T-413/11, point 61).
Motifs absolus de refus
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Afin d’apprécier correctement les circonstances, l’examinateur doit tenir compte des éléments suivants:
- les produits et/ou les services visés par la demande de marque communautaire;
- le public pertinent;
- l’impression globale produite par la marque.
En ce qui concerne le drapeau de l’Union européenne, l’examinateur doit déterminer si les produits et/ou les services revendiqués et les activités de l’Union européenne se chevauchent, en gardant présent à l’esprit que l’Union européenne est présente dans de nombreux secteurs et qu’elle règlemente des produits et des services dans tous les domaines de l’industrie et du commerce, comme en atteste le grand nombre de directives qu’elle a adoptées. L’examinateur doit aussi tenir compte du fait que même les consommateurs moyens pourraient avoir connaissance de ces activités, ce qui signifie, dans la pratique, qu’il est très probable que l’examinateur trouve un lien dans la plupart des cas.
Enfin, contrairement à l’article 6 ter, paragraphe 1, sous a), de la Convention de Paris, qui trouve à s’appliquer lorsque le signe représente ou contient l’emblème ou son imitation en termes héraldiques, l’application de l’article 6 ter, paragraphe 1, point c), de la même convention nécessite un examen global.
Il s’ensuit que, contrairement aux emblèmes et drapeaux nationaux, l’examinateur doit tenir compte également des autres éléments dont la marque est composée. En effet, il ne peut être exclu que tous les autres éléments du signe pourraient permettre de conclure que le public n’établirait pas de lien entre le signe et l’organisation internationale intergouvernementale (voir l’arrêt du 15 janvier 2013, «EUROPEAN DRIVESHAFT SERVICES», T-413/11, point 59).
Toujours en ce qui concerne le drapeau de l’Union européenne, il convient de noter qu’en règle générale, des éléments verbaux tels que «EURO»/«EUROPEAN» inclus dans une demande de marque communautaire sont de nature à suggérer un lien, et ce d’autant plus qu’ils peuvent être perçus comme indiquant l’approbation officielle donnée par une agence de l’Union européenne, un contrôle de qualité ou des services de garantie par rapport aux produits et services revendiqués.
Voici deux exemples dans lesquels un lien avec l’Union européenne a été constaté:
G&S Classe 16: publications périodiques et non périodiques Classe 42: services d’élaboration de rapports ou d’études, en rapport avec le monde des automobiles, des motocyclettes et des bicyclettes
Motifs absolus de refus
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Raisonnement
La marque a été refusée à l’enregistrement pour tous les produits et services pour les raisons suivantes: (26) Les consommateurs sur ce marché savent combien il est important pour les sociétés qui produisent des enquêtes et des rapports sur des produits coûteux et potentiellement dangereux tels que des véhicules d’être crédibles. Les consommateurs peuvent également savoir que l’Union européenne elle-même participe à de telles activités par le biais de son association avec Euro E.N.C.A.P., qui fournit aux automobilistes des évaluations indépendantes de la sécurité et de la performance des voitures vendues sur le marché européen. Compte tenu de ces éléments, et du fait que la marque de la titulaire contient un élément héraldique reconnaissable de l’emblème européen, il est probable que le public croira que l’inclusion des douze étoiles dorées de l’emblème de l’Union européenne dans la marque communautaire indique un lien entre la titulaire et l’UE.
G&S Classe 9: matériel informatique, logiciels, supports de données enregistrés Classe 41: organisation et conduite de colloques, de séminaires, de symposiums, de congrès et de conférences; enseignement, cours, formation; conseils en formation et formation continue. Classe 42: création, actualisation et entretien de programmes informatiques; conception de programmes informatiques; conseils en matière d’ordinateurs; location de matériel et de logiciels informatiques; location de temps d’accès à un centre serveur de bases de données.
Raisonnement
La marque a été refusée à l’enregistrement pour tous les produits et services pour les raisons suivantes: La chambre de recours a constaté que, contrairement à ce que la demanderesse avait soutenu, les produits et services proposés par la demanderesse et les activités du Conseil de l’Europe et de l’Union européenne se chevauchaient. La chambre de recours a notamment mentionné le Journal officiel de l’Union européenne, disponible sur CD-ROM (c’est-à-dire sur un support de données enregistré), des séminaires, des programmes de formation et des conférences proposés par le Conseil de l’Europe et l’Union européenne dans un certain nombre de domaines, ainsi qu’un grand nombre de bases de données mises à disposition du public par ces institutions, en particulier EUR-Lex. Compte tenu de la grande diversité de services et de produits qui peuvent être proposés par le Conseil de l’Europe et l’Union européenne, il ne saurait être exclu, pour le type de produits et services pour lesquels l’enregistrement a été demandé, que le public pertinent puisse croire qu’il existe un lien entre la demanderesse et ces institutions. En conséquence, c’est à juste titre que la chambre de recours a considéré que l’enregistrement de la marque demandée était de nature à donner au public l’impression qu’il existait un lien entre la marque demandée et les institutions en question.
4 Vérifier si l’enregistrement a été autorisé
Lorsqu’aucun élément ne prouve que l’enregistrement de la marque demandée a été autorisé, l’examinateur s’opposera à son enregistrement. L’objection doit reproduire le symbole protégé et indiquer son numéro 6 ter.
L’examinateur doit aussi indiquer clairement les produits et les services refusés et expliquer pourquoi la marque est de nature à suggérer, dans l’esprit du public, un lien avec l’organisation concernée.
Motifs absolus de refus
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Une telle objection ne peut être retirée que si le demandeur apporte la preuve que l’autorité compétente a autorisé l’enregistrement de la marque.
Portée du refus: s’agissant des drapeaux et symboles des organisations internationales intergouvernementales, le refus doit préciser les produits et/ou les services concernés, à savoir ceux vis-à-vis desquels le public pourrait, selon l’examinateur, établir un lien entre la marque et une organisation.
2.8.3. Protection des badges, emblèmes ou écussons autres que ceux visés par l’article 6 ter de la Convention de Paris au titre de l’article 7, paragraphe 1, sous i), du RMC
En vertu de l’article 7, paragraphe 1, sous i), du RMC, sont refusées à l’enregistrement les marques qui comportent des badges, emblèmes ou écussons autres que ceux visés par l’article 6 ter de la Convention de Paris et présentant un intérêt public particulier, à moins que leur enregistrement ait été autorisé par l’autorité compétente.
Comme indiqué ci-dessus, l’article 7, paragraphe 1, sous i), du RMC concerne tous les autres badges, emblèmes ou écussons qui n’ont pas été communiqués conformément à l’article 6 ter, paragraphe 3, sous a), de la CP, qu’il s’agisse des emblèmes d’un État ou d’une organisation internationale intergouvernementale au sens de l’article 6 ter, paragraphe 1, sous a) ou b), de la CP ou d’organismes publics ou de l'administration autres que ceux visés par l’article 6 ter de la Convention de Paris, tels que des provinces ou des municipalités.
En outre, il ressort de la jurisprudence que l’article 7, paragraphe 1, sous i), et l’article 7, paragraphe 1, sous h), du RMC ont le même champ d’application et confèrent des niveaux de protection au moins équivalents.
En d’autres termes, l’article 7, paragraphe 1, sous i), du RMC s’applique non seulement lorsque les symboles susmentionnés sont reproduits à l’identique en tant que marque ou élément de celle-ci, mais également lorsque la marque constitue ou contient une imitation de ces symboles. Toute autre interprétation de cette disposition se traduirait par le fait que l’article 7, paragraphe 1, sous i), du RMC conférerait une protection moins étendue que l’article 7, paragraphe 1, sous h), du RMC. Si l’on suit le même raisonnement, l’article 7, paragraphe 1, sous i), du RMC s’applique lorsque la marque est de nature à tromper le public quant à l’existence d’un lien entre la titulaire de la marque et l’organisme auquel renvoient les symboles susmentionnés. En d’autres termes, la protection conférée par l’article 7, paragraphe 1, sous i), du RMC dépend de l’existence d’un lien entre la marque et le symbole. Autrement, les marques auxquelles l’article 7, paragraphe 1, sous i), du RMC s’applique obtiendraient une protection plus étendue que celle dont elles bénéficient au titre de l’article 7, paragraphe 1, sous h), du RMC (voir l’arrêt du 10 juillet 2013, «member of euro experts», T-3/12).
L’article 7, paragraphe 1, sous i), ne définit pas les symboles présentant «un intérêt public particulier». Cependant, il est raisonnable de supposer que leur nature peut changer et qu’ils pourraient inclure, par exemple, des symboles religieux, des symboles politiques ou des symboles d’organismes publics ou de l'administration autres que ceux visés par l’article 6 ter de la Convention de Paris, tels que des provinces ou des municipalités. En tout état de cause, «l’intérêt public particulier» en question doit être mentionné dans un document public, par exemple un instrument juridique national ou international, un règlement ou un acte normatif.
Motifs absolus de refus
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Le Tribunal a jugé qu’un «intérêt public particulier» existait lorsque l’emblème présentait un lien spécial avec l’une des activités d’une organisation internationale intergouvernementale (voir arrêt du 10 juillet 2013, «member of euro experts», T-3/12, point 44). Le Tribunal a notamment précisé que l’article 7, paragraphe 1, sous i), du RMC s’appliquait également lorsque l’emblème se bornait à évoquer l’un des domaines d’action de l’Union européenne, et ce quand bien même ladite action ne concernerait que certains États de l’Union européenne (voir ibidem, points 45 et 46).
Cela confirme que la protection conférée par l’article 7, paragraphe 1, sous i), du RMC s’applique aussi à des symboles qui présentent un intérêt public particulier dans un seul État membre ou dans une partie de celui-ci (article 7, paragraphe 2, du RMC)
L’examen des marques qui contiennent des badges, des emblèmes et des écussons présentant un intérêt public particulier comporte quatre étapes.
1 Trouver le symbole présentant un intérêt public particulier.
2 Comparer le symbole avec la marque demandée.
3 Vérifier si la marque demandée est de nature à suggérer, dans l’esprit du public pertinent, l’existence d’un lien entre la titulaire et l’autorité à laquelle renvoie le symbole ou de nature à tromper le public quant à l’existence d’un tel lien.
4 Vérifier s’il existe des éléments prouvant que l’enregistrement a été autorisé par l’autorité compétente.
1 Trouver le symbole présentant un intérêt public particulier
À l’heure actuelle, il n’existe aucune liste ou base de données permettant aux examinateurs d’identifier les symboles présentant un intérêt public particulier, surtout dans un État membre ou une partie de celui-ci. Par conséquent, il est probable que des observations formulées par des tiers continuent d’être à l’origine de nombreuses objections soulevées à l’égard de ces symboles.
La Croix-Rouge est un exemple de symbole présentant un intérêt public particulier; elle est protégée par la Convention pour l’amélioration du sort des blessés et des malades dans les forces armées en campagne, signée à Genève (http://www.icrc.org/ et http://www.icrc.org/Web/Eng/siteeng0.nsf/htmlall/genevaconventions).
Les symboles suivants sont protégés par la Convention de Genève:
Outre les symboles à proprement parler, les dénominations de ces symboles sont également protégées (de gauche à droite): «Croix-Rouge», «Croissant-Rouge» et «Cristal-Rouge».
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Le symbole olympique, tel que défini dans le Traité de Nairobi concernant la protection du symbole olympique, est un autre exemple de symbole présentant un intérêt public particulier. Selon la définition du Traité de Nairobi, «le symbole olympique est constitué par cinq anneaux entrelacés: bleu, jaune, noir, vert et rouge, placés dans cet ordre de gauche à droite. Il est constitué par les anneaux olympiques employés seuls, en une ou plusieurs couleurs.»
Le symbole suivant n’a pas été considéré comme présentant un intérêt public particulier:
Il a été considéré que le symbole de recyclage (sur la gauche) n’était pas protégé au titre de cette disposition parce qu’il s’agit d’un symbole commercial.
2 Comparer le symbole avec la marque demandée
La marque demandée représente-t-elle exclusivement ou contient-elle une reproduction identique du symbole présentant un intérêt public particulier? Ou la marque demandée représente-t-elle ou contient-elle une imitation héraldique de celui- ci?
a) La marque demandée représente-t-elle exclusivement ou contient-elle une reproduction identique du symbole? Le cas échéant, passer à l’étape suivante.
b) La marque demandée représente-t-elle exclusivement ou contient-elle une imitation héraldique du symbole?
Le test est le même que celui appliqué aux drapeaux et symboles des organisations internationales intergouvernementales, à savoir que le symbole et la marque (ou la partie de la marque dans laquelle le symbole est reproduit) doivent être relativement similaires.
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Voici des exemples de marques qui ont été refusées à l’enregistrement parce qu’elles contenaient le symbole de la Croix-Rouge ou une imitation héraldique de ce dernier.
Demandes de marques communautaires refusées
WO 964 979 Demande de marquecommunautaire 2 966 265 Demande de marque
communautaire 5 988 985
En revanche, un certain nombre de croix rouges sont traditionnellement et toujours employées, et leur intégration dans une marque ne serait pas considérée comme une reproduction de la «Croix-Rouge». Il s’agit notamment des croix suivantes:
Croix templière Croix de Saint-Georges Croix maltaise
La marque communautaire suivante a été acceptée à l’enregistrement car elle contenait deux reproductions de la croix templière.
Une marque qui contient une croix représentée en noir et blanc (ou dans des nuances de gris) ne peut faire l’objet d’une objection. Une croix représentée dans une couleur autre que le rouge ne peut pas non plus faire l’objet d’une objection au titre de l’article 7, paragraphe 1, sous i), du RMC.
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Demandes de marques communautaires acceptées
Demande de marque communautaire 8 986 069
Demande de marque communautaire 9 019 647
Demande de marque communautaire 9 025 768
3 Vérifier si la marque demandée est de nature à suggérer, dans l’esprit du public pertinent, l’existence d’un lien entre la titulaire et l’autorité à laquelle renvoie le symbole ou de nature à tromper le public quant à l’existence d’un tel lien.
Un lien est suggéré non seulement lorsque le public est incité à croire que les produits ou les services proviennent de l’autorité en question, mais également lorsque le public risque de croire que lesdits produits ou services bénéficient de l’approbation ou de la garantie de l’autorité ou qu’ils sont liés d’une autre manière avec ladite autorité (voir l’arrêt du Tribunal du 10 juillet 2013, «member of euro experts», T-3/12, point 78).
Afin d’apprécier correctement les circonstances, l’examinateur doit tenir compte des éléments suivants:
- les produits et/ou les services visés par la demande de marque communautaire;
- le public pertinent;
- l’impression globale produite par la marque.
L’examinateur doit déterminer si les produits et/ou les services revendiqués et les activités de l’autorité en question se chevauchent et si le public pertinent pourrait en avoir connaissance.
Notamment en ce qui concerne l’Union européenne, l’examinateur doit tenir compte du fait que cette dernière est présente dans de nombreux secteurs, comme en atteste le grand nombre de directives qu’elle a adoptées.
En outre, l’examinateur doit également tenir compte des autres éléments dont la marque est composée. En effet, il ne saurait être exclu que tous les autres éléments du signe puissent permettre de conclure que le public n’établirait pas de lien entre le signe et l’autorité en question (voir l’arrêt du 10 juillet 2013, «member of euro experts», T-3/12, point 107).
Toujours en ce qui concerne l’Union européenne, il convient de noter qu’en règle générale des éléments verbaux tels que «EURO»/«EUROPEAN» inclus dans une demande de marque communautaire sont de nature à suggérer un lien, et ce d’autant plus qu’ils peuvent être perçus comme ayant reçu l’agrément de l’Union européenne (voir l’arrêt du Tribunal du 10 juillet 2013, «member of euro experts», T-3/12, point 113).
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Par exemple, le Tribunal (dans l’affaire T-3/12) a confirmé que la marque suivante (demande de marque communautaire n° 6 110 423, couvrant les classes 9, 16, 35, 36, 39, 41, 42, 44 et 45)
relevait de l’article 7, paragraphe 1, sous i), du RMC étant donné qu’elle contenait une imitation (héraldique) du symbole «euro».
4 Vérifier si l’enregistrement a été autorisé
Y-a-t-il des éléments prouvant que l’autorité compétente a autorisé l’enregistrement?
En l’absence de tels éléments, l’examinateur s’opposera à l’enregistrement de la marque demandée. L’objection reproduira le symbole et fournira au demandeur toutes les indications nécessaires et, notamment, les informations permettant de comprendre pourquoi le symbole présente un «intérêt public particulier» (par exemple, s’il est protégé par un instrument international, il sera fait une référence à cet instrument; en ce qui concerne la Croix-Rouge, l’instrument en question est la Convention pour l’amélioration du sort des blessés et des malades dans les forces armées en campagne, signée à Genève (http://www.icrc.org/ et http://www.icrc.org/Web/Eng/siteen g0.nsf/htmlall/genevaconventions)).
Une telle objection ne peut être retirée que si le demandeur apporte la preuve que l’autorité compétente a autorisé l’enregistrement de la marque.
Portée du refus: s’agissant des symboles présentant un intérêt public particulier, le refus doit préciser les produits et/ou les services concernés, à savoir ceux vis-à-vis desquels le public pourrait, selon l’examinateur, établir un lien entre la marque et l’autorité.
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2.9 Article 7, paragraphe 1, point j), du RMC
2.9.1 Introduction
L’article 7, paragraphe 1, point j), du RMC s’applique aux marques communautaires qui sont en conflit avec les indications géographiques des vins et spiritueux.
Plus spécifiquement, il prévoit le refus de marques communautaires pour des vins qui comportent ou qui sont composées d’indications géographiques destinées à identifier les vins, ou pour les spiritueux qui comportent ou qui sont composés d’indications géographiques destinées à identifier les spiritueux, lorsque ces vins ou spiritueux n’ont pas ces origines.
L’article 7, paragraphe 1, point j), du RMC ne fait pas explicitement référence aux règlements spécifiques de l’UE relatifs à la protection des indications géographiques pour les vins et boissons spiritueuses. À cet égard, l’Office suit une approche systématique et interprète l’article 7, paragraphe 1, point j), du RMC conformément à l’article 7, paragraphe 1, point k), du RMC. En d’autres termes, l’Office applique l’article 7, paragraphe 1, point j), du RMC conjointement aux dispositions pertinentes des règlements de l’UE relatifs à la protection des indications géographiques pour les vins et les spiritueux, à savoir, respectivement, le règlement (UE) n° 1308/20133 du Conseil et le règlement (CE) n° 110/2008 du Parlement européen et du Conseil4.
Conformément à l’article 118 ter, paragraphe 1, du règlement (UE) n° 1308/2013, on entend par:
a) «appellation d’origine», le nom d’une région, d’un lieu déterminé ou, dans des cas exceptionnels, d’un pays, qui sert à désigner un vin:
i) dont la qualité et les caractéristiques sont dues essentiellement ou exclusivement à un milieu géographique particulier et aux facteurs naturels et humains qui lui sont inhérents;
ii) élaboré exclusivement à partir de raisins provenant de la zone géographique considérée;
iii) dont la production est limitée à la zone géographique désignée; et iv) obtenu exclusivement à partir de variétés de vigne de l’espèce Vitis
vinifera;
b) «indication géographique», une indication renvoyant à une région, à un lieu déterminé ou, dans des cas exceptionnels, à un pays, qui sert à désigner un vin:
i) possédant une qualité, une réputation ou d’autres caractéristiques particulières attribuables à cette origine géographique;
ii) produit à partir de raisins dont au moins 85 % proviennent exclusivement de la zone géographique considérée;
iii) dont la production est limitée à la zone géographique désignée; et
3 Règlement (UE) nº 1308/2013 du Parlement Européen et du Conseil du 17 décembre 2013portant organisation commune des marchés des produits agricoles . 4 Règlement (CE) n° 110/2008 du Parlement européen et du Conseil du 15 janvier 2008 concernant la
définition, la désignation, la présentation, l’étiquetage et la protection des indications géographiques des boissons spiritueuses et abrogeant le règlement (CEE) n° 1576/89 du Conseil.
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iv) obtenu à partir de variétés de vigne de l’espèce Vitis vinifera ou issues d’un croisement entre ladite espèce et d’autres espèces du genre Vitis.
Conformément à l’article 15, paragraphe 1, du règlement (CE) n° 110/2008, on entend par «indication géographique» une indication qui identifie une boisson spiritueuse comme étant originaire du territoire, d’un pays, d’une région ou d’une localité située sur ce territoire, lorsqu’une qualité, réputation ou autre caractéristique déterminée de la boisson spiritueuse peut être attribuée essentiellement à cette origine géographique.
Les appellations d’origine protégées (AOP) ont dès lors un lien plus étroit au territoire. Cette distinction n’influe toutefois pas sur l’étendue de la protection, qui est la même pour les AOP et les IGP (indications géographiques protégées). En d’autres termes, l’article 7, paragraphe 1, point j), du RMC s’applique de la même manière à toutes les désignations couvertes par le règlement (UE) n° 1308/2013, qu’elles soient enregistrées comme AOP ou comme IGP. Le règlement n° 110/2008 ne couvre toutefois que les IGP, pas les AOP.
Une protection est octroyée aux AOP/IGP afin, notamment, de protéger les intérêts légitimes des consommateurs et des producteurs.
À cet égard, il convient également de souligner que les concepts d’AOP et d’IGP diffèrent d’une «indication de provenance géographique simple». Pour cette dernière, il n’existe pas de lien direct entre une qualité, une réputation ou une autre caractéristique du produit et son origine géographique spécifique, avec pour conséquence qu’elle ne relève pas du champ d’application de l’article 93, paragraphe 1, du règlement (UE) n° 1308/2013 ou de l’article 15, paragraphe 1, du règlement (CE) n° 110/2008 (voir, par analogie, l’arrêt du 7 novembre 2000, C-312/98, «Warsteiner Brauerei», points 43 et 44). Par exemple, «Rioja» est une AOP pour les vins étant donné qu’elle désigne un vin aux caractéristiques particulières qui entrent dans la définition d’une AOP. Toutefois, un vin produit à «Tabarca» (une «indication géographique simple» désignant une petite île près d’Alicante) ne peut bénéficier d’une AOP/IGP à moins de satisfaire à des exigences spécifiques.
Conformément à l’article 102, paragraphe 1, du règlement (UE) n° 1308/2013, L'enregistrement d'une marque commerciale contenant ou consistant en une appellation d'origine protégée ou une indication géographique protégée qui n'est pas conforme au cahier des charges du produit concerné ou dont l'utilisation relève de l'article 103, paragraphe 2, et concernant un produit relevant d'une des catégories répertoriées à l'annexe VII, partie II, est refusé si la demande d'enregistrement de la marque commerciale est présentée après la date de dépôt auprès de la Commission de la demande de protection de l'appellation d'origine ou de l'indication géographique et que cette demande aboutit à la protection de l'appellation d'origine ou de l'indication géographique.
En outre, conformément à l’article 23, paragraphe 1, du règlement (CE) n° 110/2008, «(l)’enregistrement d’une marque qui contient une indication géographique enregistrée à l’annexe III ou qui est constituée par une telle indication est refusé ou invalidé si son utilisation engendre l’une des situations visées à l’article 16».
L’article 103, paragraphe 2, du règlement (UE) n° 1308/2013 et l’article 16 du règlement (CE) n° 110/2008 fixent les cas qui enfreignent les droits découlant d’une AOP/IGP: i) utilisation commerciale directe ou indirecte d’une AOP/IGP; ii) usurpation, imitation ou évocation; iii) autre pratique susceptible d’induire en erreur.
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Trois conditions cumulatives sont nécessaires pour l’application de l’article 7, paragraphe 1, point j), du RMC.
1. L’AOP/IGP en cause doit être enregistrée au niveau de l’UE (voir le point 2.9.2.1 ci-dessous).
2. L’utilisation de la marque communautaire qui comporte ou qui est composée d’une AOP/IGP destinée à identifier les vins ou d’une IGP destinée à identifier les spiritueux doit constituer un des cas prévus à l’article 103, paragraphe 2, du règlement (UE) n° 1308/2013 ou à l’article 16 du règlement (CE) n° 110/2008 (voir le point 2.9.2.2 ci-dessous).
3. La demande de marque communautaire doit inclure des produits qui sont identiques ou «comparables» aux produits couverts par l’AOP/IGP (voir le point 2.9.2.3 ci-dessous).
Pour ces trois conditions, il est fait référence ci-dessous aux: i) AOP/IGP pouvant donner lieu à une objection au titre de l’article 7, paragraphe 1, point j), du RMC; ii) circonstances dans lesquelles une marque communautaire comporte ou est composée d’une AOP/IGP de telle façon qu’elle relève de l’article 103, paragraphe 2, du règlement (UE) n° 1308/2013 ou de l’article 16 du règlement (CE) n° 110/2008; iii) produits de la demande de marque communautaire affectés par la protection octroyée à l’AOP/IGP. Enfin, il est également fait référence ci-dessous à la façon dont les produits peuvent être limités afin de lever une objection.
2.9.2 Application de l’article 7, paragraphe 1, point j), du RMC
2.9.2.1 AOP/IGP pertinentes
L’article 7, paragraphe 1, point j), du RMC s’applique lorsque des AOP/IGP (d’un État membre de l’UE ou d’un pays tiers) ont été enregistrées au titre de la procédure prévue par les règlements (UE) n° 1308/2013 et n° 110/2008.
Pour les AOP/IGP des pays tiers qui bénéficient d’une protection dans l’Union européenne au titre de conventions internationales conclues entre l’Union européenne et des pays tiers, voir le point 2.9.3.2 ci-dessous.
Des informations pertinentes concernant les AOP/IGP pour les vins sont disponibles dans la base de données «E-Bacchus» tenue à jour par la Commission, accessible via l’internet à l’adresse http://ec.europa.eu/agriculture/markets/wine/e-bacchus/. Les IGP pour les boissons spiritueuses sont répertoriées à l’annexe III du règlement n° 110/2008 (article 15, paragraphe 2, du règlement n° 110/2008), telle que modifiée, accessible à l’adresse http://eur-lex.europa.eu/legal- content/FR/TXT/PDF/?uri=CELEX:32012R0164&from=EN. La Commission tient également à jour une base de données «E-Spirit-Drinks», accessible à l’adresse http://ec.europa.eu/agriculture/spirits/. Toutefois, il ne s’agit pas d’un registre officiel et elle est dès lors uniquement à caractère informatif.
La protection n’est octroyée qu’au nom d’une AOP/IGP et ne s’étend pas ipso iure aux noms des sous-régions, sous-dénominations, communes ou localités dans le territoire couvert par cette AOP/IGP. À cet égard, il convient d’établir une distinction entre la jurisprudence du Tribunal dans l’arrêt du 11 mai 2010, T-237/08, «Cuvée Palomar», et le cadre juridique actuel. Cet arrêt fait référence à un système de compétences des
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États membres concernant la désignation d’indications géographiques pour des vins qui existait en vertu du précédent règlement (CE) n° 1493/1999 mais qui n’est plus en vigueur. Conformément à l’article 67 du règlement (CE) n° 607/2009 de la Commission [voir également l’article 118 septvicies, paragraphe 1, point g), du règlement (CE) n° 1234/2007], le nom de ces petites unités géographiques est à présent considéré comme une simple indication facultative sur l’étiquetage.
Par ailleurs, les accords commerciaux signés par l’UE avec des pays tiers ont généralement en annexe une liste des AOP/IGP enregistrées au niveau de l’UE qui doivent également être protégées dans les pays tiers en cause (voir l’arrêt du 11 mai 2010, T-237/08, «Cuvée Palomar», points 104 à 108, et la décision du 19 juin 2013, R 1546/2011-4 – «FONT DE LA FIGUERA»). Toutefois, les examinateurs ne devraient pas utiliser ces listes comme source d’information sur les AOP/IGP de l’UE mais se référer aux bases de données correspondantes mentionnées ci-dessus. Premièrement, les listes des AOP/IGP de l’UE à protéger à l’étranger peuvent varier d’un accord à l’autre, en fonction des particularités des négociations. Deuxièmement, les annexes aux accords sont généralement modifiées et actualisées par un «échange de lettres».
L’article 7, paragraphe 1, point j), du RMC ne s’applique qu’en ce qui concerne les AOP/IGP qui ont été demandées avant la marque communautaire et qui sont enregistrées au moment de l’examen de la marque communautaire. Les dates pertinentes pour l’établissement de la priorité d’une marque et d’une AOP/IGP sont respectivement la date de demande de la marque communautaire (ou de la «priorité selon la Convention de Paris», si elle est revendiquée) et la date de la demande de protection d’une AOP/IGP à la Commission.
Dès lors, aucune objection ne sera soulevée au titre de l’article 7, paragraphe 1, point j), du RMC lorsque l’AOP/IGP a été demandée après la date de dépôt (ou la date de priorité, le cas échéant) de la demande de marque communautaire. Pour les vins, lorsqu’il n’y a pas d’information sur la date pertinente dans l’extrait «E-Bacchus», cela signifie que l’AOP/IGP en cause existait déjà le 1er août 2009, date à laquelle le registre a été créé. Pour toute AOP/IGP concernant du vin et ajoutée ultérieurement, l’extrait «E-Bacchus» inclut une référence à la publication au Journal officiel, qui fournit les informations pertinentes. Pour les boissons spiritueuses, la publication initiale de l’annexe III au règlement (CE) n° 110/2008 contenait toutes les IGP pour les boissons spiritueuses existant au 20 février 2008, date de l’entrée en vigueur de ce règlement. Pour toute IGP concernant des boissons spiritueuses et ajoutée ultérieurement, le règlement portant modification correspondant contient les informations pertinentes;
Nonobstant ce qui précède, et compte tenu du fait que la vaste majorité des demandes d’AOP/IGP sont enregistrées, une objection sera soulevée lorsque l’AOP/IGP a été demandée avant la date de dépôt (ou la date de priorité, le cas échéant) de la demande de marque communautaire mais n’avait pas encore été enregistrée au moment de l’examen de la demande de marque communautaire. Néanmoins, si le demandeur allège que la marque n'a pas été enregistrée, la procédure sera suspendue jusqu’à la décision final sur l’enregistrement de l’AOP/IGP.
2.9.2.2 Situations couvertes par l’article 103 du règlement (UE) n° 1308/2013 et l’article 16 du règlement (CE) n° 110/2008
L’article 7, paragraphe 1, point j), du RMC s’applique (à condition que les autres conditions s’appliquent également) aux situations suivantes:
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1. la marque communautaire est uniquement composée d’une AOP/IGP entière («utilisation directe»);
2. la marque communautaire est composée d’une AOP/IGP entière en plus d’autres éléments verbaux ou figuratifs («utilisation directe ou indirecte»);
3. la marque communautaire comporte ou est composée d’une imitation ou évocation d’une AOP/IGP;
4. autres indications ou pratiques susceptibles d’induire en erreur; 5. la réputation des AOP/IGP.
La marque communautaire est uniquement composée d’une AOP/IGP entière («utilisation directe»)
Cette situation couvre l’«utilisation directe» d’une AOP/IGP en tant que marque communautaire, à savoir que la marque est uniquement composée du nom de l’AOP/IGP.
Exemples
AOP/IGP Marque communautaire
MADEIRA
(PDO-PT-A0038)
MADEIRA
(MC collective n° 3 540 911)
MANZANILLA
(PDO-ES-A1482)
MANZANILLA
(MC collective n° 1 723 345)
Si la marque se compose uniquement de l’AOP/IGP, la marque communautaire relève également de l’article 7, paragraphe 1, point c), du RMC, étant donné qu’elle est considérée comme descriptive de l’origine géographique des produits concernés. Cela signifie que l’objection de l’examinateur soulèvera simultanément des motifs absolus de refus en vertu de l’article 7, paragraphe 1, point j), ainsi que de l’article 7, paragraphe 1, point c), du RMC. Il existe une dérogation à cet égard, conformément à l’article 66, paragraphe 2, du RMC, lorsque la marque communautaire est une marque collective et que les règlements régissant son usage incluent les données prévues à l’article 67, paragraphe 2 (dans la situation inverse, lorsque la marque a été demandée en tant que marque individuelle, voir la décision du 7 mars 2006, R 1073/2005-1 – «TEQUILA», paragraphe 15).
Si la limitation des produits pertinents (afin de satisfaire aux exigences du cahier des charges de l’AOP/IGP) est généralement un moyen de lever l’objection au titre de l’article 7, paragraphe 1, point j), du RMC (voir le point 2.9.2.3 ci-dessous), cette limitation est dénuée de pertinence pour l’article 7, paragraphe 1, point c), du RMC.
Par exemple, une demande de marque verbale «Bergerac» pour du vin sera simultanément contestée au titre de l’article 7, paragraphe 1, point j), et de l’article 7, paragraphe 1, point c), du RMC: elle se compose uniquement de l’AOP «Bergerac» et est dès lors descriptive. Si les produits sont ensuite limités aux vins respectant le cahier des charges de l’AOP «Bergerac», l’objection au titre de l’article 7, paragraphe 1, point j), du RMC sera levée mais la marque est toujours descriptive et reste contestable au titre de l’article 7, paragraphe 1, point c), du RMC, à moins d’avoir été demandée en tant que marque collective répondant aux exigences de l’article 67, paragraphe 2, du RMC.
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La marque communautaire est composée d’une AOP/IGP entière en plus d’autres éléments verbaux ou figuratifs («utilisation directe ou indirecte»)
Cette situation couvre également l’«utilisation directe» d’une AOP/IGP dans une marque communautaire par la reproduction du nom de l’AOP/IGP avec d’autres éléments.
Les marques communautaires suivantes sont considérées comme relevant de l’article 7, paragraphe 1, point j), du RMC, étant donné qu’elles comportent la dénomination entière d’une AOP/IGP.
AOP/IGP Marque communautaire
BEAUJOLAIS
(PDO-FR-A0934)
BEAUX JOURS BEAUJOLAIS
(MC n° 1 503 259)
CHAMPAGNE
(PDO-FR-A1359)
CHAMPAGNE VEUVE DEVANLAY
(MC n° 11 593 381)
BEAUJOLAIS
(PDO-FR-A0934)
(MC n° 1 561 646)
En vertu de l’article 7, paragraphe 1, point j), du RMC, il est indifférent que les autres éléments verbaux ou figuratifs puissent donner à la marque un caractère distinctif. Le signe peut être acceptable dans son ensemble en vertu de l’article 7, paragraphe 1, points b) et c), du RMC et rester contestable (comme dans les cas ci-dessus) en vertu de l’article 7, paragraphe 1, point j), du RMC.
Il y a «utilisation indirecte» d’une AOP/IGP, par exemple, lorsque l’AOP/IGP apparaît dans une marque complexe (telle que la représentation d’une étiquette) en plus petits caractères, en tant qu’information sur l’origine ou le type du produit ou en tant que partie de l’adresse du producteur. Le cas échéant, la marque sera contestable, quelle que soit la position ou la taille de l’AOP/IGP au sein de la marque dans son ensemble, à condition qu’elle soit visible.
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AOP/IGP Marque communautaire
OPORTO
(PDO-PT-A1540)
(MC n° 11 907 334 et n° 2 281 970)
La marque communautaire comporte ou est composée d’une imitation ou évocation d’une AOP/IGP
Ni le RMC, ni les règlements (UE) n° 1308/2013 et (CE) n° 110/2008 ne définissent les termes «imitation» ou «évocation». Dans une large mesure, ces notions sont étroitement liées.
Selon la Cour, la notion d'«évocation» recouvre «une hypothèse dans laquelle le terme utilisé pour désigner un produit incorpore une partie d'une dénomination protégée, en sorte que le consommateur, en présence du nom du produit, est amené à avoir à l'esprit, comme image de référence, la marchandise bénéficiant de l'appellation» (voir l’arrêt du 4 mars 1999, C-87/97, «Cambozola», point 25, et arrêt du 26 février 2008, C-132/05, point 44).
Les dispositions qui précèdent signifient qu’il peut y avoir évocation lorsque la marque communautaire reproduit une partie d’une AOP/IGP, telle que (l’un de) ses éléments verbaux géographiquement significatifs (en ce sens qu’il ne s’agit pas d’un élément générique, comme «cabernet» et «ron» dans l’AOP/IGP «Cabernet d’Anjou» ou «Ron de Granada»), voire une partie d’un mot, telle qu’une racine ou une terminaison caractéristique (des exemples sont présentés ci-dessous).
En outre, l’article 103, paragraphe 2, point b), du règlement (UE) n° 1308/2013 et l’article 16 du règlement (CE) n° 110/2008 protègent les AOP/IGP contre toute usurpation, imitation ou évocation, «même si l’origine véritable du produit est indiquée ou si la dénomination protégée est traduite ou accompagnée d’une expression telle que “genre”, “type”, “méthode”, “façon”, “imitation” … ou d’une expression similaire», donc même si les consommateurs ne sont pas induits en erreur.
Selon l’avocat général (conclusions du 17 décembre 1998, C-87/97, «Cambozola», point 33), «le terme «évocation» est objectif, de sorte qu'il n'est pas nécessaire de démontrer que le titulaire de la marque entendait évoquer la dénomination protégée».
À cet égard, et aux fins de l’article 7, paragraphe 1, point j), du RMC, l’Office appréciera de manière également objective les situations décrites ci-dessous, indépendamment de l’intention réelle du demandeur de la marque communautaire.
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En outre, l’Office considère les termes «imitation» et «évocation» comme deux corollaires d’une notion essentiellement la même. La marque «imite» (copie, reproduit les éléments de, etc.), avec pour résultat que le produit désigné par l’AOP/IGP est «évoqué» (rappelé).
Au vu de ce qui précède, l’Office conclut qu’il y a évocation ou imitation d’une AOP lorsque:
a) la marque communautaire incorpore la partie géographiquement significative (en ce sens qu’il ne s’agit pas de l’élément générique) de l’AOP/IGP;
b) la marque communautaire comporte un adjectif/nom équivalent qui indique la même origine géographique;
c) l’AOP/IGP est traduite; d) la marque communautaire inclut une expression «de délocalisation» en plus de
l’AOP/IGP ou son évocation.
La marque communautaire incorpore une partie de l’AOP/IGP
Selon la Cour (voir l’arrêt du 4 mars 1999, C-87/97, «Cambozola», et l’arrêt du 26 février 2008, C-132/05, précités), la marque communautaire doit amener à l’esprit du consommateur l’image du produit bénéficiant de l’appellation.
La Cour a également déclaré qu’«il peut (…) y avoir évocation d'une appellation protégée en l'absence de tout risque de confusion entre les produits concernés» (voir l’arrêt du 4 mars 1999, C-87/97, «Cambozola», point 26).
Élément important, l’évocation n’est pas appréciée de la même façon que le risque de confusion (voir les conclusions de l’avocat général du 17 décembre 1998, C-87/97, «Cambozola», point 37). Un lien doit être établi avec le produit bénéficiant de l’appellation. Dès lors, le fait qu’il y ait ou non évocation ne sera pas analysé selon les principes établis par la CJUE dans son arrêt du 11 novembre 1997, C-251/95, «Sabèl».
Comme indiqué ci-dessus, l’évocation est interprétée comme englobant non seulement le cas où la marque communautaire incorpore un (des) élément(s) verbal (verbaux) géographiquement significatif(s) (par opposition à un élément générique) d’une AOP/IGP, mais aussi le cas où la marque communautaire reproduit d’autres parties de cette AOP/IGP, telles qu’une racine ou une terminaison caractéristique.
Bien que les exemples suivants concernent des denrées alimentaires, ils servent également à démontrer une «imitation» et une «évocation» pour du vin et des boissons spiritueuses.
AOP/IGP Marque Explication
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(MC 9 567 851)
Le terme «chianti» évoque l’AOP «Chianti Classico».
(R 1474/2011-2, «AZIENDA OLEARIA CHIANTI», paragraphes 14 et 15)
GORGONZOLA CAMBOZOLA «… il y a évocation d'unedénomination protégée lorsque le
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(IT/PDO/0017/0010) terme utilisé pour le désigner se termine par les deux mêmes syllabes que cette dénomination et comporte le même nombre de syllabes que celle-ci, d'où il résulte une parenté phonétique et optique manifeste entre les deux termes»
(C-87/97, point 27)
Si une AOP/IGP comporte ou évoque le nom d’un produit considéré comme générique, la protection ne s’étend pas à l’élément générique. Par exemple, dans l’IGP «Ron de Málaga», il est notoirement connu que le terme «ron» (rhum en espagnol) est générique et ne bénéficie dès lors pas d’une protection. En conséquence, aucune objection ne sera soulevée contre le simple fait qu’une marque communautaire contienne un terme générique faisant partie d’une AOP/IGP.
Lorsque la nature générique d’un élément dans une AOP/IGP peut être déterminée par des définitions de dictionnaires courants, la perspective du public dans le pays d’origine de l’AOP/IGP est déterminante. Ainsi, dans les exemples cités ci-dessus, il suffit que le terme «ron» soit générique pour les consommateurs espagnols pour conclure qu’il est générique, indépendamment du fait qu’il puisse ou non être compris par d’autres parties du public de l’Union européenne.
En revanche, lorsqu’aucune définition ne peut être trouvée dans un dictionnaire courant, bien connu, la nature générique du terme en question doit être appréciée selon les critères établis par la Cour ou le Tribunal (voir l’arrêt du 26 février 2008, C-132/05, et l’arrêt du 12 septembre 2007, T-291/03, «Grana Biraghi»), tels que la législation nationale et de l’UE pertinente, la façon dont le terme est perçu par le public et la commercialisation du produit en question.
Enfin, dans certains cas, une marque communautaire peut constituer une utilisation directe/indirecte ou une évocation de plus d’une AOP/IGP à la fois. Cela peut se produire lorsque la marque communautaire comporte un élément (non générique) qui figure dans plus d’une AOP/IGP.
AOP/IGP RIOJA (PDO-ES-A0117)
SANTIAGO (IGP chilienne)
Marque communautaire RIOJA SANTIAGO
Explication
La marque communautaire demandée se compose des termes «RIOJA» et «SANTIAGO», dont chacun coïncide avec une appellation d’origine protégée pour du vin, le premier («RIOJA») étant protégé par l’Union européenne et le second («SANTIAGO»), une indication géographique pour un vin originaire du Chili, étant protégé en vertu d’un accord bilatéral entre l’Union européenne et la République du Chili (…).
Il n’est possible d’accepter aucune limitation qui inclut du «vin» en provenance du territoire de l’une des deux appellations d’origine, étant donné qu’une telle limitation exclut automatiquement les vins provenant de l’autre appellation d’origine, ce qui signifie inévitablement que la marque demandée prêtera à confusion. De même, une limitation hypothétique de la liste des produits au vin provenant de la zone géographique couverte par l’une des appellations d’origine, par exemple, «vins de l’appellation d’origine Rioja et vins de l’appellation d’origine Santiago», dans la classe 33, serait couverte par l’interdiction visée à l’article 7, paragraphe 1, point j), du RMC dans la mesure où la marque identifierait inévitablement – et de façon à susciter la confusion –
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les vins à une autre origine géographique que celle des appellations d’origine respectives reprises sous la marque. Prévenir une telle éventualité est l’objectif principal de cet article.
(R 0053/2010-2, «RIOJA SANTIAGO»)
À condition que la marque couvre les produits pertinents, une objection doit être soulevée à l’égard de toutes les AOP/IGP concernées. Toutefois, l’examinateur indiquera que l’objection ne peut être surmontée car le fait de limiter les produits à ceux qui respectent soit une, soit toutes les AOP/IGP susciterait nécessairement une autre objection en vertu de l’article 7, paragraphe 1, point j), du RMC, étant donné qu’une telle limitation identifierait inévitablement, et de façon à susciter la confusion, les vins à une autre origine géographique que celle de l’AOP/IGP en cause.
Adjectifs/noms équivalents
L’utilisation d’un adjectif/nom équivalent pour indiquer la même origine constitue une évocation d’une AOP/IGP.
AOP/IGP Marque communautaire(exemples inventés) Explication
IBIZA
(PGI-ES-A0110) IBICENCO Nom dans l’AOP → adjectif dans la MC
AÇORES
(PGI-PT-A1447) AÇORIANO Nom dans l’AOP → adjectif dans la MC
BORDEAUX
(PDO-FR-A0821) BORDELAIS Nom dans l’AOP → adjectif dans la MC
AOP/IGP traduites
De même, il y a évocation ou imitation de l’AOP/IGP lorsque la marque communautaire comporte ou se compose d’une traduction de tout ou partie d’une AOP dans une des langues de l’UE.
AOP/IGP Marque communautaire(exemples inventés) Explication
COGNAC KONJAKKI(exemple inventé) Une MC qui comporte le terme «Konjakki» sera considérée comme évoquant «Cognac» en finnois.
BOURGOGNE
CTM 2417269
‘Borgoña’ est la traduction espagnole de l’AOP française ‘Bourgogne’
Les marques comportant ces termes doivent être refusées en vertu de l’article 7, paragraphe 1, point j), ainsi que de l’article 7, paragraphe 1, point c), du RMC plutôt qu’en vertu seulement de l’article 7, paragraphe 1, point c), du RMC.
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Expressions utilisées comme «délocalisations»
Conformément à l’article 103, paragraphe 2, point b), du règlement (UE) n° 1308/2013 et à l’article 16 du règlement (CE) n° 110/2008, les AOP/IGP sont protégées «même si l’origine véritable du produit est indiquée ou si la dénomination protégée est traduite ou accompagnée d’une expression telle que “genre”, “type”, “méthode”, “façon”, “imitation” … ou d’une expression similaire».
Dès lors, le fait que l’AOP/IGP reproduite ou évoquée dans la marque communautaire soit accompagnée par ces expressions n’empêche pas l’application de l’article 7, paragraphe 1, point j), du RMC. En d’autres termes, même si le public est de la sorte informé de l’origine réelle du produit, une objection sera toujours soulevée en vertu de l’article 7, paragraphe 1, point j), du RMC. Malgré ces expressions, la marque induira en erreur en vertu de l’article 7, paragraphe 1, point g), du RMC, étant donné qu’il existe une contradiction entre les produits (limités à l’AOP/IGP spécifique) et le message véhiculé par la marque (à savoir que les produits ne sont pas d’«authentiques» produits de l’AOP/IGP), ce qui entraînera nécessairement une nouvelle objection en vertu de cet article.
AOP/IGP Marque communautaire (exemples inventés) Explication
RIOJA
(PDO-ES-A0117) RIOJA STYLE RED WINE
Une MC qui comporte une expression telle que «Rioja Style Red Wine» sera considérée comme évoquant l’AOP «Rioja» même si elle véhicule l’idée que le produit en cause n’est pas un «véritable» vin d’AOP Rioja.
Le lieu où le demandeur a son siège social est dénué de pertinence aux fins de l’appréciation de l’article 7, paragraphe 1, point j), du RMC. L’article 103, paragraphe 1, du règlement (UE) n° 1308/2013 énonce que les appellations d’origine protégées et les indications géographiques protégées peuvent être utilisées par tout opérateur commercialisant un produit conformément aux exigences du cahier des charges correspondant. Partant, à condition que les produits soient conformes aux exigences du cahier des charges de l’AOP/IGP en cause (ce qui est garanti par une limitation appropriée des produits), le lieu où se situe le siège social du demandeur de la marque communautaire est dénué de pertinence. Par exemple, une société dont le siège social est en Pologne peut posséder un vignoble situé en Espagne qui produit du vin conformément aux exigences du cahier des charges des produits de l’AOP «Ribera del Duero».
Autres indications ou pratiques susceptibles d’induire en erreur
L’article 103, paragraphe 2, points c) et d), du règlement (UE) n° 1308/2013 et l’article 16, points c) et d), du règlement (CE) n° 110/2008 protègent l’AOP/IGP contre un certain nombre d’indications fausses ou fallacieuses quant à l’origine, la nature ou les qualités substantielles du produit.
Bien que cela dépende très largement des particularités caractérisant le cas d’espèce, qui doit dès lors être apprécié individuellement, une marque communautaire peut être considérée comme susceptible d’induire en erreur lorsque, par exemple, elle comporte des éléments figuratifs qui sont généralement associés à la zone géographique en cause (tels que des monuments historiques notoirement connus).
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Les dispositions qui précèdent doivent être interprétées de façon restrictive: elles se réfèrent uniquement aux marques communautaires qui représentent une image bien connue et singulière, généralement prise comme symbole du lieu d’origine particulier des produits couverts par l’AOP/IGP.
AOP/IGP Marque communautaire(exemples inventés) Explication
PORTO
(PDO-PT-A1540)
MC représentant le «pont Dom Luís I» dans la ville de Porto
Une image du pont Dom Luís I et de sa rive est un emblème notoirement connu de la ville de Porto. L’utilisation de cette image pour d’autres vins que ceux couverts par l’AOP «Porto» relèverait de l’article 103, paragraphe 2, points c) et d), du règlement (UE) n° 1308/2013.
Étant donné la difficulté intrinsèque à l’identification des éléments figuratifs évocateurs, notamment dans les cas moins évidents, l’Office se fondera principalement, dans de tels cas, sur les objections des tiers.
La réputation des AOP/IGP
Conformément à l’article 103, paragraphe 2, point a), du règlement (UE) n° 1308/2013 et à l’article 16, point a), du règlement (CE) n° 110/2008, les dénominations enregistrées sont protégées contre une utilisation qui exploite la réputation de la dénomination protégée. Cette protection s’étend même à différents produits (voir, par analogie, l’arrêt du 12 juin 2007, affaires jointes T-53/04 à T-56/04, T-58/04 et T-59/04, «Budweiser», point 176).
Néanmoins, l’étendue de cette protection doit être lue conformément au mandat prévu à l’article 102 du règlement (CE) n° 1234/2007, qui limite le refus des marques aux produits répertoriés à son annexe VII, partie II.
L’Office donc considère que, dans le contexte de l’examen des motifs absolus de refus, la protection d’une AOP/IGP se limite aux produits répertoriés à son annexe VII, partie II.
Toutefois, la large étendue de la protection d’une AOP/IGP renommée ne peut être invoquée dans le cadre de l’article 8, paragraphe 4, du RMC (voir les Directives, Partie C, Opposition, Section 4, Droits au titre de l’article 8, paragraphe 4, du RMC).
2.9.2.3 Produits pertinents
Produits comparables
Les objections fondées sur l’article 7, paragraphe 1, point j), du RMC ne peuvent être soulevées qu’en ce qui concerne des produits spécifiques de la demande de marque communautaire, à savoir ceux qui sont identiques ou «comparables» à ceux couverts par l’AOP/IGP.
Les différents termes utilisés aux articles 102, paragraphe 1, et 103, paragraphe 2, du règlement (UE) n° 1308/2013 (respectivement, «produit relevant d’une des catégories
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répertoriées à l’annexe VII, partie II» et «produits comparables») sont interprétés par l’Office comme des synonymes faisant référence au même concept.
À titre de référence, les catégories répertoriées à l’annexe VII, partie II peuvent être regroupées en: i) vin; ii) vin pétillant; iii) moût de raisin; iv) vinaigre de vin.
La notion de produits comparables doit être interprétée de façon restrictive et est indépendante de l’analyse de la similitude entre les produits dans le droit des marques. En conséquence, les critères établis dans l’arrêt du 29 septembre 1998, C-39/97, «Canon», ne doivent pas nécessairement être respectés, bien que certains d’entre eux puissent être utiles. Par exemple, étant donné qu’une AOP/IGP sert à indiquer l’origine géographique et les qualités particulières d’un produit, des critères tels que la nature du produit ou sa composition sont plus pertinents que, par exemple, le fait que les produits soient ou non complémentaires.
Plus particulièrement, la CJUE (dans son arrêt du 14 juillet 2011, affaires jointes C-4/10 et C-27/10, «BNI Cognac», point 54) a énuméré les critères suivants pour déterminer si des produits sont comparables:
s’ils présentent ou non des caractéristiques objectives communes (telles que la méthode d’élaboration, l’aspect physique du produit ou l’utilisation des mêmes matières premières);
s’ils correspondent ou non, du point de vue du public concerné, à des occasions de consommation largement identiques;
s’ils sont distribués ou non par les mêmes réseaux et soumis à des règles de commercialisation similaires.
Bien qu’il ne soit pas possible, dans les présentes directives, d’énumérer tous les scénarios possibles, ce qui suit constitue des exemples de produits comparables.
Produits couverts par l’AOP/IGP Produits comparables
Vin Tous les types de vin (y compris le vin pétillant); moût de raisin; vinaigre de vin; boissons à base de vin (par exemple, «sangria»)
Spiritueux Tous les types de spiritueux; boissons à base despiritueux
Limitations de la liste des produits
Conformément à l’article 103, paragraphe 1, du règlement (CE) n° 1234/2007, les «appellations d’origine protégées et les indications géographiques protégées peuvent être utilisées par tout opérateur commercialisant un vin produit conformément aux exigences du cahier des charges correspondant».
Les objections soulevées en vertu de l’article 7, paragraphe 1, point j), du RMC peuvent être levées si les produits pertinents sont limités pour satisfaire aux exigences du cahier des charges de l’AOP/IGP en cause.
La limitation des produits peut s’avérer une tâche complexe qui peut dépendre, dans une large mesure, d’un examen au cas par cas.
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Les produits du même type que ceux couverts par l’AOP/IGP doivent être limités afin de respecter le cahier des charges de l’AOP/IGP. Le libellé adéquat est «[nom du produit] conforme aux exigences du cahier des charges de l’[AOP/IGP "X"]». Aucun autre libellé ne doit être proposé ou autorisé. Des limitations telles que «[nom du produit] avec l’[AOP/IGP "X"]» ou «[nom du produit] originaire de [nom d’un lieu]» ne sont pas acceptables.
AOP/IGP dans la marque communautaire Liste de produits acceptable
Slovácká
(PDO-CZ-A0890)
Vin conforme aux exigences du cahier des charges de l’AOP «Slovácká»
La catégorie de produits qui inclut ceux couverts par l’AOP/IGP doit être limitée pour désigner les «vins» qui sont conformes aux exigences du cahier des charges de l’AOP/IGP. Pour les boissons spiritueuses, la limitation doit désigner la catégorie exacte du produit (par exemple, «whisky», «rhum», «eau-de-vie de fruit», conformément à l’annexe III du règlement (CE) n° 110/2008) conforme aux exigences du cahier des charges de l’AOP/IGP.
AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
TOKAJI
(PDO-HU-A1254) Vins
Vin conforme aux exigences du cahier des charges de l’AOP «Tokaji»47
La marque communautaire ne peut être acceptée que pour du vin couvert par l’AOP
Les produits comparables sont limités aux produits, dans la catégorie des produits comparables, couverts par l’AOP/IGP.
AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
MOSLAVINA
(PDO-HR-A1653)
Boissons alcooliques (à l’exception des bières)
Vin conforme aux exigences du cahier des charges de l’AOP «Moslavina»; boissons alcooliques autres que du vin
La MC ne peut être acceptée que pour du vin couvert par l’AOP et pour des boissons alcooliques autres que du vin.
Il peut y avoir des cas où l’objection ne peut être surmontée par une limitation, par exemple lorsque les produits demandés, bien que «comparables», n’incluent pas le produit couvert par l’AOP/IGP (par exemple, lorsque l’IGP couvre du «whisky» et que les produits demandés sont du «rhum»).
2.9.3 AOP/IGP non protégées au titre des règlements (UE) n° 1308/2013 et (CE) n° 110/2008
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2.9.3.1 AOP/IGP protégées au niveau national dans un État membre de l’UE
La Cour de justice a établi (voir l’arrêt du 8 septembre 2009, C-478/07, «Bud») que le régime communautaire de protection des AOP/IGP pour les produits agricoles et les denrées alimentaires que prévoit le règlement n° 510/2006 [alors en vigueur] revêt un «caractère exhaustif». L’Office applique une approche analogue pour les AOP/IGP pour les vins et spiritueux, pour les raisons suivantes.
L’ancienne protection au niveau national des indications géographiques pour les vins et boissons spiritueuses qui sont à présent respectivement admissibles à une AOP/IGP au titre du règlement (UE) n° 1308/2013 et du règlement (CE) n° 110/2008 a été interrompue une fois que ces indications géographiques ont été enregistrées au niveau de l’UE [voir l’article 107, du règlement (UE) n° 1308/2013 et les articles 15, paragraphe 2, et 20, paragraphe 1, du règlement (CE) n° 110/2008].
Les indications géographiques pour des vins qui sont à présent admissibles à une AOP/IGP au titre du règlement (UE) n° 1308/2013 et qui, dans le passé, bénéficiaient d’une protection au moyen d’une législation nationale, ne relèvent pas du champ d’application de l’article 7, paragraphe 1, point j), du RMC. En conséquence, elles ne constituent pas en tant que telles, et pour cette seule raison, un motif de refus en vertu de l’article 7, paragraphe 1, point j), du RMC, à moins qu’elles aient également été enregistrées au niveau de l’UE. Dès lors, si, par exemple, un tiers fait valoir qu’une marque communautaire comporte ou est composée d’une indication géographique pour des vins ayant été enregistrée dans le passé au niveau national dans un État membre de l’UE, l’examinateur vérifiera si cette indication géographique est également enregistrée au niveau de l’UE en tant qu’AOP/IGP. Dans le cas contraire, les observations du tiers seront considérées comme ne soulevant pas de doutes sérieux en ce qui concerne l’article 7, paragraphe 1, point j), du RMC.
2.9.3.2 AOP/IGP de pays tiers
Les situations suivantes font référence aux AOP/IGP de pays tiers qui ne sont pas simultanément enregistrées au niveau de l’UE.
L’indication géographique est uniquement protégée dans le pays d’origine en vertu de la législation nationale.
L’article 7, paragraphe 1, point j), du RMC ne s’applique pas, étant donné que l’indication géographique d’un pays tiers n’est pas reconnue et protégée expressis verbis en vertu de la législation de l’UE. À cet égard, il convient de noter que les dispositions du TRIPs ne sont pas de nature à créer pour les particuliers des droits dont ceux-ci peuvent se prévaloir directement devant le juge en vertu du droit de l’UE (voir l’arrêt du 14 décembre 2000, affaires jointes C-300/98 et C-392/98, point 44).
Néanmoins, lorsque la marque communautaire comporte ou est composée d’une telle indication géographique protégée, il convient également d’apprécier si la marque communautaire peut ou non être considérée comme descriptive et/ou trompeuse en vertu de l’article 7, paragraphe 1, points c) et g), du RMC conformément aux règles générales énoncées dans les présentes directives. Par exemple, lorsqu’un tiers relève qu’une marque communautaire se compose du terme «Murakami» (exemple inventé), qui est une IGP pour des spiritueux conformément à la législation nationale du pays X, l’article 7, paragraphe 1, point j), du RMC ne s’appliquera pas pour les raisons exposées ci-dessus, mais il convient d’examiner si la marque communautaire sera ou
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non perçue comme un signe descriptif et/ou trompeur par les consommateurs pertinents de l’UE.
L’indication géographique est protégée en vertu d’un accord auquel l’Union européenne est partie.
L’UE a signé un certain nombre d’accords commerciaux avec des pays tiers, qui protègent les indications géographiques. Ces instruments incluent généralement une liste des indications géographiques, ainsi que des dispositions concernant leurs conflits avec des marques. Le contenu et le degré de précision peuvent néanmoins varier d’un accord à l’autre. Les indications géographiques de pays tiers sont protégées au niveau de l’UE après l’entrée en vigueur de l’accord pertinent.
À cet égard, selon une jurisprudence constante, une disposition d'un accord conclu par l’Union avec des pays tiers doit être considérée comme étant d'application directe lorsque, eu égard aux termes, à l'objet et à la nature de l'accord, on peut conclure que la disposition comporte une obligation claire, précise et inconditionnelle qui n'est subordonnée, dans son exécution ou dans ses effets, à l'intervention d'aucun acte ultérieur (voir l’arrêt du 14 décembre 2000, affaires jointes C-300/98 et C-392/98, point 42).
L’étendue de la protection octroyée à ces IGP par des pays tiers est définie par les dispositions matérielles de l’accord concerné. Si les accords les plus anciens ne comportaient que des dispositions générales, la «dernière génération» des accords de libre échange fait référence aux relations entre les marques et les IGP dans des termes similaires aux articles 102 et 103 du règlement (UE) n° 1308/2013 (voir, par exemple, les articles 210 et 211 de l’«accord commercial entre l’Union européenne et ses États membres, d’une part, et la Colombie et le Pérou, d’autre part», JO L 354 du 21/12/2012).
À la lumière de ces dispositions, les marques communautaires qui comportent ou qui sont composées d’une AOP/IGP d’un pays tiers qui est protégée par un accord auquel l’UE est une partie contractante (et qui n’est pas simultanément enregistrée au titre du règlement (UE) n° 1308/2013) sont examinées au cas par cas, conformément aux dispositions matérielles spécifiques de l’accord en question en ce qui concerne le refus de marques litigieuses, en tenant compte de la jurisprudence citée ci-dessus. Le simple fait qu’une AOP/IGP d’un pays tiers soit protégée par ces instruments n’implique pas automatiquement qu’une marque communautaire qui comprend ou qui est composée de l’AOP/IGP doive être refusée: cela dépendra du contenu et de la portée des dispositions pertinentes de l’accord.
L’indication géographique est protégée en vertu d’un accord international signé par les seuls États membres
La protection des indications géographiques en vertu des accords entre deux États membres est exclue par le règlement actuel de l’UE sur les AOP/IGP (voir la jurisprudence dans l’arrêt du 8 septembre 2009, C-478/07, «Bud», appliquée par l’Office par analogie pour les AOP/IGP pour les vins et les spiritueux). De tels accords sont redondants et n’ont pas d’effet juridique.
En ce qui concerne les accords internationaux signés exclusivement par des États membres avec des pays tiers (notamment l’arrangement de Lisbonne concernant la protection des appellations d’origine et leur enregistrement international), et aux seules
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fins de l’examen des motifs absolus de refus, l’UE n’est pas partie contractante à ces accords et ils n’imposent aucune obligation à l’UE (voir, par analogie, l’arrêt du 14 octobre 1980, 812/79, point 9).
2.10 Article 7, paragraphe 1, point k), du RMC
2.10.1 Introduction
L’article 7, paragraphe 1, point k), du RMC s’applique aux marques communautaires qui sont en conflit avec les appellations d’origine protégées/indications géographiques protégées (AOP/IGP) pour des denrées agricoles et des produits alimentaires enregistrés au niveau de l’UE.
Plus spécifiquement, il prévoit le refus de marques communautaires qui comportent ou qui sont composées d’une AOP/IGP pour des produits agricoles et des denrées alimentaires qui a été enregistrée au titre du règlement (UE) n° 1151/20125, lorsqu’elles correspondent à l’une des situations visées dans ce règlement.
Conformément au règlement (UE) n° 1151/2012, les AOP/IGP couvrent les produits pour lesquels il existe un lien intrinsèque entre les caractéristiques du produit ou de la denrée alimentaire et son origine géographique.
Plus particulièrement:
on entend par «appellation d’origine» une dénomination qui identifie un produit:
1. comme étant originaire d’un lieu déterminé, d’une région, ou, dans des cas exceptionnels, d’un pays;
2. dont la qualité ou les caractéristiques sont dues essentiellement ou exclusivement au milieu géographique comprenant les facteurs naturels et humains; et
3. dont toutes les étapes de production ont lieu dans l’aire géographique délimitée;
on entend par «indication géographique» une dénomination qui identifie un produit:
1. comme étant originaire d’un lieu déterminé, d’une région ou d’un pays; 2. dont une qualité déterminée, la réputation ou une autre propriété peut être
attribuée essentiellement à son origine géographique; et 3. dont au moins une des étapes de production a lieu dans l’aire géographique
délimitée.
L’AOP est le terme utilisé pour décrire des denrées alimentaires qui sont produites, traitées et préparées dans une aire géographique déterminée en utilisant un savoir- faire reconnu. Une IGP indique un lien avec le territoire dans au moins une des étapes de la production, du traitement ou de la préparation. Les AOP ont dès lors un lien plus fort avec le territoire.
Cette distinction, cependant, n’influe pas sur l’étendue de la protection, qui est identique tant pour les AOP que pour les IGP. En d’autres termes, l’article 7,
5 Règlement (UE) n° 1151/2012 du Parlement européen et du Conseil du 21 novembre 2012 relatif aux systèmes de qualité applicables aux produits agricoles et aux denrées alimentaires. Il remplace et abroge le règlement (CE) n° 510/2006.
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paragraphe 1, point k), du RMC s’applique indifféremment aux désignations couvertes par le règlement (UE) n° 1151/2012, qu’elles aient été enregistrées comme AOP ou comme IGP.
Une protection est octroyée aux AOP/IGP dans le but de garantir leur bonne utilisation et de prévenir des pratiques pouvant induire le consommateur en erreur (voir le considérant 29 du règlement (UE) n° 1151/2012).
À cet égard, il convient également de souligner que les concepts d’AOP et d’IGP diffèrent d’une «indication de provenance géographique simple». Pour cette dernière, il n’existe pas de lien direct entre une qualité spécifique, une réputation ou une autre caractéristique du produit et son origine géographique spécifique, avec pour conséquence qu’elle ne relève pas du champ d’application de l’article 5, paragraphe 2, du règlement (UE) n° 1151/2012 (voir l’arrêt du 7 novembre 2000, C-312/98, «Haus Cramer», points 43 et 44). Par exemple, «Queso Manchego» est une AOP pour du fromage, étant donné qu’elle désigne un produit aux caractéristiques particulières qui entrent dans la définition d’une AOP. Toutefois, le «Queso de Alicante» (une «indication de provenance géographique simple») ne peut bénéficier d’une AOP/IGP, étant donné qu’il ne bénéficie pas de ces caractéristiques et exigences.
Conformément à l’article 14, paragraphe 1, du règlement (UE) n° 1151/2012,
(l)orsqu’une appellation d’origine ou une indication géographique est enregistrée au titre du présent règlement, l’enregistrement d’une marque dont l’utilisation enfreindrait l’article 13, paragraphe 1, et qui concerne un produit de même type est refusé si la demande d’enregistrement de la marque est présentée après la date de dépôt auprès de la Commission de la demande d’enregistrement relative à l’appellation d’origine ou à l’indication géographique.
L’article 13, paragraphe 1, du règlement (UE) n° 1151/2012 fixe les cas qui enfreignent les droits découlant d’une AOP/IGP: i) utilisation commerciale directe ou indirecte de l’AOP/IGP; ii) usurpation, imitation ou évocation; iii) pratique frauduleuse ou trompeuse relative à l’emballage ou aux informations figurant sur le produit; et iv) autre pratique susceptible d’induire en erreur.
Trois conditions cumulatives sont nécessaires pour l’application de l’article 7, paragraphe 1, point k), du RMC:
l’AOP/IGP en cause doit être enregistrée au niveau de l’UE conformément à la procédure établie dans le règlement (UE) n° 1151/2012 (voir le point 2.10.2.1 ci- dessous);
l’utilisation de la marque communautaire qui comporte ou qui est composée d’une AOP/IGP destinée à identifier les produits agricoles et denrées alimentaires doit constituer un des cas prévus à l’article 13, paragraphe 1, du règlement (UE) n° 1151/2012 (voir le point 2.10.2.2 ci-dessous);
la demande de marque communautaire doit inclure des produits qui sont identiques ou «comparables» aux produits couverts par l’AOP/IGP (voir le point 2.10.2.3 ci-dessous).
Pour ces trois conditions, il est fait référence ci-dessous aux: i) AOP/IGP pouvant donner lieu à une objection au titre de l’article 7, paragraphe 1, point k), du RMC; ii) circonstances dans lesquelles une marque communautaire comporte ou est
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composée d’une AOP/IGP de telle façon qu’elle relève de l’article 13, paragraphe 1, du règlement (UE) n° 1151/2012; iii) produits de la demande de marque communautaire affectés par la protection octroyée à l’AOP/IGP. Enfin, il est également fait référence ci- dessous à la façon dont les produits peuvent être limités afin de lever une objection.
2.10.2 Application de l’article 7, paragraphe 1, point k), du RMC
2.10.2.1 AOP/IGP pertinentes
L’article 7, paragraphe 1, point k), du RMC s’applique lorsque des AOP/IGP (d’un État membre de l’UE ou d’un pays tiers) ont été enregistrées au titre de la procédure prévue par le règlement (UE) n° 1151/2012.
Pour les AOP/IGP des pays tiers qui bénéficient d’une protection dans l’Union européenne au titre de conventions internationales conclues entre l’Union européenne et des pays tiers, voir le point 2.10.3.2 ci-dessous.
Des informations pertinentes concernant les AOP/IGP enregistrées au titre du règlement (UE) n° 1151/2012 sont disponibles dans la base de données «DOOR» tenue à jour par la Commission, accessible via l’internet à l’adresse http://ec.europa.eu/agriculture/quality/door/list.html.
La protection n’est accordée qu’au nom d’une AOP/IGP telle qu’enregistrée (voir l’article 13, paragraphe 1, du règlement (UE) n° 1151/2012) et ne s’étend pas ipso iure aux noms des sous-régions, sous-dénominations, communes ou localités dans le territoire couvert par cette AOP/IGP. À cet égard, il convient d’établir une distinction entre la jurisprudence du Tribunal dans l’arrêt du 11 mai 2010, T-237/08, «Cuvée Palomar», et le cadre juridique actuel. Cet arrêt fait référence à un système de compétences des États membres concernant la désignation d’indications géographiques pour des vins qui existait en vertu du précédent règlement (CE) n° 1493/1999 mais qui n’est plus en vigueur.
Par ailleurs, les accords commerciaux signés par l’UE avec des pays tiers ont généralement en annexe une liste des AOP/IGP enregistrées au niveau de l’UE qui doivent également être protégées dans les pays tiers en cause (voir l’arrêt du 11 mai 2010, T-237/08, «Cuvée Palomar», points 104 à 108, et la décision du 19 juin 2013, R 1546/2011-4 – «FONT DE LA FIGUERA»). Toutefois, les examinateurs ne devraient pas utiliser ces listes comme source d’information sur les AOP/IGP de l’UE mais se référer aux bases de données correspondantes mentionnées ci-dessus. Premièrement, les listes des AOP/IGP de l’UE à protéger à l’étranger peuvent varier d’un accord à l’autre, en fonction des particularités des négociations. Deuxièmement, les annexes aux accords sont généralement modifiées et actualisées par un «échange de lettres».
L’article 7, paragraphe 1, point k), du RMC ne s’applique qu’en ce qui concerne les AOP/IGP qui ont été demandées avant la marque communautaire et qui sont enregistrées au moment de l’examen de la marque communautaire. Les dates pertinentes pour l’établissement de la priorité d’une marque et d’une AOP/IGP sont respectivement la date de demande de la marque communautaire (ou de la «priorité selon la Convention de Paris», si elle est revendiquée) et la date de la demande de protection d’une AOP/IGP à la Commission.
Dès lors, aucune objection ne sera soulevée au titre de l’article 7, paragraphe 1, point k), du RMC lorsque l’AOP/IGP a été demandée après la date de dépôt (ou la
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date de priorité, le cas échéant) de la demande de marque communautaire. Pour les vins, lorsqu’il n’y a pas d’information sur la date pertinente dans l’extrait «E-Bacchus», cela signifie que l’AOP/IGP en cause existait déjà le 1er août 2009, date à laquelle le registre a été créé. Pour toute AOP/IGP concernant du vin et ajoutée ultérieurement, l’extrait «E-Bacchus» inclut une référence à la publication au Journal officiel, qui fournit les informations pertinentes. Pour les boissons spiritueuses, la publication initiale de l’annexe III au règlement (CE) n° 110/2008 contenait toutes les IGP pour les boissons spiritueuses existant au 20 février 2008, date de l’entrée en vigueur de ce règlement. Pour toute IGP concernant des boissons spiritueuses et ajoutée ultérieurement, le règlement portant modification correspondant contient les informations pertinentes.
Nonobstant ce qui précède, et compte tenu du fait que la vaste majorité des demandes d’AOP/IGP sont enregistrées, une objection sera soulevée lorsque l’AOP/IGP a été demandée avant la date de dépôt (ou la date de priorité, le cas échéant) de la demande de marque communautaire mais n’avait pas encore été enregistrée au moment de l’examen de la demande de marque communautaire. Néanmoins, si le demandeur allège que la marque n'a pas été enregistrée, la procédure sera suspendue jusqu’à la décision final sur l’enregistrement de l’AOP/IGP.
2.10.2.2 Situations couvertes par l’article 13, paragraphe 1, du règlement (UE) n° 1151/2012
L’article 7, paragraphe 1, point k), du RMC s’applique (à condition que les autres conditions s’appliquent également) aux situations suivantes:
1. la marque communautaire est uniquement composée d’une AOP/IGP entière («utilisation directe»);
2. la marque communautaire est composée d’une AOP/IGP entière en plus d’autres éléments verbaux ou figuratifs («utilisation directe ou indirecte»);
3. la marque communautaire comporte ou est composée d’une imitation ou évocation d’une AOP/IGP;
4. autres indications ou pratiques susceptibles d’induire en erreur; 5. la réputation des AOP/IGP.
La marque communautaire est uniquement composée d’une AOP/IGP entière («utilisation directe»)
Cette situation couvre l’«utilisation directe» d’une AOP/IGP en tant que marque communautaire, à savoir que la marque est uniquement composée du nom de l’AOP/IGP.
Exemples
AOP/IGP Marque communautaire
DRESDNER CHRISTSTOLLEN (DE/PGI/005/0704)
DRESDNER CHRISTSTOLLEN (MC collective n° 262 949)
PROSCIUTTO DI PARMA (IT/PDO/0117/0067)
PROSCIUTTO DI PARMA (MC collective n° 1 116 458)
Si la marque se compose uniquement de l’AOP/IGP, la marque communautaire relève également de l’article 7, paragraphe 1, point c), du RMC, étant donné qu’elle est considérée comme descriptive de l’origine géographique des produits concernés. Cela
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signifie que l’objection de l’examinateur soulèvera simultanément des motifs absolus de refus en vertu de l’article 7, paragraphe 1, point k), ainsi que de l’article 7, paragraphe 1, point c), du RMC. Il existe une dérogation à cet égard, conformément à l’article 66, paragraphe 2, du RMC, lorsque la marque communautaire est une marque collective et que les règlements régissant son usage incluent les données prévues à l’article 67, paragraphe 2 (dans la situation inverse, lorsque la marque a été demandée en tant que marque individuelle, voir la décision du 7 mars 2006, R 1073/2005-1 – «TEQUILA», paragraphe 15).
Si la limitation des produits pertinents (afin de satisfaire aux exigences du cahier des charges de l’AOP/IGP) est généralement un moyen de lever l’objection au titre de l’article 7, paragraphe 1, point k), du RMC (voir le point 2.10.2.3 ci-dessous), cette limitation est dénuée de pertinence pour l’article 7, paragraphe 1, point c), du RMC.
Par exemple, une marque communautaire composée de l’expression «PROSCIUTTO DI PARMA» pour de la viande sera simultanément contestée au titre de l’article 7, paragraphe 1, point k), et de l’article 7, paragraphe 1, point c), du RMC: elle se compose uniquement de l’AOP «Prosciutto di Parma», qui bénéficie d’une protection pour des produits à base de viande, à savoir un type spécifique de jambon, et est dès lors descriptive. Si les produits sont ensuite limités au jambon conforme aux exigences du cahier des charges de l’AOP «Prosciutto di Parma», l’objection au titre de l’article 7, paragraphe 1, point k), du RMC sera levée mais la marque est toujours descriptive et reste contestable au titre de l’article 7, paragraphe 1, point c), du RMC, à moins d’avoir été demandée en tant que marque collective répondant aux exigences de l’article 67, paragraphe 2, du RMC.
La marque communautaire est composée d’une AOP/IGP entière en plus d’autres éléments verbaux ou figuratifs («utilisation directe ou indirecte»)
Cette situation couvre également l’«utilisation directe» d’une AOP/IGP dans une marque communautaire par la reproduction du nom de l’AOP/IGP avec d’autres éléments.
Les marques communautaires suivantes sont considérées comme relevant de l’article 7, paragraphe 1, point k), du RMC, étant donné qu’elles comportent la dénomination entière d’une AOP/IGP:
AOP/IGP Marque communautaire
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
CONSORZIO DEL PROSCIUTTO DI PARMA
(MC n° 6 380 141)
DRESDNER CHRISTSTOLLEN
(DE/PGI/005/0704)
(MC n° 5 966 668)
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AOP/IGP Marque communautaire
PARMIGIANO REGGIANO
(IT/PDO/0117/0016)
(MC n° 6 380 141)
WELSH BEEF
(UK/PGI/0005/0057)
(MC n° 10 513 729)
En vertu de l’article 7, paragraphe 1, point k), du RMC, il est indifférent que les autres éléments verbaux ou figuratifs puissent donner à la marque un caractère distinctif. Le signe peut être acceptable dans son ensemble en vertu de l’article 7, paragraphe 1, points b) et c), du RMC et rester contestable (comme dans les cas ci-dessus) en vertu de l’article 7, paragraphe 1, point k), du RMC.
Il y a «utilisation indirecte» d’une AOP/IGP, par exemple, lorsque l’AOP/IGP apparaît dans une marque complexe (telle que la représentation d’une étiquette) en plus petits caractères, en tant qu’information sur l’origine ou le type du produit ou en tant que partie de l’adresse du producteur. Le cas échéant, la marque sera contestable, quelle que soit la position ou la taille de l’AOP/IGP au sein de la marque dans son ensemble, à condition qu’elle soit visible.
AOP/IGP Marque communautaire
WELSH LAMB
(UK/PGI/0005/0081)
(MC n° 11 927 472)
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AOP/IGP Marque communautaire
QUESO MANCHEGO
(ES/PDO/0117/0087)
(MC n° 5 582 267)
La marque communautaire comporte ou est composée d’une imitation ou évocation d’une AOP/IGP
Ni le RMC, ni le règlement (UE) n° 1151/2012 ne définit les termes «imitation» ou «évocation». Dans une large mesure, ces notions sont étroitement liées.
Selon la Cour, la notion d'«évocation» recouvre «une hypothèse dans laquelle le terme utilisé pour désigner un produit incorpore une partie d'une dénomination protégée, en sorte que le consommateur, en présence du nom du produit, est amené à avoir à l'esprit, comme image de référence, la marchandise bénéficiant de l'appellation» (voir l’arrêt du 4 mars 1999, C-87/97, «Cambozola», point 25, et l’arrêt du 26 février 2008, C-132/05, point 44).
Les dispositions qui précèdent signifient qu’il peut y avoir évocation lorsque la marque communautaire reproduit une partie d’une AOP/IGP, telle que (l’un de) ses éléments verbaux géographiquement significatifs (en ce sens qu’il ne s’agit pas d’un élément générique), voire une partie d’un mot, telle qu’une racine ou une terminaison caractéristique (des exemples sont présentés ci-dessous).
En outre, l’article 13, paragraphe 1, point b), du règlement (UE) n° 1151/2012 protège les AOP/IGP contre toute usurpation, imitation ou évocation, même si l’origine véritable du produit est indiquée ou si la dénomination protégée est traduite ou accompagnée d’une expression telle que “genre”, “type”, “méthode”, “façon”, “imitation”, ou d’une expression similaire (mise en gras ajoutée), donc même si les consommateurs ne sont pas induits en erreur.
Selon l’avocat général (conclusions du 17 décembre 1998, C-87/97, «Cambozola», point 33), «le terme "évocation" est objectif, de sorte qu'il n'est pas nécessaire de démontrer que le titulaire de la marque entendait évoquer la dénomination protégée».
À cet égard, et aux fins de l’article 7, paragraphe 1, point k), du RMC, l’Office appréciera de manière également objective les situations décrites ci-dessous, indépendamment de l’intention réelle du demandeur de la marque communautaire.
En outre, l’Office considère les termes «imitation» et «évocation» comme deux corollaires d’une notion essentiellement la même. La marque «imite» (copie, reproduit les éléments de, etc.), avec pour résultat que le produit désigné par l’AOP/IGP est «évoqué» (rappelé).
Au vu de ce qui précède, il y a évocation ou imitation d’une AOP/IGP lorsque:
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(a) la marque communautaire incorpore la partie géographiquement significative (en ce sens qu’il ne s’agit pas de l’élément générique) de l’AOP/IGP;
b) la marque communautaire comporte un adjectif/nom équivalent qui indique la même origine géographique;
c) l’AOP/IGP est traduite; d) la marque communautaire inclut une expression «de délocalisation» en plus de
l’AOP/IGP ou son évocation.
La marque communautaire incorpore une partie de l’AOP/IGP
Selon la Cour (voir l’arrêt du 4 mars 1999, C-87/97, «Cambozola», et l’arrêt du 26 février 2008, C-132/05, précités), la marque communautaire doit amener à l’esprit du consommateur l’image du produit bénéficiant de l’appellation.
La Cour a également déclaré qu’«il peut (…) y avoir évocation d'une appellation protégée en l'absence de tout risque de confusion entre les produits concernés» (voir l’arrêt du 4 mars 1999, C-87/97, «Cambozola», point 26).
Élément important, l’évocation n’est pas appréciée de la même façon que le risque de confusion (voir les conclusions de l’avocat général du 17 décembre 1998, C-87/97, «Cambozola», point 37). Un lien doit être établi avec le produit bénéficiant de l’appellation. Dès lors, le fait qu’il y ait ou non évocation ne sera pas analysé selon les principes établis par la CJUE dans son arrêt du 11 novembre 1997, C-251/95, «Sabèl».
Comme indiqué ci-dessus, l’évocation est interprétée comme englobant non seulement le cas où la marque communautaire incorpore un (des) élément(s) verbal (verbaux) géographiquement significatif(s) (par opposition à un élément générique) d’une AOP/IGP, mais aussi le cas où la marque communautaire reproduit d’autres parties de cette AOP/IGP, telles qu’une racine ou une terminaison caractéristique.
AOP/IGP Marque Explication
CHIANTI CLASSICO
(IT/PDO/0005/0108)
(MC n° 9 567 851)
Le terme «chianti» évoque l’AOP «Chianti Classico».
(R 1474/2011-2, «AZIENDA OLEARIA CHIANTI», paragraphes 14 et 15)
GORGONZOLA
(IT/PDO/0017/0010) CAMBOZOLA
«… il y a évocation d'une dénomination protégée lorsque le terme utilisé pour le désigner se termine par les deux mêmes syllabes que cette dénomination et comporte le même nombre de syllabes que celle-ci, d'où il résulte une parenté phonétique et optique manifeste entre les deux termes»
(C-87/97, point 27)
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AOP/IGP Marque Explication
NÜRNBERGER BRATWÜRSTE/NÜRNBERGER
ROSTBRATWÜRSTE
(DE/PGI/0005/0184)
NUERNBERGA
(MC n° 9 691 577)
«en raison de l’équivalence phonétique, NUERNBERGA est comprise dans le sens de l’indication géographique Nürnberger’
(R 1331/2011-4, ‘NUERNBERGA’, para. 12)
Si une AOP/IGP comporte ou évoque le nom d’un produit considéré comme générique, la protection ne s’étend pas à l’élément générique (voir l’article 13, paragraphe 1, du règlement (UE) n° 1151/2012, in fine et l’arrêt du 12 septembre 2007, T-291/03, «Grana Biraghi», points 58 et 60). Par exemple, dans les IGP «Maçã de Alcobaça» et «Jambon d'Ardenne», il est notoirement connu que les termes «maçã» (pomme, en portugais) et «jambon» sont génériques et ne bénéficient dès lors pas d’une protection. En conséquence, aucune objection ne sera soulevée contre le simple fait qu’une marque communautaire contienne ces termes génériques faisant partie d’une AOP/IGP.
Plus particulièrement, il convient également de mentionner que les termes «camembert» et «brie» sont génériques (voir l’arrêt du 26 février 2008, C-132/05, point 36). D’autres exemples sont «cheddar» ou «gouda» [voir le règlement (CE) n° 1107/96, notes de bas de page aux AOP «West Country farmhouse Cheddar» et «Noord-Hollandse Gouda»]. Dès lors, aucune objection n’a été soulevée dans le cas suivant:
AOP/IGP Marque communautaire
(aucune, parce que «camembert» n’est pas une indication géographique, mais un terme générique)
(MC n° 7 389 158)
Lorsque la nature générique d’un élément dans une AOP/IGP peut être déterminée par des définitions de dictionnaires courants, la perspective du public dans le pays d’origine de l’AOP/IGP est déterminante. Ainsi, dans les exemples cités ci-dessus, il suffit que les termes «maçã» et «jambon» soient génériques pour les consommateurs portugais et français, respectivement, pour conclure qu’ils sont génériques, indépendamment du fait qu’ils puissent ou non être compris par d’autres parties du public de l’Union européenne.
En revanche, lorsqu’aucune définition ne peut être trouvée dans un dictionnaire courant, bien connu, la nature générique du terme en question doit être appréciée selon les critères établis par la Cour ou le Tribunal (voir l’arrêt du 26 février 2008, C-132/05, et l’arrêt du 12 septembre 2007, T-291/03, «Grana Biraghi»), tels que la législation nationale et de l’UE pertinente, la façon dont le terme est perçu par le public et la commercialisation du produit en question.
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Enfin, dans certains cas, une marque communautaire peut constituer une utilisation directe/indirecte ou une évocation de plus d’une AOP/IGP à la fois. Cela peut se produire lorsque la marque communautaire comporte un élément (non générique) qui figure dans plus d’une AOP/IGP.
AOP/IGP Marque communautaire Explication
Amarene Brusche di Modena
(MC n° 11 338 779)
La MC contient l’élément «MODENA» qui évoque toutes les AOP/IGP qui incluent «MODENA»
Aceto Balsamico di Modena
Aceto balsamico tradizionale di Modena
Cotechino Modena
Zampone Modena
Prosciutto di Modena
À condition que la marque communautaire couvre les produits pertinents, une objection doit être soulevée à l’égard de toutes les AOP/IGP concernées. Toutefois, l’examinateur indiquera que l’objection ne peut être surmontée car le fait de limiter les produits à ceux qui respectent soit une, soit toutes les AOP/IGP susciterait nécessairement une autre objection en vertu de l’article 7, paragraphe 1, point j), du RMC, étant donné qu’une telle limitation identifierait inévitablement, et de façon à susciter la confusion, les vins à une autre origine géographique que celle de l’AOP/IGP en cause.
Adjectifs/noms équivalents
L’utilisation d’un adjectif/nom équivalent pour indiquer la même origine constitue une évocation d’une AOP/IGP:
AOP/IGP Marque communautaire(exemples inventés) Explication
JAGNIĘCINA PODHALAŃSKA
(PL/PGI/0005/00837)
JAGNIĘCINA Z PODHALA Nom dans l’IGP → adjectif dans la MC
MEL DO ALENTEJO
(PT/PDO/0017/0252) MEL ALENTEJANA Nom dans l’AOP → adjectif dans la MC
SCOTTISH WILD SALMON
(GB/PGI/0005/00863)
WILD SALMON FROM SCOTLAND Adjectif dans l’IGP → nom dans la MC
AOP/IGP traduites
De même, il y a évocation ou imitation de l’AOP/IGP lorsque la marque communautaire comporte ou se compose d’une traduction de tout ou partie d’une AOP dans une des langues de l’UE.
AOP/IGP Marque communautaire(exemples inventés) Explication
PÂTES D'ALSACE
(FR/PGI/0005/0324) ALSATIAN PASTA
Une MC qui comporte l’expression «Alsatian Pasta» sera considérée comme évoquant l’IGP «Pâtes d'Alsace»
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Les marques comportant ces termes doivent être refusées en vertu de l’article 7, paragraphe 1, point k), ainsi que de l’article 7, paragraphe 1, point c), du RMC plutôt qu’en vertu seulement de l’article 7, paragraphe 1, point c), du RMC.
Expressions utilisées comme «délocalisations»
Conformément à l’article 13, paragraphe 1, point b), du règlement (UE) n° 1151/2012, les AOP/IGP sont protégées «même si l’origine véritable du produit est indiquée ou si la dénomination protégée est traduite ou accompagnée d’une expression telle que “genre”, “type”, “méthode”, “façon”, “imitation” … ou d’une expression similaire».
Dès lors, le fait que l’AOP/IGP reproduite ou évoquée dans la marque communautaire soit accompagnée par ces expressions n’empêche pas l’application de l’article 7, paragraphe 1, point k), du RMC. En d’autres termes, même si le public est de la sorte informé de l’origine réelle du produit, une objection sera toujours soulevée en vertu de l’article 7, paragraphe 1, point k), du RMC. Malgré ces expressions, la marque induira en erreur en vertu de l’article 7, paragraphe 1, point g), du RMC, étant donné qu’il existe une contradiction entre les produits (limités à l’AOP/IGP spécifique) et le message véhiculé par la marque (à savoir que les produits ne sont pas d’«authentiques» produits de l’AOP/IGP), ce qui entraînera nécessairement une nouvelle objection en vertu de cet article 7.
AOP/IGP Marque communautaire(exemples inventés) Explication
FETA
(EL/PDO/0017/0427)
GREEK STYLE PLAIN FETA
ARABIAN FETA
Une MC qui comporte des expressions telles que «Greek Style Plain Feta» ou «Arabian Feta», sera considérée comme évoquant l’AOP «Feta», même si elle véhicule l’idée que le produit en cause n’est pas un «véritable» fromage d’AOP Feta.
Le lieu où le demandeur a son siège social est dénué de pertinence aux fins de l’appréciation de l’article 7, paragraphe 1, point k), du RMC. L’article 12, paragraphe 1, du règlement (UE) n° 1151/2012 énonce que les appellations d’origine protégées et les indications géographiques protégées peuvent être utilisées par tout opérateur commercialisant un produit conformément aux exigences du cahier des charges correspondant. Partant, à condition que les produits soient conformes aux exigences du cahier des charges de l’AOP/IGP en cause (ce qui est garanti par une limitation appropriée des produits), le lieu où se situe le siège social du demandeur de la marque communautaire est dénué de pertinence. Par exemple, une société dont le siège social est en Lituanie peut posséder une usine en Espagne qui élabore des produits conformes à l’IGP «Chorizo de Cantimpalos».
Autres indications ou pratiques susceptibles d’induire en erreur
L’article 13, paragraphe 1, points c) et d), du règlement (UE) n° 1151/2012 protège l’AOP/IGP contre un certain nombre d’indications fausses ou fallacieuses quant à l’origine, la nature ou les qualités substantielles du produit.
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Bien que cela dépende très largement des particularités caractérisant le cas d’espèce, qui doit dès lors être apprécié individuellement, une marque communautaire peut être considérée comme susceptible d’induire en erreur lorsque, par exemple, elle comporte des éléments figuratifs qui sont généralement associés à la zone géographique en cause (tels que des monuments historiques notoirement connus) ou lorsqu’elle reproduit une forme particulière du produit.
Les dispositions qui précèdent doivent être interprétées de façon restrictive: elles se réfèrent uniquement aux marques communautaires qui représentent une image bien connue et singulière, généralement prise comme symbole du lieu d’origine particulier des produits couverts par l’AOP/IGP ou une forme singulière du produit décrit dans le cahier des charges de l’AOP/IGP.
AOP/IGP Marque communautaire(exemples inventés) Explication
MOULES DE BOUCHOT DE LA BAIE DU MONT-SAINT-
MICHEL
(FR/PDO/0005/0547)
Une MC comportant une image de l’Abbaye du Mont-
Saint-Michel
Une image de l’Abbaye du Mont-Saint- Michel est un emblème notoirement connu de la ville et de l’île du Mont Saint Michel en Normandie. L’utilisation de cette image pour d’autres fruits de mer que ceux couverts par l’AOP «Moules de Bouchot de la Baie du Mont-Saint- Michel» relèverait de l’article 13, paragraphe 1, points c) et d), du règlement (UE) n° 1151/2012
QUESO TETILLA
(ES/PDO/0017/0088)
Une MC représentant un fromage de forme conique
La forme singulière du produit est décrite dans le cahier des charges de l’AOP «Queso Tetilla»
Étant donné la difficulté intrinsèque à l’identification des éléments figuratifs évocateurs, notamment dans les cas moins évidents, l’Office se fondera principalement, dans de tels cas, sur les objections des tiers.
La réputation des AOP/IGP
Conformément à l’article 13, paragraphe 1, point a), du règlement (UE) n° 1151/2012, les dénominations enregistrées sont protégées contre une utilisation qui exploite la réputation de la dénomination protégée. Cette protection s’étend même à différents produits (voir, par analogie, l’arrêt du 12 juin 2007, affaires jointes T-53/04 à T-56/04, T-58/04 et T-59/04, «Budweiser», point 176).
Néanmoins, l’étendue de cette protection doit néanmoins être lue conformément au mandat prévu à l’article 14 du même règlement, qui limite le refus des marques aux produits «de même type».
L’Office donc considère que, dans le contexte de l’examen des motifs absolus de refus, la protection d’une AOP/IGP se limite aux produits de même type ou comparables.
Toutefois, la large étendue de la protection d’une AOP/IGP renommée ne peut être invoquée dans le cadre de l’article 8, paragraphe 4, du RMC (voir les Directives, Partie C, Opposition, Section 4, Droits au titre de l’article 8, paragraphe 4, du RMC).
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2.10.2.3 Produits pertinents
Produits comparables
Les objections fondées sur l’article 7, paragraphe 1, point k), du RMC ne peuvent être soulevées qu’en ce qui concerne des produits spécifiques de la demande de marque communautaire, à savoir ceux qui sont identiques ou «comparables» à ceux couverts par l’AOP/IGP.
Les différents termes utilisés aux articles 13 et 14 du règlement (UE) n° 1151/2012 (respectivement, «produits comparables» et «produits de même type») sont interprétés par l’Office comme des synonymes faisant référence au même concept.
La notion de produits comparables doit être interprétée de façon restrictive et est indépendante de l’analyse de la similitude entre les produits dans le droit des marques. En conséquence, les critères établis dans l’arrêt du 29 septembre 1998, C-39/97, «Canon», ne doivent pas nécessairement être respectés, bien que certains d’entre eux puissent être utiles. Par exemple, étant donné qu’une AOP/IGP sert à indiquer l’origine géographique et les qualités particulières d’un produit, des critères tels que la nature du produit ou sa composition sont plus pertinents que, par exemple, le fait que les produits soient ou non complémentaires.
Plus particulièrement, la CJUE (dans son arrêt du 14 juillet 2011, affaires jointes C-4/10 et C-27/10, «BNI Cognac», point 54) a énuméré les critères suivants pour déterminer si des produits sont comparables:
s’ils présentent ou non des caractéristiques objectives communes (telles que la méthode d’élaboration, l’aspect physique du produit ou l’utilisation des mêmes matières premières);
s’ils correspondent ou non, du point de vue du public concerné, à des occasions de consommation largement identiques;
s’ils sont distribués ou non par les mêmes réseaux et soumis à des règles de commercialisation similaires.
Bien qu’il ne soit pas possible, dans les présentes directives, d’énumérer tous les scénarios possibles, ce qui suit constitue des exemples de produits comparables.
Produits couverts par l’AOP/IGP Produits comparables
Viande spécifique et préparations de viande spécifiques
Toute viande et toute préparation de viande (R 659/2012-5, paragraphes 14 à 17)
Lait Fromage et autres produits laitiers
Fruits frais
Fruits conservés, séchés et cuits (les gelées, les confitures, les compotes ne sont pas des «produits comparables», mais les fruits couverts par l’AOP/IGP peuvent être un ingrédient commercialement pertinent, voir ci-dessous sous «produits utilisés comme ingrédients»)
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Produits couverts par l’AOP/IGP Produits comparables
Légumes frais
Légumes conservés, séchés et cuits (les gelées et confitures ne sont pas des «produits comparables», mais les légumes couverts par l’AOP/IGP peuvent être un ingrédient commercialement pertinent, voir ci-dessous sous «produits utilisés comme ingrédients»)
Limitations de la liste des produits
Conformément à l’article 12, paragraphe 1, du règlement (UE) n° 1151/2012, «les appellations d’origine protégées et les indications géographiques protégées peuvent être utilisées par tout opérateur commercialisant un produit conformément aux exigences du cahier des charges correspondant».
Les objections soulevées en vertu de l’article 7, paragraphe 1, point k), du RMC peuvent être levées si les produits pertinents sont limités pour satisfaire aux exigences du cahier des charges de l’AOP/IGP en cause.
La limitation des produits peut s’avérer une tâche complexe qui peut dépendre, dans une large mesure, d’un examen au cas par cas.
Les produits du même type que ceux couverts par l’AOP/IGP doivent être limités afin de respecter le cahier des charges de l’AOP/IGP. Le libellé adéquat est «[nom du produit] conforme aux exigences du cahier des charges de l’[AOP/IGP "X"]». Aucun autre libellé ne doit être proposé ou autorisé. Des limitations telles que «[nom du produit] avec l’[AOP/IGP "X"]» ou «[nom du produit] originaire de [nom d’un lieu]» ne sont pas acceptables.
AOP/IGP dans la marque communautaire Liste de produits acceptable
WELSH BEEF
(UK/PGI/0005/0057)
Viande de bœuf conforme aux exigences du cahier des charges de l’IGP «Welsh Beef»
La catégorie de produits qui inclut ceux couverts par l’AOP/IGP en cause peut être consultée dans la base de données «DOOR». Le produit exact couvert peut être trouvé dans le document relatif à la demande joint à la publication au Journal officiel, également accessible par «DOOR».
La catégorie de produits qui inclut ceux couverts par l’AOP/IGP doit être limitée pour désigner exactement les produits couverts par l’AOP/IGP et qui sont conformes aux exigences du cahier des charges de l’AOP/IGP.
AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
WELSH BEEF
(UK/PGI/0005/0057) Viande
Viande de bœuf conforme aux exigences du
cahier des charges de l’IGP «Welsh
Beef»
«Viande» inclut des produits (par exemple, du porc) qui ne peuvent satisfaire aux exigences du cahier des charges d’une AOP/IGP particulière couvrant le produit spécifique «viande de bœuf»
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AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
POMME DU LIMOUSIN
(FR/PDO/0005/0442 Fruits
Pommes conformes aux exigences du
cahier des charges de l’AOP «Pomme
du Limousin»
La catégorie «fruits» inclut des produits tels que des poires ou des pêches qui ne peuvent satisfaire aux exigences du cahier des charges d’une AOP couvrant exclusivement les pommes
Les produits comparables sont limités aux produits, dans la catégorie des produits comparables, couverts par l’AOP/IGP:
AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
POMME DU LIMOUSIN
(FR/PDO/0005/0442
Fruits conservés, séchés et cuits
Pommes conservées, séchées et cuites, conformes
aux exigences du cahier des charges de l’AOP «Pomme
du Limousin»
Les fruits conservés, séchés et cuits incluent des produits composés d’autres fruits qui ne peuvent respecter les exigences du cahier des charges d’une AOP qui couvre exclusivement des pommes. Il convient également de noter que la limitation ne doit pas s’appliquer aux «pommes».
Il peut y avoir des cas où l’objection ne peut être surmontée par une limitation, par exemple lorsque les produits demandés, bien que «comparables», n’incluent pas le produit couvert par l’AOP/IGP (par exemple, lorsque l’IGP couvre du «fromage» et que les produits demandés sont du «lait»).
Produits utilisés comme ingrédients: si les produits couverts par l’AOP/IGP peuvent être utilisés en tant qu’ingrédient commercialement pertinent (en ce sens qu’il peut déterminer le choix du produit principal) de l’un des produits compris dans la demande de marque communautaire, une limitation sera demandée. En effet, l’article 13, paragraphe 1, points a) et b), du règlement (UE) n° 1151/2012 élargit expressément l’étendue de la protection d’une AOP/IGP enregistrée pour un produit déterminé «quand ces produits sont utilisés en tant qu’ingrédients».
AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
POMME DU LIMOUSIN
(FR/PDO/0005/0442) Confitures et compotes
Confitures et compotes de
pommes conformes aux exigences du
cahier des charges de l’AOP «Pomme
du Limousin»
Le fruit est le principal ingrédient des confitures et des compotes
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AOP/IGP dans la marque
communautaire Spécification originale
(non acceptable) Liste de produits
acceptable Explication
PROSCIUTTO DI PARMA
(IT/PDO/0117/0067)
Pizzas
Pizzas au jambon conformes aux
exigences du cahier des charges de
l’AOP «Prosciutto di Parma»
Cette garniture est le principal ingrédient d’une pizza et celui qui détermine le choix du consommateur
Une limitation n’est pas nécessaire si les produits couverts par l’AOP/IGP sont utilisés en tant qu’ingrédient secondaire, non commercialement pertinent, des produits revendiqués.
AOP/IGP dans la marque
communautaire Spécification originale Liste de produitsacceptable Explication
ACEITE DE LA ALCARRIA
(ES/PDO/0005/0562)
Pâtisserie Pâtisserie
Les produits n’ont pas besoin d’être limités au simple motif que de l’huile est utilisée dans leur préparation. L’«huile» est un ingrédient secondaire qui n’est pas commercialement pertinent
2.10.3 AOP/IGP non protégées au titre du règlement (UE) n° 1151/2012
2.10.3.1 AOP/IGP protégées au niveau national dans un État membre de l’UE
La Cour de justice a établi (arrêt du 8 septembre 2009, C-478/07, «Bud») que le régime communautaire de protection des AOP/IGP pour les produits agricoles et les denrées alimentaires que prévoit le règlement n° 510/2006 [alors en vigueur] revêt un «caractère exhaustif».
L’article 9 du règlement (UE) n° 1151/2012 énonce que
(u)n État membre peut, à titre transitoire uniquement, accorder à une dénomination une protection au niveau national au titre du présent règlement, celle-ci prenant effet à compter de la date de dépôt d’une demande auprès de la Commission. Cette protection nationale cesse d’exister à la date à laquelle une décision sur l’enregistrement est prise au titre du présent règlement ou à la date à laquelle la demande est retirée. Les mesures prises par les États membres «ne produisent leurs effets qu’au niveau national et n’ont aucune incidence sur le commerce à l’intérieur de l’Union ou le commerce international».
Cette disposition est conforme au considérant 24 du même règlement qui déclare que
(p)our bénéficier d’une protection sur les territoires des États membres, il convient que les appellations d’origine et les indications géographiques soient enregistrées uniquement au niveau de l’Union. Il convient que les États membres puissent octroyer, avec effet à compter de la date de la demande de cet enregistrement au niveau de l’Union, une protection
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transitoire au niveau national sans porter préjudice au commerce à l’intérieur de l’Union ou au commerce international.
En outre, il convient également de faire référence au règlement (CEE) n° 2081/92 du Conseil relatif à la protection des indications géographiques et des appellations d’origine des produits agricoles et des denrées alimentaires. Ce règlement (qui a précédé et a été abrogé par le règlement (CE) n° 510/2006) énonce à son article 17, paragraphe 1, que les États membres étaient tenus «de communiquer à la Commission quelles sont, parmi leurs dénominations légalement protégées (…) celles qu'ils (désiraient) faire enregistrer en vertu de ce règlement. Le paragraphe 3 ajoutait que les États membres (pouvaient) maintenir la protection nationale des dénominations communiquées conformément au paragraphe 1 jusqu'à la date à laquelle une décision sur l'enregistrement est prise» (voir, à cet égard, l’arrêt du 4 mars 1999, C-87/97, «Cambozola», point 18).
Il en résulte que l’ancienne protection au niveau national des indications géographiques pour les produits agricoles et denrées alimentaires a été interrompue une fois que ces indications géographiques ont été enregistrées au niveau de l’UE.
Les indications géographiques pour ces types de produits qui, dans le passé, bénéficiaient d’une protection au moyen d’une législation nationale, ne relèvent pas du champ d’application de l’article 7, paragraphe 1, point k), du RMC. En conséquence, elles ne constituent pas en tant que telles, et pour cette seule raison, un motif de refus en vertu de l’article 7, paragraphe 1, point k), du RMC, à moins qu’elles aient également été enregistrées au niveau de l’UE. Dès lors, si, par exemple, un tiers fait valoir qu’une marque communautaire comporte ou est composée d’une indication géographique pour des produits agricoles et des denrées alimentaires ayant été enregistrée dans le passé au niveau national dans un État membre de l’UE, l’examinateur vérifiera si cette indication géographique est également enregistrée au niveau de l’UE en tant qu’AOP/IGP. Dans le cas contraire, les observations du tiers seront considérées comme ne soulevant pas de doutes sérieux en ce qui concerne l’article 7, paragraphe 1, point k), du RMC.
2.10.3.2 AOP/IGP de pays tiers
Les situations suivantes font référence aux AOP/IGP de pays tiers qui ne sont pas simultanément enregistrées au niveau de l’UE.
L’indication géographique est uniquement protégée dans le pays d’origine en vertu de la législation nationale
L’article 7, paragraphe 1, point k), du RMC ne s’applique pas étant donné que l’indication géographique d’un pays tiers n’est pas reconnue et protégée expressis verbis en vertu de la législation de l’UE. À cet égard, il convient de noter que les dispositions du TRIPs ne sont pas de nature à créer pour les particuliers des droits dont ceux-ci peuvent se prévaloir directement devant le juge en vertu du droit de l’UE (voir l’arrêt du 14 décembre 2000, affaires jointes C-300/98 et C-392/98, point 44).
Néanmoins, lorsque la marque communautaire comporte ou est composée d’une telle indication géographique protégée, il convient également d’apprécier si la marque communautaire peut ou non être considérée comme descriptive et/ou trompeuse en vertu de l’article 7, paragraphe 1, points c) et g), du RMC conformément aux règles générales énoncées dans les présentes directives. Par exemple, lorsqu’un tiers relève
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qu’une marque communautaire se compose du terme «Tea Murakami» (exemple inventé), qui est une IGP conformément à la législation nationale du pays X, l’article 7, paragraphe 1, point k), du RMC ne s’appliquera pas pour les raisons exposées ci- dessus, mais il convient d’examiner si la marque communautaire sera ou non perçue comme un signe descriptif et/ou trompeur par les consommateurs pertinents de l’UE.
L’indication géographique est protégée en vertu d’un accord auquel l’Union européenne est partie
L’UE a signé un certain nombre d’accords commerciaux avec des pays tiers, qui protègent les indications géographiques. Ces instruments incluent généralement une liste des indications géographiques, ainsi que des dispositions concernant leurs conflits avec des marques. Le contenu et le degré de précision peuvent néanmoins varier d’un accord à l’autre. Les indications géographiques de pays tiers sont protégées au niveau de l’UE après l’entrée en vigueur de l’accord pertinent.
À cet égard, selon une jurisprudence constante, une disposition d’un accord conclu par l’Union avec des pays tiers doit être considérée comme étant d’application directe lorsque, eu égard aux termes, à l’objet et à la nature de l’accord, on peut conclure que la disposition comporte une obligation claire, précise et inconditionnelle qui n’est subordonnée, dans son exécution ou dans ses effets, à l’intervention d’aucun acte ultérieur (voir l’arrêt du 14 décembre 2000, affaires jointes C-300/98 et C-392/98, point 42).
L’étendue de la protection accordée à ces IGP par des pays tiers est définie par les dispositions matérielles de l’accord concerné. Si les accords les plus anciens ne comportaient que des dispositions générales, la «dernière génération» des accords de libre échange fait référence aux relations entre les marques et les IGP dans des termes similaires à ceux des articles 13 et 14 du règlement (UE) n° 1151/2012 (voir, par exemple, les articles 210 et 211 de l’«accord commercial entre l’Union européenne et ses États membres, d’une part, et la Colombie et le Pérou, d’autre part», JO L 354 du 21 décembre 2012).
À la lumière de ces dispositions, les marques communautaires qui comportent ou qui sont composées d’une AOP/IGP d’un pays tiers qui est protégée par un accord auquel l’UE est une partie contractante (et qui n’est pas simultanément enregistrée au titre du règlement (CE) n° 1151/2012) sont examinées au cas par cas, conformément aux dispositions matérielles spécifiques de l’accord en question en ce qui concerne le refus de marques litigieuses, en tenant compte de la jurisprudence citée ci-dessus. Le simple fait qu’une AOP/IGP d’un pays tiers soit protégée par ces instruments n’implique pas automatiquement qu’une marque communautaire qui comprend ou qui est composée de l’AOP/IGP doive être refusée: cela dépendra du contenu et de la portée des dispositions pertinentes de l’accord.
L’indication géographique est protégée en vertu d’un accord international signé par les seuls États membres
La protection des indications géographiques en vertu des accords entre deux États membres est exclue par le règlement actuel de l’UE sur les AOP/IGP pour les produits agricoles and denrées alimentaires (voir l’arrêt du 8 septembre 2009, C-478/07, «Bud»). De tels accords sont redondants et n’ont pas d’effet juridique.
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En ce qui concerne les accords internationaux signés exclusivement par des États membres avec des pays tiers (notamment l’arrangement de Lisbonne concernant la protection des appellations d’origine et leur enregistrement international), et aux seules fins de l’examen des motifs absolus de refus, l’UE n’est pas partie contractante à ces accords et ils n’imposent aucune obligation à l’UE (voir, par analogie, l’arrêt du 14 octobre 1980, 812/79, point 9).
2.11 Marques communautaires collectives
2.11.1 Caractère des marques collectives
Une marque communautaire collective est un type de marque communautaire spécifique qui, aux termes de l’article 66, paragraphe 1, du RMC, inclut «les marques communautaires ainsi désignées lors du dépôt et propres à distinguer les produits ou les services des membres de l’association qui en est le titulaire de ceux d'autres entreprises».
Une marque communautaire collective vise à distinguer les produits et les services des membres de l’association qui sont titulaires de la marque de ceux d’autres entreprises qui ne sont pas membres de cette association. La marque communautaire collective indique donc la provenance commerciale de certains produits et services en informant le consommateur de ce que le fabricant des produits ou le prestataire des services est membre d’une association donnée et qu’il est autorisé à utiliser la marque en question.
La marque communautaire collective est généralement utilisée par des sociétés, en complément de leurs propres marques individuelles, pour indiquer qu’elles sont membres d’une association donnée. À titre d’exemple, l’association espagnole des fabricants de chaussures peut demander l’enregistrement de la marque collective «Asociación Española de Fabricantes de Calzado», laquelle, bien qu’appartenant à ladite association, sera utilisée par l’ensemble de ses membres. Un membre de l’association peut souhaiter utiliser la marque collective en complément de sa propre marque individuelle, «Calzados Luis», par exemple.
Les marques collectives ne garantissent pas nécessairement la qualité des produits, bien que ce soit parfois le cas. À titre d’exemple, les règlements d’usage contiennent fréquemment des dispositions visant à garantir la qualité des produits et des services des membres de l’association, ce qui est acceptable (voir la décision R 1007/2011-2, du 10 mai 2012, point 13).
Il incombe au demandeur de décider si la marque satisfait aux exigences d’une marque collective ou d’une marque individuelle. Cela signifie qu’en principe, le même signe pourrait faire l’objet d’une demande d’enregistrement en tant que marque communautaire individuelle ou, si les conditions décrites au présent chapitre sont réunies, d’une demande d’enregistrement en tant que marque communautaire collective. Les différences entre les marques individuelles et collectives ne dépendent pas des signes à proprement parler, mais plutôt d’autres caractéristiques, telles que la propriété ou les conditions d’usage de la marque.
Par exemple, une association peut déposer une demande d’enregistrement pour la marque verbale «Tamaki», soit en tant que marque individuelle, soit en tant que marque collective, selon l’usage de la marque envisagé (uniquement par l’association elle-même ou également par les membres de celle-ci). Si la demande d’enregistrement concerne une marque communautaire collective, certaines formalités supplémentaires doivent être accomplies, notamment la production des règlements d’usage.
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Une fois la demande déposée, la nature de la marque peut être modifiée (il est ainsi possible de passer d’une marque collective à une marque individuelle, ou inversement) mais dans certaines circonstances uniquement (voir les Directives, Partie B, Examen, section 2, Examen des formalités, paragraphe 8.2.5).
Sauf dispositions contraires des articles 67 à 74 du RMC, les dispositions du RMC s’appliquent aux marques communautaires collectives. Ces dernières sont donc soumises, d’une part, au régime général du RMC et, d’autre part, à certaines exceptions et conditions particulières.
Il en découle, en premier lieu, qu’une marque communautaire collective est généralement soumise à la même procédure d’examen et aux mêmes conditions que les marques individuelles. D’une manière générale, la classification des produits et services ainsi que l’examen des formalités et des motifs absolus de refus suivent la même procédure que celle appliquée aux marques individuelles.
Les examinateurs vérifieront par exemple la liste des produits et services ou les exigences linguistiques de la même manière que lorsqu’ils examinent des marques individuelles. De même, ils examineront si la marque communautaire collective est concernée par l’un des motifs absolus de refus visés à l’article 7 du RMC.
Les règlements fournis par le demandeur qui régissent l’utilisation de sa marque communautaire collective doivent couvrir l’utilisation qu’il en fait pour l’ensemble des produits et services inclus dans la liste de la demande de marque communautaire collective. Pour ce faire, il peut par exemple reproduire la liste de produits et services figurant dans les règlements d’usage ou faire référence à la liste de produits et services de la demande de marque communautaire collective.
S’agissant des marques communautaires collectives entrant en conflit avec des IGP/AOP, les règlements régissant l’utilisation d’une marque communautaire collective doivent refléter de manière adéquate toute restriction introduite en vue de résoudre ces conflits. Par exemple, les règlements d’usage de la marque communautaire collective «XYZ appellation d’origine» pour les «vins» doivent indiquer clairement qu’ils visent l’utilisation de la marque pour des vins satisfaisant à l’appellation d’origine «XYZ».
En deuxième lieu, l’examen d’une marque communautaire collective tiendra compte des exceptions et conditions particulières afférentes à la nature de la marque. Ces exceptions et conditions particulières renvoient aux dispositions matérielles et formelles. En ce qui concerne les formalités, l’obligation de produire des règlements d’usage de la marque constitue, par exemple, une caractéristique spécifique de la marque communautaire collective. (Pour de plus amples détails sur l’examen des formalités des marques communautaires collectives, notamment des règlements d’usage de la marque, voir les Directives, Partie B, Examen, section 2, Examen des formalités, paragraphe 8.2 Marques collectives).
Les exceptions et conditions particulières de fond qui s’appliquent aux marques communautaires collectives sont décrites ci-après.
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2.11.2 Titulaires
Peuvent uniquement être titulaires de marques communautaires collectives (i) les associations de fabricants, de producteurs, de prestataires de services ou de commerçants qui, aux termes de la législation qui leur est applicable, ont la capacité, en leur propre nom, d’être titulaires de droits et d’obligations de toute nature, de passer des contrats ou d’accomplir d’autres actes juridiques et d’ester en justice; de même que (ii) les personnes morales relevant du droit public.
La première catégorie de titulaires regroupe généralement des associations privées partageant un objectif ou un intérêt commun. Elles doivent avoir leur propre personnalité juridique et leur propre capacité d’agir. Partant, des sociétés privées telles que les «sociedades anónimas», «Gesellschaften mit beschränkten Haftung», etc., plusieurs demandeurs ayant une personnalité juridique distincte ou encore des groupements temporaires d’entreprises, ne peuvent être titulaires d’une marque communautaire collective. Ainsi que cela est défini dans les Directives, Partie B, Examen, Section 2, Examen des formalités, paragraphe 8.2.1, «collective ne signifie pas que la marque appartient à plusieurs personnes (codemandeurs/cotitulaires), ni qu'elle désigne ou couvre plus d’un pays».
S’agissant de la deuxième catégorie de titulaires, le concept de «personnes morales relevant du droit public» doit être interprété au sens large. En effet, d’une part, ce concept inclut des associations, corporations et autres entités relevant du droit public. Cela est le cas, par exemple, des «Consejos Reguladores» ou des «Colegios Profesionales» en droit espagnol. Mais il inclut également d’autres personnes morales relevant du droit public, telles que l’Union européenne, les États ou les municipalités, qui ne présentent pas nécessairement une structure corporative ou associative mais peuvent néanmoins être titulaires de marques communautaires collectives. En pareilles circonstances, l’exigence relative aux conditions d’affiliation visée à l’article 67, paragraphe 2, du RMC, ne s’applique pas (voir la décision R 828/2011-1 du 22 novembre 2011, point 18, et la décision R 1007/2011-2 du 10 mai 2012, points 17 et 18). En d’autres termes, lorsque le demandeur d’une marque communautaire collective est une personne morale de droit public ne présentant pas nécessairement une structure corporative ou associative, ce qui est le cas de l’Union européenne, d’un État ou d’une municipalité par exemple, il n’est pas nécessaire que les règlements d’usage de la marque comportent des dispositions relatives à l’affiliation.
2.11.3 Dispositions particulières concernant les motifs absolus de refus
Les motifs absolus de refus visés à l’article 7, paragraphe 1, du RMC s’appliquent aux marques communautaires collectives. Cela signifie que ces marques seront tout d’abord examinées au regard de ces dispositions dans le but de déterminer, par exemple, si elles disposent ou non d’un caractère distinctif, si elles sont de nature trompeuse ou si elles sont devenues des signes usuels. S’il s’avère, par exemple, qu’une marque est dépourvue de caractère distinctif intrinsèque en vertu de l’article 7, paragraphe 1, point b), du RMC, elle sera refusée à l’enregistrement (voir la décision R 229/2006-4 du 18 juillet 2008, paragraphe 7).
Certaines exceptions et conditions particulières doivent néanmoins également être prises en considération lors de l’examen des motifs absolus de refus des marques communautaires collectives. Outre les motifs de refus d’une demande d’enregistrement de marque communautaire visés à l’article 7, paragraphe 1, du RMC, les examinateurs évaluent également les motifs spécifiques suivants:
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la nature descriptive des signes; le caractère trompeur des signes; les règlements d’usage contraires à l’ordre public et aux bonnes mœurs.
Des tierces parties peuvent également présenter des observations au sujet de ces motifs spécifiques de refus.
2.11.3.1 Nature descriptive des signes
Peuvent constituer des marques communautaires collectives les signes ou indications pouvant servir, dans le commerce, à désigner la provenance géographique des produits ou des services (voir les arrêts T-295/01 du 15 octobre 2003, point 32, et T-379/03 du 25 octobre 2005, point 35).
En conséquence, un signe qui décrit exclusivement la provenance géographique des produits ou services (et qui doit être refusé à l’enregistrement s'il concerne une demande d'enregistrement en tant que marque communautaire individuelle) peut être accepté s'il (i) fait l’objet d’une demande d’enregistrement en tant que marque communautaire collective en bonne et due forme et s’il (ii) est conforme à l’autorisation prévue à l’article 67, paragraphe 2, du RMC (voir la décision R 280/2006-1 du 5 octobre 2006, points 16 et 17).
Conformément à cette disposition, les règlements d’usage d’une marque communautaire collective possédant un caractère descriptif doivent autoriser toute personne dont les produits ou services proviennent de la région géographique concernée à devenir membre de l’association titulaire de la marque.
À titre d’exemple, toute demande d’enregistrement de la marque verbale «Alicante» pour désigner des services touristiques doit être rejetée en vertu de l’article 7, paragraphe 1, point c), du RMC si elle concerne une demande de marque communautaire individuelle dans la mesure où elle décrit la provenance géographique des services. Toutefois, à titre d’exception, si elle concerne une demande d’enregistrement de marque communautaire collective déposée en bonne et due forme (en d’autres termes, si la demande a été déposée par une association ou une personne morale relevant du droit public et qu’elle satisfait aux autres exigences applicables aux marques communautaires collectives) et que les règlements d’usage de la marque incluent l’autorisation prévue à l’article 67, paragraphe 2, du RMC, elle sera acceptée en vertu de l’article 7, paragraphe 1, point c), du RMC.
Cette exception s’applique exclusivement aux signes qui sont descriptifs de la provenance géographique des produits et des services. Si la marque communautaire collective décrit d’autres caractéristiques des produits ou services, cette exception ne s’applique pas et la demande d’enregistrement est rejetée en vertu de l’article 7, paragraphe 1, point c), du RMC.
Par exemple, si la marque verbale «Do-it-yourself» fait l’objet d’une demande d’enregistrement en tant que marque communautaire collective pour désigner des outils relevant de la classe 7, elle sera considérée comme descriptive de la destination des produits. Dans la mesure où le signe décrit certaines caractéristiques des produits, autres que leur provenance géographique, il sera refusé à l’enregistrement en vertu de l’article 7, paragraphe 1, point c), du RMC, bien que sa demande d’enregistrement concerne une marque communautaire collective (voir la décision R 934/2010-1 du 8 juillet 2010, point 35).
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2.11.3.2 Caractère trompeur
L’examinateur doit refuser la demande lorsque le public risque d’être induit en erreur sur le caractère ou la signification de la marque, notamment lorsqu’elle est susceptible d’être prise pour autre chose qu’une marque collective.
Une marque collective, uniquement disponible pour les membres de l’association titulaire de la marque, est potentiellement trompeuse si elle donne l’impression de pouvoir être utilisée par toute personne capable de répondre à certaines normes objectives.
2.13.3.3 Règlements d’usage contraires à l’ordre public et aux bonnes mœurs
Si les règlements d’usage de la marque sont contraires à l’ordre public ou aux bonnes mœurs, la demande d’enregistrement en tant que marque communautaire collective doit être rejetée.
Il y a lieu de distinguer ce motif de refus de celui visé à l’article 7, paragraphe 1, point f), du RMC, qui interdit l’enregistrement des marques qui sont contraires à l’ordre public ou aux bonnes mœurs.
Le rejet prévu à l’article 68, paragraphe 1, du RMC fait référence à des situations dans lesquelles, quelle que soit la marque considérée, les règlements d’usage de la marque incluent une disposition qui est contraire à l’ordre public ou aux bonnes mœurs, par exemple, des règles discriminatoires fondées sur des motifs d’ordre sexuel, religieux ou racial. Par exemple, si les règlements incluent une clause interdisant aux femmes d’utiliser la marque, la demande de marque communautaire collective sera rejetée, même si la marque ne relève pas du champ d’application de l’article 7, paragraphe 1, point f), du RMC.
L’objection de l’examinateur peut être levée si les règlements sont modifiés de façon à supprimer la disposition litigieuse. Pour reprendre l'exemple précité, la demande d’enregistrement en tant que marque communautaire collective ne sera acceptée que si la clause interdisant aux femmes d’utiliser la marque est supprimée des règlements.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 3
DÉPÔT NON AUTORISÉ PAR LES AGENTS DU TITULAIRE DE LA
MARQUE (article 8, paragraphe 3, du RMC)
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Table des matières
1 Remarques préliminaires.......................................................................... 3 1.1 Origine de l’article 8, paragraphe 3, du RMC............................................3 1.2 Objet de l’article 8, paragraphe 3, du RMC ............................................... 4
2 Qualité de l’opposant ................................................................................ 4
3 Domaine d’application .............................................................................. 5 3.1 Types de marque visées ............................................................................5 3.2 Origine de la marque antérieure................................................................ 6
4 Conditions d’application........................................................................... 7 4.1 La qualité d’agent ou de représentant ...................................................... 8
4.1.1 Nature de la relation ....................................................................................... 8 4.1.2 Forme de l’accord ......................................................................................... 10 4.1.3 Champ d’application territorial de l’accord ................................................... 11 4.1.4 Dates à prendre en considération ................................................................ 12
4.2 Demande présentée au nom de l’agent .................................................. 13 4.3 Demande présentée sans le consentement du titulaire......................... 15 4.4 Absence de justification de la part du demandeur ................................ 17 4.5 Applicabilité en l’absence d’identité des signes – produits ou
services..................................................................................................... 19
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1 Remarques préliminaires
Selon l’article 8, paragraphe 3, point b), du RMC, sur opposition du titulaire d’une marque antérieure, une marque est refusée à l’enregistrement:
«lorsqu’elle est demandée par l’agent ou le représentant du titulaire de la marque, en son propre nom et sans le consentement du titulaire, à moins que cet agent ou ce représentant ne justifie de ses agissements.»
1.1 Origine de l’article 8, paragraphe 3, du RMC
L’article 8, paragraphe 3, du RMC tire son origine de l’article 6 septies de la convention de Paris, qui fut inséré dans ladite convention en 1958 lors de sa révision dans le cadre de la conférence de Lisbonne. La protection qu’il confère aux titulaires de marques leur permet d’empêcher, d’annuler ou de revendiquer à leur profit les enregistrements de marques leur appartenant lorsqu’ils sont effectués sans autorisation par leurs agents ou représentants, et aussi d’interdire l’utilisation de ces enregistrements lorsque l’agent ou le représentant ne peut justifier de ses agissements. L’article 6 septies est rédigé comme suit:
(1) Si l’agent ou le représentant de celui qui est titulaire d’une marque dans un des pays de l’Union demande, sans l’autorisation de ce titulaire, l’enregistrement de cette marque en son propre nom, dans un ou plusieurs de ces pays, le titulaire aura le droit de s’opposer à l’enregistrement demandé ou de réclamer l’annulation ou, si la loi du pays le permet, le transfert à son profit dudit enregistrement, à moins que cet agent ou représentant ne justifie de ses agissements.
(2) Le titulaire de la marque aura, sous les réserves de l’alinéa 1) ci- dessus, le droit de s’opposer à l’utilisation de sa marque par son agent ou représentant, s’il n’a pas autorisé cette utilisation.
(3) Les législations nationales ont la faculté de prévoir un délai équitable dans lequel le titulaire d’une marque devra faire valoir les droits prévus au présent article.
L’article 8, paragraphe 3, du RMC ne reprend cette disposition que dans la mesure où elle donne au titulaire légitime le droit de s’opposer aux demandes déposées sans son autorisation. Les autres éléments de l’article 6 septies de la convention de Paris figurent à l’article 11, à l’article 18 et à l’article 52, paragraphe 1, point b), du RMC. L’article 53, paragraphe 1, point b), du RMC donne au titulaire le droit de présenter une demande en nullité des enregistrements non autorisés, tandis que les articles 11 et 18 lui permettent d’en interdire l’utilisation et/ou de réclamer le transfert de l’enregistrement à son profit.
Étant donné qu’aux termes de l’article 41 du RMC, une opposition ne peut être formée que pour les motifs prévus à l’article 8, les droits supplémentaires conférés au titulaire par les dispositions ci-dessus ne peuvent être invoqués dans les procédures d’opposition. Toute demande présentée par l’opposant, soit en vue d’interdire l’utilisation de la marque de l’agent, soit en vue d’un transfert à son profit de la demande d’enregistrement, sera donc rejetée pour irrecevabilité.
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1.2 Objet de l’article 8, paragraphe 3, du RMC
Le dépôt non autorisé de la marque du titulaire par son agent ou son représentant est contraire à l’obligation générale de confiance sous-jacente aux accords de coopération commerciale de ce type. Un tel détournement de la marque du titulaire nuit particulièrement à ses intérêts commerciaux, puisque le demandeur sera en mesure d’exploiter les connaissances et l’expérience acquises lors de sa relation commerciale avec le titulaire et ainsi de tirer indûment profit des efforts et de l’investissement du titulaire (confirmé par l’arrêt du 6 septembre 2006, T-6/05, «First Defense (I)», point 38 et références ultérieures, entre autres, aux décisions de la chambre de recours du 16/05/2011, R 0085/2010-4 «Lingham», paragraphe 14, du 3/08/2010, R 1231/2009-2, «Berik», paragraphe 24 et du 30/09/2009, R 1547/2006 - 4, «Powerball», paragraphe 17).
L’article 8, paragraphe 3, du RMC a donc pour objet de sauvegarder les intérêts légitimes des titulaires de marques et de les préserver de toute usurpation arbitraire de leurs marques, en leur accordant le droit d’interdire les enregistrements demandés par leurs agents ou représentants sans leur consentement.
L’article 8, paragraphe 3, du RMC procède du principe que les transactions commerciales doivent être conduites de bonne foi. L’article 52, paragraphe 1, point b), du RMC, qui permet de déclarer la nullité d’une marque communautaire au motif que le demandeur a agi de mauvaise foi, pose expressément ce principe, d’une façon générale.
Toutefois, la protection accordée par l’article 8, paragraphe 3, du RMC est plus étroite que celle prévue à l’article 52, paragraphe 1, point b), du RMC, car l’applicabilité de l’article 8, paragraphe 3, du RMC suppose le respect d’un certain nombre de conditions supplémentaires énoncées dans cette disposition.
Dès lors, le fait que le demandeur ait déposé la demande de mauvaise foi n’est pas suffisant, en soi, aux fins de l’article 8, paragraphe 3. Ainsi, l’opposition sera rejetée si, bien qu’étant exclusivement fondée sur la mauvaise foi du demandeur, elle ne remplit pas les conditions cumulatives requises par l’article 8, paragraphe 3, du RMC (énoncées à la section IV ci-dessous). Un tel dépôt ne peut être sanctionné qu’en vertu de l’article 52, paragraphe 1, point b), sur présentation d’une demande d’annulation de la marque après son enregistrement.
2 Qualité de l’opposant
Conformément à l’article 41, paragraphe 1, point b), du RMC, seuls les titulaires de marques antérieures peuvent former une opposition fondée sur l’article 8, paragraphe 3. Cette disposition contraste tant avec l’article 41, article 1, point a), du RMC, qui stipule que l’opposition fondée sur l’article 8, paragraphe 1, du RMC ou sur l’article 8, paragraphe 5, du RMC peut également être formée par les licenciés autorisés, qu’avec l’article 41, paragraphe 1, point c), du RMC, qui prévoit qu’en cas d’opposition fondée sur l’article 8, paragraphe 4, du RMC le droit de former une opposition est également accordé aux personnes autorisées, en vertu du droit national à exercer les droits concernés.
Dès lors, étant donné que le droit de s’opposer à une demande de marque communautaire sur le fondement de l’article 8, paragraphe 3, du RMC est accordé exclusivement aux titulaires des marques antérieures, toute opposition formée au nom
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de tiers, qu’il s’agisse de licenciés ou de personnes autrement autorisées en vertu des droits nationaux applicables, sera rejetée pour irrecevabilité, les tiers n’ayant pas qualité pour agir.
Affaire n° Remarque
Décision du 30/09/2009, R 1547/2006-4 «Powerball » (confirmée par l’arrêt du 16/11/2011, T-484/09, «Powerball»)
La chambre a confirmé la décision de la division d’opposition qui rejetait l’opposition fondée sur l’article 8, paragraphe 3, du RMC, dans la mesure où l’opposant n’était pas le titulaire du droit antérieur, mais se prétendait simplement être le licencié de l’entreprise Nanosecond Technology Co. Ltd.
Décision du 14/06/2010, R 1795/2008-4 «Powerball » (en appel, arrêt du 3/10/2012, T-360/10, «ZAPPER-CLICK»)
Le défendeur a manqué de répondre à la condition concernant la propriété de la marque, à savoir de la propriété de la marque enregistrée ZAPPER-CLICK. En appel, le Tribunal n’a pas abordé ce point.
De même, si l’opposant n’apporte pas la preuve qu’il était le titulaire légitime de la marque lorsque l’opposition a été formée, l’opposition sera rejetée sans examen au fond, au motif qu’elle n’est pas fondée. Les preuves requises dans chaque cas d’espèce dépendent de la nature du droit invoqué. Le titulaire actuel peut aussi invoquer les droits du titulaire précédent lorsque l’accord d’agence/de représentation a été conclu entre ce dernier et le demandeur, mais ceci doit être dûment étayé par des preuves.
3 Domaine d’application
3.1 Types de marque visés
L’article 8, paragraphe 3, du RMC s’applique aux «marques» antérieures qui ont fait l’objet d’une demande de marque communautaire sans le consentement de leur titulaire. Toutefois, l’article 8, paragraphe 2, du RMC ne s’applique pas en cas d’opposition fondée sur ce motif, puisqu’il n’énumère que les droits antérieurs sur lesquels une opposition peut être basée en vertu des paragraphes 1 et 5 dudit article. Il convient donc de déterminer plus précisément les types de droits pour lesquels une opposition fondée sur l’article 8, paragraphe 3, du RMC peut être formée, tant eu égard à leur nature qu’en ce qui concerne leur origine géographique.
À défaut de toute restriction dans l’article 8, paragraphe 3, du RMC et compte tenu de la nécessité de protéger efficacement les intérêts légitimes du véritable titulaire, le terme «marques» doit être interprété au sens large et il convient de considérer qu’il englobe également les demandes en cours d’examen, puisque rien dans cette disposition ne permet d’en restreindre le champ d’application aux seules marques enregistrées.
Pour les mêmes raisons, les marques non enregistrées ou les marques notoirement connues au sens de l’article 6 bis de la convention de Paris entrent également dans la définition du mot «marques» aux fins de l’article 8, paragraphe 3, du RMC. Cette disposition vise donc tant les marques enregistrées que les marques non enregistrées, dans la mesure, bien entendu, où le droit du pays d’origine admet les droits afférents à ces dernières.
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En revanche, la référence expresse aux «marques» signifie que l’article 8, paragraphe 3, du RMC ne s’applique pas aux simples signes utilisés dans la vie des affaires, exception faite des marques non enregistrées. De même, les autres types de droits de propriété intellectuelle qui sont susceptibles de justifier une action en nullité ne peuvent pas, eux non plus, être invoqués dans le cadre de l’article 8, paragraphe 3, du RMC.
Affaire n° Remarque
Décision du 8/06/2010, B 1 461 948 «Gu Tong Tie Gao»
Comme l’article 8, paragraphe 3, se réfère uniquement aux marques antérieures, les éléments de preuve déposés par l’opposant relatifs aux droits en matière de législation concernant les droits d’auteur sur le territoire de la Chine n’étaient pas pertinents. Il s’agit d’un autre type de droit de propriété intellectuelle qui est exclu en raison de la référence expresse dans l’article aux «marques».
Il ressort clairement du libellé de l’article 8, paragraphe 3, du RMC que la marque sur laquelle l’opposition est basée doit être antérieure à la demande de marque communautaire. Dès lors, la date à prendre en considération est la date de dépôt ou de priorité de la demande contestée. Les règles à appliquer pour déterminer la priorité dépendent du type de droit invoqué. Si le droit antérieur a été acquis par l’enregistrement, il faut tenir compte de la date de priorité pour apprécier s’il est antérieur à la demande, tandis que s’il s’agit d’un droit basé sur l’usage, son acquisition doit être antérieure à la date de dépôt de la demande de marque communautaire. Dans le cas de marques antérieures notoirement connues, il faut que la marque ait acquis sa notoriété avant la demande de marque communautaire.
Affaire n° Remarque
Décision du 21/12/2009, R 1621/2006 - 4, «D-Raintank»
La chambre a relevé qu’en 2003, les demandes de marques déposées par le demandeur en annulation étaient toutes postérieures à la date de dépôt de la marque communautaire contestée et étaient même postérieures à sa date d’enregistrement, et ne pouvaient pas servir à établir que le demandeur en annulation possédait une «marque» dans le sens d’une marque enregistrée, où que ce soit dans le monde, pour le signe en cause au moment du dépôt de la marque communautaire. Elle a poursuivi en affirmant que «Évidemment, personne ne peut fonder une réclamation sur des motifs relatifs de refus ou de nullité sur des droits qui sont antérieurs à la marque communautaire contestée» (paragraphe 53).
Décision du 19/06/1999, B 3 436, «NORAXON»
La période à prendre en considération afin de déterminer l’applicabilité de l’article 8, paragraphe 3, du RMC débute à la date à laquelle la demande de marque communautaire en question est entrée en vigueur, c’est-à-dire le 26 octobre 1995. Il s’agissait là de la date de priorité en Allemagne, revendiquée par le demandeur, accordée par l’Office et publiée par la suite, et non de la date de dépôt de la demande de marque communautaire auprès de l’Office.
3.2 Origine de la marque antérieure
L’étendue territoriale de la protection accordée à l’article 8, paragraphe 3, du RMC ne saurait être définie en se référant à l’article 8, paragraphe 2, puisque ce dernier ne s’applique pas en cas d’opposition fondée sur l’article 8, paragraphe 3, du RMC. Étant donné que l’article 8, paragraphe 3, du RMC ne contient aucune autre référence à un «territoire concerné», il est indifférent que les droits afférents à la marque antérieure s’appliquent ou non dans l’Union européenne.
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L’importance pratique de cette disposition tient précisément au fait qu’elle confère aux titulaires de droits applicables à l’extérieur de l’Union européenne la capacité juridique de défendre ces droits en cas de dépôts frauduleux, dans la mesure où les titulaires de droits applicables au sein de l’Union européenne peuvent s’appuyer sur les autres motifs prévus à l’article 8 du RMC pour préserver leurs droits antérieurs d’agissements de ce type. Bien entendu, les marques communautaires ou les marques nationales, sur lesquelles l’opposition peut être basée en vertu de l’article 8 du RMC, figurent également parmi les marques antérieures qui peuvent être invoquées pour justifier une opposition fondée sur l’article 8, paragraphe 3, du RMC.
Affaire n° Remarque
Décision du 19/12/2006, B 715 146, «Squirt»
Aux fins de l’article 8, paragraphe 3, il importe peu de savoir où dans le monde les droits de propriété sont détenus. En effet, si dans la convention de Paris la propriété dans un pays membre de l’Union de Paris est obligatoire, en l’absence de toute référence dans le RMC à quelque territoire que ce soit dans lequel une telle propriété doit exister, il faut en conclure qu’il suffit que l’opposant observe les conditions de l’article 5 du RMC concernant les «personnes qui peuvent être titulaires de marques communautaires». En l’espèce, l’opposant a respecté cette condition, s’agissant d’une société basée aux Etats-Unis.
Décision du 10/01/2011, 3253-C, «MUSASHI» (marque figurative) Procédure d’annulation
Le fait que les enregistrements antérieurs venaient de pays non membres de l’UE n’a aucune incidence sur le motif de nullité en cause, puisqu’en imposant cette condition territoriale, l’article 8, paragraphe 2, du RMC, ne s’applique pas aux procédures fondées sur l’article 8, paragraphe 3, du RMC et ne peut pas servir à définir l’étendue territoriale de la protection accordée par cet article. «En l’absence de toute référence à un "territoire concerné" à l’article 8, paragraphe 3, du RMC, la division d’annulation doit présumer que les marques antérieures enregistrées dans des pays hors de l’UE peuvent constituer la base d’une demande de nullité fondée sur l’article 8, paragraphe 3, du RMC» (paragraphe 33).
Décision du 26/01/2012, R 1956/2010-1 «Heatstrip» (confirmée par T-184/12)
L’opposition était fondée sur une marque non enregistrée protégée, notamment, en Australie. La chambre a estimé que les preuves présentées par l’opposant confirment qu’il a utilisé la marque en Australie dans une large mesure (paragraphes 3 et 34 respectivement).
Décision du 19/05/2011, R 0085/2010-4 «Lingham’s» (marque figurative)
L’opposition était fondée sur une marque enregistrée, protégée en Malaisie. En présentant le certificat d’enregistrement de Malaisie, il a été prouvé que l’opposant est bien le titulaire de la marque malaisienne.
4 Conditions d’application
L’article 8, paragraphe 3, du RMC autorise les titulaires de marques à s’opposer à l’enregistrement de leurs marques en tant que marques communautaires sous réserve que les conditions de fond cumulatives ci-après soient remplies: (voir l’arrêt du 13/04/2011, T-262/09, «First Defense» (II), point 61):
1. le demandeur est ou était l’agent ou le représentant du titulaire de la marque; 2. la demande est formulée au nom de l’agent ou du représentant; 3. la demande a été déposée sans le consentement du titulaire; 4. l’agent ou le représentant ne justifie pas de ses agissements;
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5. les signes sont identiques ou présentent de légères modifications et les produits et services sont identiques ou étroitement liés.
4.1 La qualité d’agent ou de représentant
4.1.1 Nature de la relation
Étant donné l’objet de cette disposition, qui est de protéger les intérêts juridiques des titulaires de marques contre le risque de détournement de leurs marques par des associés commerciaux, les termes «agent» et «représentant» doivent être interprétés au sens large, de façon à couvrir toutes les formes de relations basées sur un accord contractuel (régi par un contrat écrit ou oral) aux termes duquel l’une des parties représente les intérêts de l’autre, et ce indépendamment du nomen juris de la relation contractuelle établie entre le titulaire/mandant et le demandeur de la marque communautaire (ce que confirme l’arrêt du 13/04/2011, T-262/09 «First Defense» (II), point 64).
Dès lors, il suffit, aux fins de l’article 8, paragraphe 3, du RMC, qu’il existe entre les parties un accord de coopération commerciale de nature à créer une relation fiduciaire en imposant au demandeur, expressément ou implicitement, une obligation générale de confiance et de loyauté vis-à-vis des intérêts du titulaire de la marque. Il s’ensuit que l’article 8, paragraphe 3, peut aussi s’appliquer, par exemple, aux licenciés du titulaire, ou aux distributeurs agréés des produits pour lesquels la marque en cause est utilisée. La charge de la preuve quant à l’existence d’une relation agent-mandant incombe à l’opposant (ce que confirme l’arrêt du 13/04/2011, T- 262/09 «First Defense» (II), points 64 et 67).
Affaire n° Remarque
Arrêt du 9/07/2014, T-184/12, «Heatstrip»
La chambre de recours a conclu que, même s’il n’existait aucun accord de coopération écrit entre les parties, leur relation à la date de la demande de la marque communautaire allait, compte tenu de la correspondance commerciale entre elles, au-delà d’une simple relation d’acheteur à vendeur. Il existait, plutôt, un accord tacite de coopération qui engendrait une obligation fiduciaire de la part du demandeur de la marque communautaire (point 67).
Décision du 29/02/2012, B 1 818 791, «HOVERCAM» (marque figurative)
La division d’opposition a estimé que les preuves présentées par l’opposant montraient que la relation et son but ultime constituaient un exemple de coopération commerciale, qui imposait au demandeur une obligation générale de confiance et de fidélité et qui relevait du type de relation prévu par l’article 8, paragraphe 3, du RMC (paragraphe 5).
Compte tenu de la diversité des formes que peuvent revêtir, en pratique, les relations commerciales, une approche au cas par cas est adoptée, l’essentiel étant de déterminer si le lien contractuel existant entre le titulaire/opposant et le demandeur est seulement limité à une série d’opérations ponctuelles ou si, à l’inverse, ce lien est d’une durée et d’une nature telles qu’il peut justifier l’application de l’article 8, paragraphe 3 (concernant les dates à prendre en considération, voir le paragraphe 4.1.4 ci-dessous). Il importe de savoir si c’est la coopération avec le titulaire qui a permis au demandeur de connaître et d’apprécier la valeur de la marque et qui l’a incité à tenter par la suite de l’enregistrer en son propre nom.
Cependant, il faut qu’il existe un accord de coopération entre les parties. Si le demandeur agit en toute indépendance, sans qu’aucune relation n’ait été établie avec
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le titulaire, il ne peut être considéré comme un agent au sens de l’article 8, paragraphe 3 (ce que confirme l’arrêt du 13/04/2011, T-262/09 «First Defense» (II), point 64).
Affaire n° Remarque
Décision du 16/06/2011, 4103 C, «D’Angelico» (marque figurative) Procédure d’annulation.
La Division d’annulation a considéré que plutôt qu’une relation avec un agent ou un représentant, au moment du dépôt de la MC, les parties jouissaient de droits indépendants et parallèles sur les marques aux États-Unis et au Japon. C’est pourquoi l’article 8, paragraphe 3, du RMC n’était pas applicable.
Affaire n° Remarque
Décision du 17/03/2000, B 26 759 «EAST SIDE MARIO’S»
Un simple souhait d’établir une relation commerciale avec l’opposante ne peut être considéré comme un accord conclu entre les parties concernant l’usage de la marque contestée.
Ainsi, un simple acheteur ou client du titulaire ne saurait être considéré comme un «agent» ou un «représentant» aux fins de l’article 8, paragraphe 3, puisque ces personnes n’ont aucune obligation particulière de confiance vis-à-vis du titulaire de la marque.
Affaire n° Remarque
Jugement du 13/04/2011, T-262/09, «First Defense» (II)
L’opposante n’a produit aucun élément de preuve démontrant l’existence d’une relation agent-mandant. L’opposante a produit des factures et des bons de commande adressés à elle-même, au motif que l’existence d’un accord commercial entre les parties pourrait, en d’autres circonstances, être envisagé. Cependant, en l’espèce, le Tribunal a conclu que les éléments de preuve ne démontrent pas que le demandeur ait agi pour le compte de l’opposante, mais simplement qu’il existait une relation vendeur-client qui pouvait avoir été établie sans accord préalable entre eux. Une telle relation ne suffit pas pour que s’applique l’article 8, paragraphe 3, du RMC (para. 67).
Décision du seller-customer «FUSION» (marque figurative)
L’Office a considéré que les preuves du type relation commerciale entre l’opposante et le demandeur n’étaient pas concluantes ; c’est-à-dire qu’il était impossible de déterminer si le demandeur était réellement un agent ou un représentant, ou un simple acheteur des produits de l’opposante. Par conséquent, l’Office n’a pas été en mesure de justifier l’application de l’article 8, paragraphe 3, du RMC.
Peu importe, aux fins de l’article 8, paragraphe 3, qu’il existe entre les parties un accord exclusif ou seulement une simple relation commerciale non exclusive. En effet, un accord de coopération commerciale comportant une obligation de loyauté peut parfaitement exister en l’absence d’une clause d’exclusivité (voir l’arrêt du 9 juillet 2014, T-184/12, «Heatstrip», point 69).
L’article 8, paragraphe 3, s’applique également aux formes analogues de relations d’affaires qui donnent naissance à une obligation de confiance et de confidentialité entre le titulaire de la marque et le professionnel, comme c’est le cas pour les gens de loi et les avocats, consultants, agents spécialistes des marques, etc. Toutefois, le représentant ou gestionnaire légal de la société de l’opposante ne peut pas être considéré comme un agent ou représentant au sens de l’article 8, paragraphe 3, du
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RMC, étant donné que ces personnes ne sont pas des associés de l’opposante. Cette disposition ne vise pas à protéger la titulaire d’actes délictueux provenant de cette société. Il est possible que de tels actes puissent être sanctionnés par la disposition générale sur la bonne foi de l’article 52, paragraphe 1, point b, du RMC.
Affaire n° Remarque
Décision du 20/03/2000, B 126 633 «Harpoon» (marque figurative)
En l’espèce, le demandeur était un représentant légal de la société de l’opposante. L’opposition a été rejetée.
4.1.2 Forme de l’accord
Il n’est pas nécessaire que l’accord conclu entre les parties revête la forme d’un contrat écrit. Certes, l’existence d’un accord formel entre les parties sera très utile pour déterminer précisément quel type de relation existe entre elles. Comme indiqué ci- dessus, le titre de l’accord et la terminologie employée par les parties n’ont aucun caractère probant. Ce qui compte, c’est le type de coopération commerciale instaurée en substance, et non sa description formelle.
À défaut de contrat écrit, il n’est pas exclu que l’existence d’un accord commercial conforme aux dispositions de l’article 8, paragraphe 3, du RMC puisse néanmoins être présumée sur la base de preuves et d’indications indirectes, telles que la correspondance commerciale échangée entre les parties, les factures et les commandes d’achat relatives aux produits vendus à l’agent, ou les notes de crédit et autres instruments bancaires (toujours en gardant à l’esprit qu’une simple relation client ne satisfait pas pour répondre à l’article 8, paragraphe 3, du RMC). Les accords conclus en vue de résoudre un litige peuvent aussi être pertinents, dans la mesure où ils fournissent des informations suffisantes sur les relations antérieures des parties.
Affaire n° Remarque
Décision du 7/07/2003, R 336/2001-2 «GORDON and SMITH» (marque figurative)
La division d’opposition a eu raison de conclure qu’il existait une relation d’agence entre le demandeur et les opposants, en s’appuyant sur la correspondance qui indiquait que les deux parties entretenaient une relation commerciale étroite et de longue date. La société requérante agissait en tant que distributeur des produits de l’opposant (paragraphe 19).
Par ailleurs, les circonstances telles que les objectifs de ventes imposés au demandeur, le versement de redevances, la fabrication des produits désignés par la marque sous licence ou l’assistance fournie pour la création d’un réseau de distribution local, constituent des arguments de poids en faveur de l’existence d’une relation commerciale conforme aux dispositions de l’article 8, paragraphe 3, du RMC.
Le Tribunal a également considéré qu’une coopération active entre un demandeur de marque communautaire et un opposant dans la publicité d’un produit, afin d’en optimiser la commercialisation, pouvait établir la relation fiduciaire requise au titre de l’article 8, paragraphe 3, du RMC.
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Affaire n° Remarque
Décision du 26/01/2012, R 1956/2010-1 «Heatstrip» (confirmée par T-184/12)
Le Tribunal a confirmé les conclusions de la chambre qui a estimé qu’il était possible d’établir l’existence d’une relation contractuelle juridiquement contraignante en se reportant à la correspondance commerciale échangée par les parties, y compris par courriel. La chambre a ainsi examiné la correspondance par courriel entre les parties pour déterminer ce que chacune des parties demandait de l’autre (paragraphe 50). La chambre en a conclu que les courriels prouvaient que les deux parties coopéraient activement à la promotion du produit, en en faisant la publicité dans des brochures et en le présentant à un salon, afin de créer les meilleures conditions pour la réussite de sa commercialisation: l’opposant fournissait le matériel à ces fins et le demandeur se chargeait de l’adapter au marché allemand (paragraphe 54). La chambre en a donc conclu que la correspondance par courriel dénotait l’existence d’un accord de coopération commerciale entre les parties d’un type qui engendre une relation fiduciaire (paragraphe 56). Le Tribunal a rejeté les arguments du demandeur selon lesquels il n’y avait pas de coopération entre les parties (parce que le demandeur n’était pas intégré dans la structure commerciale de l’opposant, ne faisait pas l’objet d’une clause de non-concurrence et devait supporter les frais de vente et de promotion) et a confirmé la décision de la chambre (point 67 et suivants).
En revanche, le simple souhait du demandeur d’établir une relation commerciale avec l’opposant ne saurait être considéré comme un accord conclu entre les parties. Les agents ou représentants éventuels ne sont pas visés par l’article 8, paragraphe 3, du RMC (voir la décision B 26 759 «East Side Mario’s» susvisée).
4.1.3 Champ d’application territorial de l’accord
Bien que le texte de l’article 8, paragraphe 3, du RMC ne fasse aucune référence au champ d’application territorial de l’accord conclu entre le titulaire de la marque et son agent ou représentant, il convient de lire dans cette disposition une limitation intrinsèque aux relations couvrant l’UE ou une partie de celle-ci.
Cette interprétation est davantage conforme aux considérations d’ordre économique sous-jacentes à l’article 8, paragraphe 3, qui visent à empêcher les agents ou représentants d’exploiter indûment une relation commerciale couvrant un territoire donné en déposant, sans autorisation, une demande concernant la marque de leur mandant précisément dans ce territoire, autrement dit celui dans lequel le demandeur sera le mieux à même de tirer profit des infrastructures et du savoir-faire dont il dispose grâce à sa relation antérieure avec le titulaire Dès lors, étant donné que le dépôt interdit par l’article 8, paragraphe 3, du RMC concerne les demandes présentées en vue d’acquérir des droits afférents aux marques dans l’UE, l’accord doit également concerner le même territoire.
Il convient donc d’interpréter l’intention du législateur sur ce point, en vertu de laquelle l’article 8, paragraphe 3, du RMC ne s’appliquerait qu’aux accords qui couvrent, en totalité ou en partie, le territoire de l’UE. Dans la pratique, il en découle que les accords mondiaux ou paneuropéens sont visés par cette disposition, de même que les accords applicables dans un ou plusieurs États membres ou couvrant une partie seulement de leur territoire, que ces accords couvrent ou non des territoires situés en dehors de l’UE. À l’inverse, les accords qui ne s’appliquent qu’à des territoires situés en dehors de l’UE ne sont pas visés.
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4.1.4 Dates à prendre en considération
Il faut que la relation de représentation ait été établie avant la date de dépôt de la demande de marque communautaire. Peu importe, dès lors, que le demandeur ait entamé des négociations avec l’opposant après cette date ou qu’il ait formulé des propositions unilatérales dans le but de devenir agent ou représentant de cette dernière.
Affaire n° Remarque
Décision du 19/05/2011, R 0085/2010-4 «Lingham’s»
L’opposant a octroyé au demandeur une procuration spéciale consentant au dépôt par le demandeur de demandes de marques. Suite à cette procuration, le demandeur a déposé une marque communautaire. Après le dépôt, l’opposant a révoqué la procuration et a déposé l’opposition.
La chambre a estimé que la date pertinente est la date de dépôt. À ce moment-là, le consentement du titulaire était effectif. La révocation a eu des effets ex nunc (et n’affecte pas la validité des agissements accomplis en vertu de la procuration) et non pas des effets ex tunc (comme si la procuration n’avait jamais existé) (paragraphe 24).
Arrêt du 6/09/2006, T-6/05 «FIRST DEFENSE» (I)
La chambre de recours aurait dû examiner si, le jour de la demande d’enregistrement de la marque, l’intervenant était encore lié par le consentement (paragraphe 50).
Toutefois, même lorsque l’accord entre les parties a été conclu formellement après la date de dépôt de la demande, il n’est pas exclu que l’on puisse déduire des éléments de preuve que les parties étaient déjà engagées dans une forme de coopération commerciale avant la signature du contrat en cause et que le demandeur agissait déjà en qualité d’agent, représentant, distributeur ou licencié de l’opposant.
En revanche, il n’est pas nécessaire que l’accord conclu entre les parties soit toujours en vigueur techniquement lors du dépôt de la demande. La référence à une demande déposée par l’«agent ou le représentant» ne doit pas être interprétée comme une condition de forme qui devrait être remplie à la date du dépôt de la demande de marque communautaire. L’article 8, paragraphe 3, s’applique également aux accords qui ont expiré avant la date de dépôt de la demande de marque communautaire, à condition que le délai écoulé soit tel que l’on puisse légitimement supposer que l’obligation de confiance et de confidentialité existait toujours lors du dépôt de la demande de marque communautaire (confirmé par l’arrêt du 13/04/2011, T-262/09 «First Defense»(II), point 65).
L’article 8, paragraphe 3, du RMC et l’article 6 septies de la convention de Paris ne protègent pas un titulaire de marque qui est négligent et ne fait pas d’efforts pour assurer lui-même la protection de la marque. En vertu des obligations fiduciaires post- contractuelles qui existent, aucune des parties ne peut invoquer la résiliation d’un contrat comme prétexte pour se débarrasser de ses obligations, par exemple par la résiliation d’un accord suivie immédiatement du dépôt d’une marque. Le raisonnement à l’appui de l’article 8, paragraphe 3, du RMC et de l’article 6 septies de la convention de Paris est d’empêcher une situation où un représentant dans le pays A d’un mandant qui est titulaire de marques dans le pays B, et qui est censé commercialiser les produits sous la marque et respecter les intérêts de ce dernier dans le pays A, se servirait du dépôt d’une demande de marque dans le pays A comme arme contre le
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mandant, par exemple en forçant le mandant à continuer sa relation avec le représentant et en l’empêchant de pénétrer sur le marché dans le pays A. Cette logique s’applique également quand un accord existe et quand le représentant le résilie en vue de tirer parti et de déposer une marque, pour les mêmes motifs. Cela ne crée cependant pas pour autant des droits absolus pour que le mandant obtienne la protection de la marque dans d’autres pays. Le simple fait que le mandant soit titulaire d’une marque dans le pays B ne lui donne pas un droit absolu d’obtenir des marques dans tous les autres pays; les marques enregistrées dans différents pays sont en principe indépendantes les unes des autres et peuvent avoir différents titulaires, conformément à l’article 6, paragraphe 3, de la convention de Paris. L’article 6 septies de la convention de Paris est une exception à ce principe et seulement dans la mesure où les obligations contractuelles ou de facto des parties concernées le justifient. C’est seulement dans cette mesure qu’il est justifié que la marque communautaire qui s’ensuivrait «appartienne» au mandant en vertu de l’article 18 du RMC (décision du 19/11/2007, R 0073/2006-4 «Porter», paragraphe 26).
Cette condition doit être appréciée au cas par cas, la question décisive étant celle de savoir si le demandeur a encore la possibilité de tirer un profit commercial de son ancienne relation avec le titulaire de la marque en exploitant le savoir-faire et les contacts acquis grâce à sa position.
Affaire n° Remarque
Décision du 19/11/2007, R 0073/2006-4 «Porter»
La demande contestée n’a pas été déposée pendant la période de validité des accords entre Gallant (titulaire d’actions de Porter, le demandeur) et Yoshida (l’opposant), ce qui a permis à Gallant de déposer une marque communautaire, mais presque un an après la résiliation du dernier accord (point 25). La chambre a relevé que les obligations fiduciaires qui résultent d’une résiliation ne sont pas censées durer éternellement, mais seulement pendant une période de transition donnée après la résiliation du contrat lors de laquelle les parties peuvent redéfinir leurs stratégies commerciales. Elle en a conclu, entre autres, que toute relation post-contractuelle entre Yoshida et Gallant s’était éteinte au moment du dépôt de la marque communautaire (point 27).
Décision du 21/02/2002, B 167 926 «AZONIC»
Dans cette affaire, il a été considéré qu’une durée de moins de trois mois après l’expiration d’une relation contractuelle (comme par exemple dans le cas d’un contrat de licence) constitue une période au cours de laquelle il existe toujours une relation fiduciaire entre les parties, qui impose au demandeur une obligation de loyauté et de confiance.
4.2 Demande présentée au nom de l’agent
Selon l’article 8, paragraphe 3, du RMC, la marque est refusée à l’enregistrement lorsqu’elle est demandée par l’agent ou le représentant en son propre nom. Il est généralement aisé de vérifier si cette condition est remplie, en comparant le nom du demandeur avec celui de la personne mentionnée en tant qu’agent ou représentant du titulaire dans les éléments de preuve.
Toutefois, il peut arriver, dans certains cas, que l’agent ou le représentant tente de contourner cette disposition en confiant le soin de déposer la demande à un tiers sur lequel il exerce un contrôle, ou avec lequel il a conclu une entente à cet effet. Dans ce cas, l’adoption d’une approche plus souple est justifiée. Par conséquent, s’il est clair qu’en raison de la nature de la relation qui existe entre l’agent et la personne déposant la demande, la situation est effectivement la même que si la demande avait été déposée par l’agent en personne, l’article 8, paragraphe 3, du RMC peut encore
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s’appliquer malgré la différence évidente entre le nom du demandeur et celui de l’agent du titulaire.
Ce cas peut se produire si la demande est déposée, non pas au nom de la société de l’agent, mais au nom d’une personne physique qui partage les mêmes intérêts économiques que l’agent, comme par exemple son président, vice-président ou représentant légal. Comme dans ce cas l’agent ou le représentant pourrait encore tirer profit de cette demande, il convient de considérer que la personne physique est soumise aux mêmes limitations que la société.
Affaire n° Remarque
Décision du 21/02/2002, B 167 926 «AZONIC»
La division d’opposition a estimé que, même si la demande de marque communautaire est formulée au nom de la personne physique de M. Costahaude au lieu d’être directement au nom de la personne morale STYLE’N USA, INC, dans les faits, la situation était la même que si elle avait été déposée au nom de la personne morale.
Décision du 28/05/2003, B 413 890 «CELLFOOD»
S’il est clair qu’en raison de la nature de la relation qui existe entre l’agent et la personne déposant la demande, la situation est effectivement la même que si la demande avait été déposée par l’agent en personne, l’article 8, paragraphe 3, du RMC peut encore s’appliquer malgré la différence évidente entre le nom du demandeur et celui de l’agent du titulaire.
En outre, si le déposant de la demande contestée a également signé l’accord de représentation pour le compte de la société, cette circonstance doit être considérée comme un argument de poids en faveur de l’application de l’article 8, paragraphe 3, du RMC, puisque le demandeur ne peut alors nier qu’il était directement informé des interdictions applicables. De même, si, en vertu d’une clause de l’accord de représentation, les dirigeants de la société sont personnellement responsables du respect des obligations contractuelles à la charge de l’agent, cette situation incite également à penser que le dépôt de la demande tombe sous le coup de l’interdiction prévue à l’article 8, paragraphe 3, du RMC.
Affaire n° Remarque
Décision du 21/02/2002, B 167 926 «AZONIC»
En gardant à l’esprit la position du représentant autorisé de la société licenciée, l’Office a estimé que, bien que la demande de marque communautaire eût été faite au nom de cette personne physique, la situation était effectivement la même que si elle avait été déposée par la personne morale, à savoir la société licenciée. La demande de marque communautaire au nom de la personne physique pourrait avoir un effet direct sur la personne morale en raison de leur relation professionnelle, et, en outre, le président ou le vice-président d’une société devrait être considéré comme étant tenu par les mêmes limitations que celles imposées à son entreprise, ou du moins devoir satisfaire à des obligations temporaires au cas où leur relation professionnelle viendrait à expirer.
Cette position est renforcée par le fait qu’en l’espèce, l’accord renouvelé comporte une clause qui établit le droit de résiliation immédiate du donneur de licence où «... le contrôle de STYLE’N (le licencié) est transféré et la direction en est par conséquent changée», ce qui montre que les dirigeants de la société licenciée étaient également liés par les termes de l’accord.
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Un cas similaire se produit lorsque l’agent ou le représentant et le demandeur sont des entités juridiques distinctes, mais qu’il ressort des éléments de preuve que ces entités sont contrôlées, gérées ou dirigées par la même personne physique. Pour les raisons indiquées ci-dessus, il est approprié de «lever le voile de mystère qui entoure l’entreprise» sur cette structure juridique et d’appliquer l’article 8, paragraphe 3, également à ces cas.
4.3 Demande présentée sans le consentement du titulaire
Bien que l’absence de consentement du titulaire soit une condition nécessaire à l’application de l’article 8, paragraphe 3, l’opposant n’a pas à démontrer que l’agent n’était pas autorisé à déposer la demande de marque communautaire. Une simple déclaration indiquant que le dépôt a été effectué sans son consentement est généralement suffisante. Cette règle s’explique par le fait que l’on ne peut demander à l’opposant de prouver un fait «négatif» comme l’absence de consentement. Dans ce cas, la charge de la preuve est renversée et il appartient au demandeur de démontrer que le dépôt était autorisé ou de justifier autrement de ses agissements.
Compte tenu de la nécessité de protéger efficacement le titulaire légitime contre les actes non autorisés de ses agents, l’application de l’article 8, paragraphe 3, ne doit être écartée que lorsque le consentement du titulaire est suffisamment clair, précis et inconditionnel (voir, par exemple, l’arrêt du 6 septembre 2006, T-6/05, «First Defense» (I), point 40).
Ainsi, même si le titulaire a expressément autorisé le dépôt de la demande de marque communautaire, son consentement ne peut être considéré comme suffisamment clair s’il n’a pas en outre précisé explicitement que la demande pouvait être établie au nom de l’agent.
Affaire n° Remarque
Décision du 7/07/2003, R 336/2001-2 «GORDON and SMITH» (marque figurative)
«Il convient de constater que, compte tenu de l'importance de son effet d'extinction du droit exclusif des titulaires des marques en cause dans les affaires au principal, droit qui leur permet de contrôler la première mise dans le commerce dans l'EEE, le consentement doit être exprimé d'une manière qui traduise de façon certaine une volonté de renoncer à ce droit» (paragraphe 18).
De même, lorsque le titulaire a expressément autorisé le dépôt d’une demande de marque communautaire, son consentement ne peut être considéré comme étant suffisamment précis aux fins de l’article 8, paragraphe 3, du RMC s’il n’y est fait aucune mention des signes spécifiques que le demandeur est habilité à déposer en tant que marques communautaires.
Il est généralement plus facile de déterminer si le dépôt a été autorisé par le titulaire lorsque les conditions dans lesquelles un agent ou un représentant peut présenter une demande de marque communautaire sont clairement définies dans un contrat, ou indiquées dans d’autres types de preuves directes (lettres, déclarations écrites, etc.). Dans la plupart des cas, ces pièces seront suffisantes pour établir si le titulaire a donné son consentement exprès ou si le demandeur abuse de ses pouvoirs.
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Il arrive également qu’il n’existe pas de contrat ou que celui-ci ne traite pas du sujet. Bien que le libellé de l’article 8, paragraphe 3, soit en principe assez large pour couvrir également les cas de consentement tacite ou implicite, un consentement de ce type ne doit être présumé que si les preuves sont suffisamment claires quant aux intentions du titulaire. Si les preuves ne contiennent aucune mention concernant l’existence d’une autorisation expresse ou implicite, il convient généralement de présumer l’absence de consentement.
Même en cas d’éléments de preuve et de signes indirects laissant supposer un consentement implicite, toute incertitude ou ambiguïté doit être interprétée en faveur de l’opposant, car il est généralement très difficile d’apprécier si un tel consentement est suffisamment clair et sans équivoque.
Par exemple, le fait que le titulaire ait toléré la présentation, dans d’autres pays, de demandes non autorisées établies au nom de l’agent, ne saurait créer dans l’esprit du demandeur l’espoir légitime que le titulaire ne s’opposera pas non plus au dépôt d’une demande de marque communautaire.
Affaire n° Remarque
Décision du 31/01/2001, R 140 006 «GORDON and SMITH» (marque figurative) (confirmée par décision du 7/07/2003, R 336/2001-2)
Le simple fait que les opposants n’ont pas réussi à s’opposer immédiatement aux actions du demandeur en vue d’enregistrer la marque après en avoir reçu notification ne constitue pas un consentement.
Ce n’est pas parce que le titulaire tolère une conduite qui sort des limites d’un contrat (comme par exemple l’utilisation du signe) qu’il faudrait en conclure pour autant que le dépôt de la marque communautaire n’a pas manqué à l’obligation fiduciaire dans la mesure où le consentement n’était pas clair, précis et inconditionnel.
Affaire n° Remarque
Affaires jointes T-537/10 et T-538/10, «FAGUMIT»
Le demandeur (titulaire de la marque communautaire dans la procédure d’annulation) a axé son argumentation sur le consentement que le titulaire de la marque lui aurait supposément accordé. Le Tribunal en a conclu (comme la chambre de recours) que le consentement aux fins de l’enregistrement de la marque au nom du représentant ou de l’agent doit être clair, précis et inconditionnel (paragraphes 22-23).
Le document invoqué par le titulaire de la marque communautaire ne montre pas de consentement au sens de l’article 8, paragraphe 3, du RMC (paragraphe 28). Le titulaire de la marque communautaire n’était pas mentionné dans le document et il n’y était pas fait référence de la possibilité de l’enregistrement du signe en tant que marque. Le titulaire de la marque communautaire ne peut pas s’appuyer sur le fait que le demandeur en annulation ne s’était pas opposé à l’utilisation du signe par des sociétés autres que celles visées dans le document. L’utilisation des marques est survenue dans le courant de la commercialisation des produits fabriqués par le demandeur en annulation. Toutefois, cette utilisation est la conséquence logique de la coopération qui existe entre le demandeur en annulation et les distributeurs de ses produits et n’atteste d’aucun abandon du signe, ce qui permettrait à n’importe qui de faire une demande d’enregistrement du signe, ou de son élément dominant, en tant que marque communautaire (paragraphe 27).
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Même lorsque le consentement du titulaire a été estimé être clair, précis et inconditionnel, il s’agira de déterminer si un tel consentement survit à un changement de titulaire au moyen d’une vente d’actifs.
Affaire n° Remarque
Arrêt du 6/09/2006, T-6/05 «FIRST DEFENSE» (I)
Le Tribunal a renvoyé une affaire de cette nature devant la chambre de recours afin de déterminer si le consentement obtenu par le demandeur de la marque communautaire avait survécu au rachat des actifs de l’ancien titulaire de la marque et si, le jour de la demande d’enregistrement de la marque, le nouveau titulaire de la marque aux États-Unis (l’opposant) était toujours lié par ce consentement.
Si l’opposant n’était plus lié par le consentement, le Tribunal a indiqué que la chambre devrait alors déterminer si le demandeur disposait d’une justification valable susceptible de compenser l’absence d’un tel consentement.
4.4 Absence de justification de la part du demandeur
Comme indiqué ci-dessus, quand l’opposant ne peut démontrer l’absence de consentement, la charge de la preuve est renversée et il incombe au demandeur de démontrer que le dépôt de la demande était autorisé par le titulaire. Bien que l’article 8, paragraphe 3, du RMC fasse de l’absence de consentement du titulaire et de l’absence de justification valable de la part du demandeur deux conditions séparées, ces conditions se chevauchent pour une large part, dans la mesure où si le demandeur démontre que le dépôt de la demande reposait sur un accord conclu à cet effet, il a de ce fait fourni une justification valable de ses agissements.
En outre, le demandeur peut invoquer toute autre circonstance afin de démontrer qu’il pouvait légitimement déposer la demande de marque communautaire en son propre nom. Toutefois, à défaut de preuve du consentement direct, seules des raisons exceptionnelles sont admises à titre de justification, étant donné la nécessité de protéger les intérêts légitimes du titulaire en l’absence d’indications suffisantes pour établir qu’il avait l’intention d’autoriser l’agent à déposer la demande en son propre nom.
Par exemple, on pourrait envisager de déduire que le titulaire a consenti tacitement au dépôt de la demande s’il ne réagit pas dans un délai raisonnable après avoir été informé par le demandeur de son intention de demander une marque communautaire en son propre nom. Toutefois, même dans ce cas, il ne sera pas possible de présumer que la demande a été autorisée par le titulaire si l’agent ne lui a pas préalablement indiqué, de façon suffisamment claire, en quel nom il allait déposer la demande.
Un autre cas de justification valable peut se produire lorsque le titulaire incite son agent à croire qu’il a abandonné la marque, ou qu’il ne souhaite pas obtenir ni conserver de droits sur le territoire concerné, par exemple en s’abstenant d’utiliser la marque pendant une période relativement longue.
Le fait que le titulaire ne souhaite pas effectuer de dépense aux fins de l’enregistrement de sa marque n’autorise pas l’agent à agir de sa propre initiative, car peut-être le titulaire voudra-t-il néanmoins utiliser sa marque sur le territoire bien qu’elle ne soit pas enregistrée. Cette décision de gestion ne saurait être interprétée en soi comme un signe que le titulaire a renoncé à ses droits sur sa marque.
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Les justifications qui sont exclusivement liées aux intérêts économiques du demandeur, comme la nécessité de protéger l’investissement qu’il a réalisé pour créer un réseau de distribution local et promouvoir la marque dans le territoire concerné, ne peuvent être admises aux fins de l’article 8, paragraphe 3, du RMC.
Le demandeur ne peut pas non plus prétendre, pour justifier de ses agissements, qu’il a droit à une rémunération financière au titre de ses efforts et des dépenses engagées pour renforcer la notoriété de la marque. Quand bien même cette rémunération serait bien méritée ou expressément mentionnée dans l’accord de représentation, le demandeur ne peut utiliser l’enregistrement de la marque en son propre nom comme un moyen de soustraire des fonds à l’opposant, ni en guise de rémunération financière. Il doit s’efforcer de régler son différend avec le titulaire soit par voie d’accord, soit en réclamant des dommages-intérêts.
Enfin, si le demandeur ne fournit pas de justifications pour ses agissements, il n’incombe pas à l’Office de faire des spéculations à cet égard (voir l’arrêt du 9/07/2014, T-184/12, «Heatstrip», points 73 et 74).
Affaire n° Remarque
Décision du 4/10/2011, 4443 C, «CELLO»
Quant à l’argument justificatif que la demande de marque communautaire aurait été déposée afin de protéger la notoriété de la marque dans l’UE, qui avait été établie uniquement en raison de ses activités commerciales, la division d’annulation a estimé que le fait qu’un distributeur, exclusif ou autre, renforce la notoriété de la marque du titulaire sur le territoire qui lui a été alloué, fait partie des tâches habituelles d’un distributeur et ne peut pas constituer, en soi et en l’absence d’autres circonstances, une justification valable pour l’appropriation de la marque du titulaire par le distributeur.
Décision du 10/01/2011, 3253 C, «MUSASHI» (marque figurative)
En ce qui concerne la justification concernant les revendications économiques de la partie qui dépose la marque communautaire et ses arguments selon lesquels elle a droit à une rémunération financière pour permettre au signe de bénéficier d’une protection au niveau de l’UE, et qu’elle pourrait être transférée au demandeur en annulation, il a été jugé que cette justification ne pouvait pas être valable au sens de l’article 8, paragraphe 3. «Quand bien même cette rémunération serait bien méritée, le titulaire de la marque communautaire ne peut pas utiliser l’enregistrement d’une marque en son propre nom comme moyen pour recevoir des paiements» (du demandeur en annulation) (paragraphe 47).
Décision du 7/07/2003, R 336/2001- 2 ‘GORDON and SMITH’ (marque figurative)
Un acte qui compromet les intérêts du titulaire de la marque, tels que le dépôt d'une demande de marque par un agent ou représentant sans le consentement du propriétaire, qui est motivée uniquement par l'intention de protéger les propres intérêts d'un représentant ou agent, n'est pas considérée comme justifiable pour les fins de l'article 8 (3) du RMC. La même chose s'applique au deuxième argument de la demanderesse, qui est, qu'il a été justifié de le faire, car il portait les frais d'inscription. Les intérêts du titulaire de la marque ne peuvent pas être subordonnés aux charges financières d’un agent ou d'un représentant. Le fait que l’opposant pourrait ne pas être disposé à engager des frais financiers d'enregistrer une marque ne donne pas automatiquement le droit à l'agent ou représentant de procéder à l'enregistrement de la marque en son propre nom. Cela constituerait une violation du droit de l'agent ou le devoir de représentant de confiance et de loyauté envers le titulaire de la marque (par. 24).
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4.5 Applicabilité en l’absence d’identité des signes – produits ou services
L’article 8, paragraphe 3, du RMC prévoit qu’une marque est refusée à l’enregistrement «lorsqu’elle est demandée par l’agent ou le représentant du titulaire de la marque, en son propre nom». Une référence aussi explicite à la marque du mandant donne l’impression, à première vue, que la marque communautaire demandée doit être la même que la marque antérieure.
Dès lors, une interprétation littérale de l’article 8, paragraphe 3, du RMC, aboutirait à la conclusion que ce paragraphe ne peut être appliqué que si l’agent ou le représentant sollicite l’enregistrement d’une marque identique à celle du titulaire.
Il convient également de noter que le texte de l’article 8, paragraphe 3, du RMC ne contient aucune référence aux produits ou services pour lesquels la demande a été déposée et pour lesquels la marque antérieure est protégée, et ne fournit par conséquent aucune indication quant au lien exact qui doit exister entre les produits ou les services concernés pour que cette disposition s’applique.
Toutefois, limiter l’application de l’article 8, paragraphe 3 du RMC exclusivement aux marques identiques désignant des produits ou des services identiques aboutirait, dans une large mesure, à rendre cette disposition inopérante, car cela permettrait au demandeur de se soustraire à ses conséquences en modifiant légèrement soit la marque antérieure, soit la spécification des produits et des services. Il y aurait alors une atteinte grave aux intérêts du titulaire, en particulier si la marque antérieure est déjà utilisée et si les changements apportés par le demandeur ne sont pas suffisamment significatifs pour empêcher la confusion. En outre, si la demande est admise à l’enregistrement malgré sa similitude avec la marque antérieure, le demandeur sera en mesure d’empêcher tout enregistrement ultérieur et/ou tout usage de la marque antérieure par le titulaire initial au sein de l’UE, sur le fondement de l’article 8, paragraphe 1, ou de l’article 9, paragraphe 1, du RMC, ou des dispositions équivalentes du droit national.
Par conséquent, étant donné la nécessité de protéger efficacement le titulaire légitime contre les pratiques déloyales de ses représentants, il faut éviter d’interpréter l’article 8, paragraphe 3, du RMC de façon restrictive. L’article 8, paragraphe 3, du RMC doit donc être appliqué, non seulement lorsque les marques sont identiques, mais aussi:
lorsque le signe pour lequel l’agent ou le représentant demande l’enregistrement reproduit pour l’essentiel la marque antérieure avec de légères modifications, additions ou suppressions qui n’altèrent pas de façon substantielle son caractère distinctif;
lorsque les produits et services en conflit sont étroitement liés ou sont équivalents en termes commerciaux. Autrement dit, ce qui compte en définitive, c’est que les produits ou les services du demandeur puissent être perçus par le public comme des produits «autorisés», dont la qualité est encore «garantie», d’une façon ou d’une autre, par l’opposant, et qu’il aurait été raisonnable que l’opposant les commercialise étant donné que les produits et services étaient protégés en vertu de la marque antérieure.
Ci-après des exemples de signes en conflit, pour lesquels l’Office a estimé que l’article 8, paragraphe 3, du RMC s’applique:
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Marque antérieure Demande de marque communautaire
Affaire n°
FIRST DEFENSE
(2 droits antérieurs des États- Unis)
Décision du 4/05/2009, R 0493/2002-4, «First Defense»
(II)
Arrêt du 13/04/2011, T-262/09, «FIRST DEFENSE» (II)
Décision du 3/05/2012, R 1642/2011-2 «Maritime
Acopafi» (marque figurative)
BERIK (marque verbale) (2 droits antérieurs)
Décision du 3/08/2010, R 1367/2009-2 «BERIK
DESIGN» (marque figurative)
BERIK (marque verbale) (2 droits antérieurs)
Décision du 3/08/2010, R 1231/2009-2 «BERIK»
(marque figurative)
NORAXON Décision du 19/06/1999, B 3 436«NORAXON»
APEX Décisions du 26/09/2001,B 150 955 et B 170 789, «APEX»
Ci-après des exemples de produits et services en conflit, pour lesquels l’Office a estimé que l’article 8, paragraphe 3, du RMC s’applique:
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Affaire n° Remarque
Décision du 4/05/2009, R 0493/2002-4, «FIRST DEFENSE» (II)
La chambre a décrété que les vaporisateurs de gaz irritant contestés à la classe 13 étaient couverts par la classification d’arme défensive non explosive de la nature d’un gaz irritant organique conditionné dans un conteneur à aérosol du titulaire.
Elle a toutefois estimé que cette protection ne s’étendait pas aux armes de poing, munitions, projectiles contestés. Il s’agit là de produits que l’on n’est pas raisonnablement en droit d’attendre des activités commerciales du titulaire. Les armes de poing et les munitions sont bien trop différentes des pulvérisateurs de poivre pour être couverts par l’article 8, paragraphe 3, du RMC, étant donné que l’opposant commercialise un produit très spécifique (paragraphes 19 à 24).
Dans son arrêt du 13/04/2011, T-262/09, le Tribunal n’a pas examiné les arguments des parties concernant la similitude des produits.
Décision du 3/05/2012, R 1642/2011-2 «Maritime Acopafi» (marque figurative)
La chambre a jugé que le libellé laisse entendre que dans le cas seulement où la marque demandée est essentiellement identique au droit antérieur, tant en termes des signes que des produits/services, celle-ci peut être interdite. En revanche, une lecture trop littérale de cette disposition affaiblirait fatalement son utilité en permettant à des agents frauduleux d’enregistrer les marques de leurs mandants en se contentant d’y apporter des modifications ou des ajouts mineurs et sans importance. Toutefois, en dépit de ces considérations, la disposition ne doit s’appliquer que lorsque les signes et les produits/services sont essentiellement les mêmes, ou en grande partie équivalents (paragraphe 18).
Partant, la chambre a confirmé les constatations de la division d’opposition que l’utilisation de la marque antérieure pour l’installation d’hébergement marin était fondamentalement différente des services de la requérante relevant de la classe 42 (Services scientifiques et technologiques ainsi que services de recherches et de conception y relatifs; services d’analyses et de recherches industrielles; conception et développement d’ordinateurs et de logiciels).
Décision du 3/08/2010, R 1367/2009-2 «BERIK» (marque figurative)
La chambre a convenu avec la division d’annulation que les produits du demandeur en annulation relevant de la classe 25 ne pouvaient être considérés comme étroitement liés ou équivalents en termes commerciaux aux produits de la requérante à la classe 18, Cuir ou similicuir. Ces derniers sont des matières premières pour les producteurs de produits fabriqués en cuir ou en imitation du cuir, qui visent par conséquent un public différent et empruntent des canaux de distribution différents par rapport aux produits visés par les marques du demandeur en annulation (paragraphes 30 et 31).
Elle a également convenu avec la division d’annulation que les produits du demandeur en annulation relevant de la classe 25 ne pouvaient être considérés comme étroitement liés ou équivalents en termes commerciaux aux produits de la requérante relevant de la classe 16, même si, par exemple, certains des produits contestés pouvaient être utilisés comme éléments de merchandising pour une ligne de vêtements (paragraphes 28-30).
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Affaire n° Remarque
Décision du 27/02/2012, B 1 302 530 «GEOWEB / NEOWEB»
Étant donné la nécessité de protéger efficacement le titulaire légitime contre les pratiques déloyales de ses représentants, il y a lieu d’éviter d’interpréter l’article 8, paragraphe 3, du RMC de façon restrictive. Il convient donc d’appliquer cette disposition non seulement lorsque les marques respectives sont identiques, mais aussi lorsque la marque demandée par le représentant ou l’agent reproduit essentiellement la marque antérieure avec des modifications, ajouts ou suppressions mineurs, qui n’affectent pas substantiellement son caractère distinctif.
En accord avec le raisonnement ci-dessus, l’article 8, paragraphe 3, du RMC vise non seulement les cas où les listes respectives des produits et services sont strictement identiques, mais s’applique aussi lorsque les produits et services en conflit sont étroitement liés ou équivalents en termes commerciaux. Autrement dit, ce qui compte en définitive, c’est que les produits ou les services du demandeur puissent être perçus par le public comme des produits «autorisés», dont la qualité est encore «garantie», d’une façon ou d’une autre, par l’opposant (paragraphe 20).
Droits en vertu de l’article 8, paragraphe 4, du RMC
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DU MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 4
DROITS EN VERTU DE L’ARTICLE 8, PARAGRAPHE 4, DU RMC
Droits en vertu de l’article 8, paragraphe 4, du RMC
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Table des matières
1 Introduction................................................................................................ 4
2 Structure de l’article 8, paragraphe 4, du RMC ....................................... 5
3 Conditions prévues à l’article 8, paragraphe 4, du RMC........................ 6 3.1 Droit direct conféré à l’opposant............................................................... 6 3.2 Types de droits visés par l’article 8, paragraphe 4, du RMC................... 7
3.2.1 Introduction........................................................................................ 7 3.2.2 Marques non enregistrées .................................................................8 3.2.3 Autres signes distinctifs des entreprises ............................................8
3.2.3.1 Noms commerciaux.....................................................................................9 3.2.3.2 Raisons sociales .......................................................................................10 3.2.3.3 Noms de domaine .....................................................................................10 3.2.3.4 Titres .........................................................................................................11
3.2.4 Indications géographiques............................................................... 12 3.2.4.1 Droits antérieurs découlant de la législation de l’UE .................................12 3.2.4.2 Droits antérieurs découlant des législations des États membres ..............13 3.2.4.3 Droits antérieurs découlant des accords internationaux............................14 3.2.4.4. Étendue de la protection des IGP..............................................................16
3.3 Exigences d’usage ................................................................................... 17 3.3.1 Norme nationale .............................................................................. 18 3.3.2 Norme européenne: usage dans la vie des affaires dont la portée
n’est pas seulement locale .............................................................. 18 3.3.2.1 Usage dans la vie des affaires ..................................................................18 3.3.2.2 Portée de l’usage ......................................................................................22
3.4 Droit antérieur........................................................................................... 27 3.5 Étendue de la protection.......................................................................... 28
4 Preuve de la législation applicable au signe......................................... 29 4.1 La charge de la preuve............................................................................. 29 4.2 Moyens et niveau de preuve.................................................................... 30
4.2.1 Droit national ................................................................................... 30 4.2.2 Droit de l’Union européenne ............................................................ 32
TABLEAU DROITS NATIONAUX CONSTITUANT DES «DROITS ANTÉRIEURS» AU SENS DE L’ARTICLE 8, PARAGRAPHE 4, DU RMC .................................................................................................... 34
1 Benelux..................................................................................................... 35
2 Bulgarie .................................................................................................... 36
3 République tchèque ................................................................................ 37
4 Danemark ................................................................................................. 38
Droits en vertu de l’article 8, paragraphe 4, du RMC
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5 Allemagne ................................................................................................ 39
6 Estonie...................................................................................................... 42
7 Irlande....................................................................................................... 43
8 Grèce ........................................................................................................ 44
9 Espagne.................................................................................................... 46
10 France....................................................................................................... 47
11 Croatie ...................................................................................................... 48
12 Italie .......................................................................................................... 49
13 Chypre ...................................................................................................... 50
14 Lettonie..................................................................................................... 50
15 Lituanie..................................................................................................... 51
16 Hongrie ..................................................................................................... 52
17 Malte ......................................................................................................... 52
18 Autriche .................................................................................................... 54
19 Pologne .................................................................................................... 55
20 Portugal .................................................................................................... 56
21 Roumanie ................................................................................................. 58
22 Slovénie.................................................................................................... 59
23 Slovaquie.................................................................................................. 59
24 Finlande.................................................................................................... 61
25 Suède........................................................................................................ 63
26 Royaume-Uni ........................................................................................... 63
Droits en vertu de l’article 8, paragraphe 4, du RMC
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1 Introduction
Les relations entre le système de la marque communautaire et le droit national sont caractérisées par le principe de coexistence. Cela signifie que le système de la marque communautaire et le droit national existent et fonctionnent en parallèle. Le même signe peut être protégé par le même titulaire en tant que marque communautaire et en tant que marque nationale dans un État membre ou dans la totalité des États membres. Le principe de coexistence implique également que le système de la marque communautaire reconnaît activement la pertinence des droits nationaux et l’étendue de leur protection. Lorsque des conflits surviennent entre des marques communautaires et des marques nationales ou d’autres droits nationaux, il n’existe pas de hiérarchie déterminant qu’un système prévaut sur l’autre; en lieu et place, c’est le principe de priorité qui est appliqué. Si les exigences respectives sont satisfaites, des marques nationales antérieures ou d’autres droits nationaux antérieurs peuvent faire obstacle à l’enregistrement d’une marque communautaire plus récente ou faire prononcer sa nullité.
Bien que la directive sur les marques et sa mise en œuvre consécutive aient harmonisé les législations relatives aux marques enregistrées, une telle harmonisation n’a pas été réalisée à l’échelle de l’Union européenne en ce qui concerne les marques non enregistrées ou la plupart des autres droits antérieurs de nature similaire. Ces droits non harmonisés restent régis dans leur intégralité par les législations nationales.
Les types de droits antérieurs qui peuvent être invoqués dans des procédures devant l’Office sont précisés dans le RMC aux articles suivants:
l’article 8, paragraphe 4, du RMC, qui restreint l’étendue de la protection dans le cadre de procédures d’opposition à des marques antérieures non enregistrées et à d’autres signes utilisés dans la vie des affaires dont la portée n’est pas seulement locale;
l’article 53, paragraphe 2, points a) à d), du RMC, qui élargit l’étendue des droits antérieurs éventuels qui peuvent être invoqués dans des procédures en nullité, au-delà de ceux de l’article 8, paragraphe 4, du RMC, à d’autres droits antérieurs, en particulier le droit au nom, le droit à l’image, le droit d’auteur et le droit de propriété industrielle;
l’article 111 du RMC, qui complète l’éventail des droits antérieurs qui peuvent être invoqués dans des procédures d’opposition en disposant que des droits qui n’ont qu’une validité de portée locale et, partant, ne satisfont pas au critère de la «portée [qui ne soit] pas seulement locale» de l’article 8, paragraphe 4, du RMC, peuvent s’opposer à l’usage d’une marque communautaire, quand bien même de tels droits locaux ne peuvent empêcher son enregistrement.
La présente partie des Directives concerne uniquement les droits antérieurs qui relèvent de l’article 8, paragraphe 4, du RMC.
Droits en vertu de l’article 8, paragraphe 4, du RMC
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2 Structure de l’article 8, paragraphe 4, du RMC
Le libellé de l’article 8, paragraphe 4, du RMC, est le suivant:
Sur opposition du titulaire d’une marque non enregistrée ou d’un autre signe utilisé dans la vie des affaires dont la portée n’est pas seulement locale, la marque demandée est refusée à l’enregistrement, lorsque et dans la mesure où, selon la législation de l’État membre qui est applicable à ce signe:
(a) des droits à ce signe ont été acquis avant la date de dépôt de la demande de marque communautaire ou, le cas échéant, avant la date de la priorité invoquée à l’appui de la demande de marque communautaire;
(b) ce signe donne à son titulaire le droit d’interdire l’usage d’une marque plus récente.
L’article 8, paragraphe 4, du RMC, signifie que, en plus des marques antérieures visées à l’article 8, paragraphe 2, du RMC, des marques non enregistrées et d’autres signes protégés dans un État membre, utilisés dans la vie des affaires comme «identificateurs d’entreprise» et dont la portée n’est pas seulement locale, peuvent être invoqués dans le cadre d’une opposition pour autant que lesdits droits confèrent à leurs titulaires le droit d’interdire l’usage d’une marque plus récente.
L’article 8, paragraphe 4, du RMC, n’énumère pas de façon expresse ou exhaustive les droits qui peuvent respectivement être invoqués au titre de cet article, mais présente dans les grandes lignes un large éventail de droits qui peuvent servir de fondement à une opposition à l’encontre d’une demande de marque communautaire. L’article 8, paragraphe 4, du RMC, peut donc être considéré comme une disposition d’ordre général applicable aux oppositions fondées sur des marques non enregistrées ou d’autres signes utilisés dans la vie des affaires.
La vaste étendue des droits antérieurs qui peuvent être invoqués dans des procédures d’opposition, au titre de l’article 8, paragraphe 4, du RMC, est néanmoins soumise à un certain nombre de conditions restrictives: ces droits doivent conférer à leur titulaire le droit de les exercer; leur portée ne doit pas être seulement locale, ils doivent être protégés contre l’usage d’une marque plus récente par la législation nationale dont ils relèvent et les droits doivent être acquis avant la date de dépôt de la demande de marque communautaire selon le droit de l’État membre qui s’applique au signe.
L’exigence d’une portée qui ne soit «pas seulement locale» vise à restreindre le nombre de droits contraires non enregistrés potentiels, évitant ainsi le risque d’effondrement ou de paralysie du système de la marque communautaire qui serait inondé de droits opposés relativement peu pertinents.
L’exigence de la «protection nationale» est réputée nécessaire dans la mesure où les droits nationaux non enregistrés ne sont pas facilement identifiables et où leur protection n’est pas harmonisée à l’échelle de l’Union européenne. Par conséquent, seule la législation nationale régissant les signes antérieurs peut définir l’étendue de leur protection.
Si les exigences de l’«usage dans la vie des affaires» et de l’«usage dont la portée n’est pas seulement locale» doivent être interprétées dans le contexte du droit communautaire (norme européenne), c’est la législation nationale qui s’applique lorsqu’il s’agit de déterminer si un droit particulier est reconnu et protégé par la
Droits en vertu de l’article 8, paragraphe 4, du RMC
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législation nationale, si son titulaire est habilité à interdire l’usage d’une marque plus récente et les conditions qui doivent être satisfaites en vertu de la législation nationale pour que le droit soit exercé.
En raison de ce dualisme, l’Office doit appliquer à la fois les dispositions pertinentes du RMC et la législation nationale régissant le droit antérieur invoqué à l’appui de l’opposition. Étant donné que l’article 8, paragraphe 4, du RMC, prévoit un examen à deux niveaux, cet article, qui constitue le lien entre le droit communautaire et la législation nationale, présente une nature quelque peu «hybride».
3 Conditions prévues à l’article 8, paragraphe 4, du RMC
Les conditions à réunir pour invoquer valablement l’article 8, paragraphe 4, du RMC, sont les suivantes:
a) l’opposant doit être le bénéficiaire d’une marque non enregistrée ou d’un autre signe utilisé dans la vie des affaires;
b) la portée de l’usage ne doit pas être seulement locale;
c) les droits doivent avoir été acquis avant le dépôt de la demande de marque communautaire conformément à la législation de l’État membre applicable à ce signe;
d) le titulaire doit avoir le droit d’interdire l’usage d’une marque plus récente en vertu de la législation de l’État membre applicable à ce signe.
3.1 Droit direct conféré à l’opposant
Les systèmes juridiques des États membres de l’Union européenne prévoient différents moyens d’empêcher l’usage de marques plus récentes sur la base de signes antérieurs utilisés dans la vie des affaires. Toutefois, pour relever de l’article 8, paragraphe 4, du RMC, le droit antérieur doit être acquis à un titulaire individuel ou à une catégorie clairement circonscrite d’utilisateurs ayant un intérêt de quasi-titulaire sur celui-ci, dans le sens où il leur est possible d’interdire à des tiers d’utiliser le signe de façon illicite ou de les en empêcher. Ceci résulte du fait que l’article 8, paragraphe 4, du RMC, énonce un motif «relatif» d’opposition et que l’article 41, paragraphe 1, point c), du RMC, prévoit que des oppositions ne peuvent être formées que par les titulaires de marques ou de signes antérieurs visés à l’article 8, paragraphe 4, du RMC, et par les personnes autorisées, conformément au droit national applicable, à exercer ces droits. En d’autres termes, seules les personnes ayant un intérêt directement reconnu par la législation à engager une procédure sont habilitées à former opposition au sens de l’article 8, paragraphe 4, du RMC.
Dans certains États membres par exemple, l’usage d’un signe peut être interdit s’il en résulte des pratiques commerciales déloyales ou trompeuses. Dans pareil cas, le droit antérieur ne relève pas de l’article 8, paragraphe 4, du RMC, s’il est dépourvu de tout «caractère de propriété». Peu importe que ces signes soient protégés contre un usage trompeur ou déloyal en vertu de la législation sur les marques, de la législation en matière de concurrence déloyale ou de tout autre ensemble de dispositions. La réglementation allemande régissant l’usage de l’indication géographique «Solingen» pour des produits spécifiques (coutellerie, ciseaux, couteaux, etc.) illustre ce principe.
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Ce règlement ne constituerait pas une base valable d’opposition en vertu de l’article 8, paragraphe 4, du RMC, parce que le signe en question est dépourvu de tout caractère de propriété et, en tant que tel, est de nature plus publique.
Droit antérieur Affaire n°
A.O. CUBA R-0051/2007-4
Si la législation nationale ne confère pas à une entité légale (publique ou privée) un droit subjectif lui permettant d’interdire l’usage d’une marque plus récente, l’«exigence de propriété» n’est pas satisfaite. La chambre a retenu que la législation espagnole donnant effet à l’accord bilatéral entre l’Espagne et Cuba relatif à la protection de l’appellation d’origine «Cuba» n’est pas suffisante pour conférer un tel droit subjectif (paragraphes 23 à 27).
Aux fins de l’appréciation de la propriété d’un signe utilisé dans la vie des affaires, l’Office doit déterminer spécifiquement si l’opposant a acquis des droits sur le signe «conformément au droit national» (arrêt du 18 janvier 2012, T-304/09, «BASmALI»).
3.2 Types de droits visés par l’article 8, paragraphe 4, du RMC
3.2.1 Introduction
Une norme européenne s’applique aux fins de l’appréciation des types de droits de propriété intellectuelle qui peuvent ou ne peuvent pas être invoqués au titre de l’article 8, paragraphe 4, du RMC. La distinction découle du régime du RMC et, en particulier, de la différentiation opérée entre les types de signes antérieurs sur lesquels une opposition peut être fondée en vertu de l’article 8, paragraphe 4, du RMC, et les autres types de droits qui peuvent constituer une cause de nullité conformément à l’article 53, paragraphe 2, du RMC. Alors que l’article 8, paragraphe 4, du RMC, mentionne des signes («marque non enregistrée ou [...] autre signe»), l’article 53, paragraphe 2, du RMC, renvoie à un ensemble de droits plus vaste: (a) un droit au nom; (b) un droit à l’image; (c) un droit d’auteur; et (d) un droit de propriété industrielle.
Par conséquent, bien que les signes visés par l’article 8, paragraphe 4, du RMC, relèvent de la catégorie plus générale des «droits de propriété industrielle», tous les droits de propriété industrielle ne sont pas des «signes» au sens de l’article 8, paragraphe 4, du RMC. Étant donné que cette distinction figure dans le RMC, la classification d’un droit en vertu de la législation nationale concernée n’est pas déterminante et le fait que la législation nationale applicable au signe ou au droit de propriété industrielle concerné réglemente les deux types de droits dans un seul et même texte est sans importance.
Les types de droits relevant de l’article 8, paragraphe 4, du RMC sont:
les «marques non enregistrées»; les «autres signes utilisés dans la vie des affaires», qui englobent:
○ les signes distinctifs des entreprises, tels que:
— les noms commerciaux; — les raisons sociales; — les noms d’établissements; — les titres de publications ou ouvrages similaires;
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— les noms de domaine;
○ les indications géographiques.
La plupart des signes distinctifs nationaux des entreprises appartenant à la catégorie des droits antérieurs au sens de l’article 8, paragraphe 4, du RMC, seront des signes non enregistrés. Toutefois, le fait qu’un signe soit aussi enregistré conformément aux exigences de la législation nationale applicable n’exclut pas qu’il soit invoqué conformément à l’article 8, paragraphe 4, du RMC.
3.2.2 Marques non enregistrées
Il existe des marques non enregistrées tirant leur légitimité de leur usage dans un certain nombre d’États membres1 (voir le tableau de synthèse à la fin du document) et il s’agit de signes qui indiquent l’origine commerciale d’un produit ou service. Par conséquent, il s’agit de signes qui fonctionnent comme une marque. Les règles et conditions de la législation nationale applicable à l’acquisition de droits varient, allant d’un simple usage à un usage ayant entraîné l’acquisition d’une réputation. L’étendue de leur protection n’est pas non plus uniforme, bien qu’elle soit généralement assez similaire à l’étendue de la protection prévue par les dispositions du RMC applicables aux marques enregistrées.
L’article 8, paragraphe 4, du RMC, reconnaît l’existence de tels droits dans les États membres et accorde aux titulaires de marques non enregistrées la possibilité d’empêcher l’enregistrement d’une marque communautaire si ces droits sont aptes à empêcher l’usage d’une telle marque en vertu de la législation nationale, pour autant qu’ils démontrent que les conditions fixées par le droit national pour l’interdiction de l’usage de la marque plus récente sont réunies et que les autres conditions de l’article 8, paragraphe 4, du RMC, sont satisfaites.
Exemple: affaires R 1529/2010-1, «Gladiator», concernant une marque non enregistrée en République tchèque, et R 1446/2006-4, «RM2007», concernant une marque non enregistrée en Belgique, dans laquelle l’opposition a été rejetée comme non fondée au motif que les marques non enregistrées ne sont pas protégées en Belgique.
3.2.3 Autres signes distinctifs des entreprises
L’expression «autres signes utilisés dans la vie des affaires» désigne une catégorie plus étendue, dont les éléments ne sont pas énumérés à l’article 8, paragraphe 4, du RMC. Pour relever du domaine d’application de l’article 8, paragraphe 4, du RMC, ces signes doivent avoir une fonction distinctive, c’est-à-dire qu’ils doivent avoir pour fonction première de permettre la distinction dans la vie des affaires entre une entreprise (signes distinctifs des entreprises) et une origine géographique (indications géographiques). L’article 8, paragraphe 4, du RMC, ne concerne pas d’autres types de droits de propriété intellectuelle qui ne sont pas des «signes commerciaux», tels que des brevets, droits d’auteur ou droits de dessins et modèles qui n’ont pas comme
1 Le Benelux, Chypre, la Croatie, l’Estonie, la France, la Lituanie, la Pologne, la Roumanie, la Slovénie et l’Espagne ne protègent pas les marques non enregistrées (sauf si, dans certaines juridictions, elles sont considérées comme étant notoirement connues au sens de l’article 6 bis de la Convention de Paris).
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fonction première de permettre la distinction, mais qui protègent des œuvres techniques ou artistiques ou une «apparence».
Quelques exemples d’affaires portant notamment sur la question de savoir si un droit est un «signe» aux fins de l’article 8, paragraphe 4, du RMC, sont présentés ci-après.
Droit antérieur Affaire n°
JOSE PADILLA (droit d’auteur)
T-255/08
Le tribunal a retenu qu’un droit d’auteur ne peut constituer un «signe utilisé dans la vie des affaires» au sens de l’article 8, paragraphe 4, du RMC. Il ressort clairement de l’économie de l’article 53 du RMC qu’un droit d’auteur ne constitue pas un tel signe. L’article 53, paragraphe 1, point c), du RMC dispose qu’une marque communautaire est déclarée nulle lorsqu’il existe un droit antérieur visé à l’article 8, paragraphe 4, du RMC, et que les conditions énoncées audit paragraphe sont remplies. L’article 53, paragraphe 2, point c), du RMC, dispose qu’une marque communautaire doit également être déclarée nulle si son usage peut être interdit en vertu d’un «autre» droit antérieur, et en particulier d’un droit d’auteur. Il s’ensuit qu’un droit d’auteur n’est pas l’un des droits antérieurs visés à l’article 8, paragraphe 4, du RMC.
Droit antérieur Affaire n°
Dr. No (droit d’auteur) T-435/05
Par ailleurs, il résulte de la lecture combinée de l’article 8, paragraphe 4, et de l’article 53, paragraphe 2, du RMC, que la protection prévue par le droit d’auteur ne saurait être invoquée dans le cadre d’une procédure d’opposition, mais uniquement dans le cadre d’une procédure en annulation de la marque communautaire en cause (point 41).
Droits antérieurs Affaire n°
et
(dessins et modèles communautaires)
B-1 530 875
Les dessins et modèles sont une forme de propriété intellectuelle relative aux aspects ornementaux ou esthétiques de l’apparence d’un article. Les dessins et modèles sont réputés être le résultat d’un travail créatif qu’il convient de protéger contre toute copie ou toute imitation non autorisée par des tiers afin d’assurer un retour sur investissement équitable. Ils sont protégés en tant que propriété intellectuelle, mais ne sont pas des signes distinctifs des entreprises ou des signes commerciaux. Partant, les dessins et modèles ne constituent pas des signes utilisés dans la vie des affaires aux fins de l’article 8, paragraphe 4, du RMC.
3.2.3.1 Noms commerciaux
Les noms commerciaux sont les noms utilisés pour identifier les entreprises, ils sont à distinguer des marques, qui identifient des produits ou services fabriqués ou commercialisés par une entreprise particulière.
Un nom commercial n’est pas nécessairement identique à la raison sociale ou au nom
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inscrit sur un registre de commerce ou autre, étant donné que les noms commerciaux peuvent englober d’autres noms non enregistrés, comme un signe identifiant et distinguant un établissement déterminé. Les noms commerciaux sont protégés comme des droits exclusifs dans tous les États membres.
Conformément à l’article 8 de la Convention de Paris, les noms commerciaux bénéficient d’une protection sans que la moindre exigence d’enregistrement soit prévue. Si la législation nationale requiert l’enregistrement de noms commerciaux nationaux, la disposition le prévoyant ne s’applique pas aux noms commerciaux appartenant à un ressortissant d’une partie contractant ayant ratifié la Convention de Paris, conformément à son article 8. Il en va de même des ressortissants d’un État membre signataire de l’Accord instituant l’OMC.
S’agissant de l’application de l’article 8, paragraphe 4, du RMC, aux noms commerciaux, dès lors que le nom commercial est invoqué sur le fondement du droit de l’un des États membres dans lequel un enregistrement est une condition de l’exécution de droits afférents à un nom commercial, l’Office applique cette exigence quand l’État membre et la nationalité de l’opposant sont identiques, mais ne l’applique pas dans tous les autres cas, étant donné que cela serait contraire aux dispositions de l’article 8 de la Convention de Paris.
Exemples: affaire R-1714/2010-4 concernant le nom commercial espagnol «JAMON DE HUELVA».
3.2.3.2 Raisons sociales
Une raison sociale ou une dénomination sociale est la désignation officielle d’une société, le plus souvent immatriculée au registre de commerce national concerné.
L’article 8, paragraphe 4, du RMC, requiert de démontrer un usage réel, même si la législation nationale confère au propriétaire d’un tel nom le droit d’interdire l’usage d’une marque plus récente sur la base du seul enregistrement. Toutefois, si la législation nationale considère l’enregistrement comme une condition préalable à la protection, il convient de démontrer également l’enregistrement. À défaut, il n’existe aucun droit national pouvant être invoqué par l’opposant.
Exemples: l’arrêt du 14 septembre 2011, T-485/07 «O-live (fig.)» concernant le nom commercial espagnol «Olive Line» et R 0021/2011-1 concernant la raison sociale française «MARIONNAUD PERFUMERIES».
3.2.3.3 Noms de domaine
Un nom de domaine est une combinaison de caractères typographiques correspondant à une ou plusieurs adresses IP numériques utilisées pour identifier une page particulière ou une série de pages sur l'internet. En tant que tel, un nom de domaine fonctionne comme une «adresse» utilisée pour faire référence à un emplacement spécifique sur internet (oami.europa.eu) ou à une adresse de courrier électronique (@oami.europa.eu).
Les noms de domaine sont enregistrés auprès d’organisations ou d’entités commerciales appelées des «registraires de nom de domaine». Bien qu’un nom de domaine soit unique et puisse représenter un actif commercial précieux, un enregistrement de nom de domaine ne constitue pas en soi un droit de propriété
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intellectuelle. De tels enregistrements ne créent aucune forme de droit exclusif ; un «enregistrement» dans ce contexte fait référence à un accord contractuel entre le titulaire et le registraire du nom de domaine.
L’utilisation d’un nom de domaine peut toutefois donner naissance à des droits susceptibles de constituer le fondement d’une opposition au titre de l’article 8, paragraphe 4, du RMC. C’est notamment le cas si l’utilisation du nom de domaine signifie qu’il est protégé comme une marque non enregistrée ou comme un signe distinctif d’une entreprise en vertu de la législation nationale applicable.
Exemples: affaires R 0275/2011-1 concernant des droits fondés sur l’utilisation du nom de domaine allemand «lucky-pet.de»; B 1 719 379 concernant des droits fondés sur l’utilisation du nom de domaine français «Helloresto.fr»; ;T-321/11 et T-322/11 concernant des droits fondés sur l’utilisation du nom de domaine italien «partitodellaliberta.it», dans lesquelles le Tribunal a considéré que les références à ce site dans la presse italienne ne permettaient pas, en tant que telles, d’établir son utilisation dans le contexte d’une activité commerciale.
3.2.3.4 Titres
Les titres de magazines et d’autres publications, ou les titres d’œuvres de catégories analogues, telles que des films, séries télévisées, etc. relèvent uniquement de l’article 8, paragraphe 4, du RMC, s’ils sont protégés comme des signes distinctifs d’une entreprise en vertu de la législation nationale.
Le fait que le droit d’auteur afférent au titre d’une œuvre peut être invoqué en vertu de la législation nationale pertinente à l’encontre d’une marque plus récente n’est pas déterminant aux fins de l’article 8, paragraphe 4, du RMC. Comme exposé ci-dessus, tandis qu’un droit afférent à un droit d’auteur peut être utilisé pour faire prononcer la nullité d’une marque conformément à l’article 53, paragraphe 2, du RMC, un titre ne relève de l’article 8, paragraphe 4, du RMC, que s’il a une fonction d’«identification» et agit comme signe distinctif d’une entreprise. Par conséquent, pour que de tels signes puissent être invoqués dans le cadre de procédures d’opposition conformément à l’article 8, paragraphe 4, du RMC, la législation nationale doit prévoir une protection indépendante de celle reconnue par la législation sur le droit d’auteur (arrêt du 30 juin 2009, T-435/05, «Dr. No», points 41, 42 et 43.)
Comme pour tous les droits qui relèvent de l’article 8, paragraphe 4, du RMC, le titre doit avoir été utilisé dans la vie des affaires, ce qui requiert normalement que l’œuvre à laquelle le titre se rapporte ait été mise sur le marché. Si le titre concerne un service (tel qu’un programme télévisé), ce service doit avoir été mis à disposition. Dans certaines circonstances cependant, une publicité préalable à l’utilisation peut être suffisante pour créer des droits et une telle publicité constitue un «usage» au sens de l’article 8, paragraphe 4, du RMC. Dans tous les cas, le titre doit avoir été utilisé comme indicateur de l’origine commerciale des produits et services en question. L’utilisation du titre dans le seul but d’indiquer l’origine artistique d’une œuvre ne relève pas de l’article 8, paragraphe 4, du RMC (arrêt du 30 juin 2009, T-435/05, «Dr. No», points 25 à 31).
Exemple: affaire R-0181/2011-1 concernant le titre de magazine «ART».
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3.2.4 Indications géographiques
Les indications géographiques ont pour but de désigner l’origine des produits comme provenant d’une région ou d’une localité donnée. Pour une présentation générale des indications géographiques, voir les Directives, Partie B: Examen, section 4, Motifs absolus de refus et Marques communautaires collectives, paragraphe 2.09 sur l’article 7, paragraphe 1, point j), du RMC, et paragraphe 2.10 sur l’article 7, paragraphe 1, point k), du RMC.
Comme décrit par la suite, le terme «indication géographique protégée» (IGP) peut, selon le contexte, regrouper des termes tels que «désignations d’origine», «appellations d’origine» et d’autres termes équivalents. Dans le présent chapitre, il renvoie aux IGP en général.
Les IGP sont protégées de diverses façons au sein de l’Union européenne (droit national, droit de l’UE, accords internationaux) et concernent diverses catégories de produits (notamment les denrées alimentaires ou les produits de l’artisanat).
La présente section recense les types d’IGP susceptibles de constituer des motifs d’opposition recevables en application de l'article 8, paragraphe 4, du RMC.
3.2.4.1 Droits antérieurs découlant de la législation de l’UE
À l’échelle de l’Union européenne, une protection est accordée aux IGP des catégories de produits suivantes:
1. certaines denrées alimentaires et certains produits agricoles non alimentaires (conformément au règlement n° 1151/20122, le «règlement sur les denrées alimentaires»);
2. les vins et vins pétillants (conformément au règlement n° 1308/20133, le «règlement sur les vins»);
3. les boissons spiritueuses (conformément au règlement n° 110/20084, le «règlement sur les boissons spiritueuses»).
La nature des indications couvertes est globalement la même, si ce n’est que la définition exacte des termes varie selon la législation. Les droits antérieurs qui sont enregistrés ou demandés en tant qu’IGP au titre des règlements susmentionnés (y compris des IGP de pays tiers) peuvent constituer un «signe utilisé dans la vie des affaires» au sens de l’article 8, paragraphe 4, du RMC, et un motif d’opposition recevable en ce qu’ils confèrent à leur titulaire le droit d’interdire l’utilisation d’une marque plus récente. Leur capacité à interdire l’usage est régie par les dispositions pertinentes des règlements précités (article 13, article 103 paragraphe 2, et article 16 des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement). Il est important, dans ce contexte, d’établir une distinction entre ces dispositions, qui interdisent l’usage, et celles qui interdisent
2 A remplacé et abrogé le règlement n° 510/2006 qui avait remplacé et abrogé le règlement n° 2081/92. 3A remplacé et abrogé le règlement nº 1234/2007 qui avait Intégré, par codification, par le règlement n° 491/2009, le règlement n° 479/2008, qui a été abrogé dans le même temps. 4 A remplacé et abrogé le règlement n° 1576/89.
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l’enregistrement5 d’une marque et qui ne constituent pas des motifs d’opposition aux termes de l’article 8, paragraphe 4, du RMC.
Afin de justifier son droit, l’opposant doit fournir à l’Office avec les faits et preuves concernant l’existence du droit. Un simple extrait des bases de données pertinentes de l’Union disponibles en ligne (DOOR, E-Bacchus ou E-Spirit-Drinks) ou, dans le cas des boissons spiritueuses, un extrait de l’annexe III du règlement sur les boissons spiritueuses, ne saurait suffire car il ne comporte pas assez de données pour déterminer toutes les spécificités pertinentes du droit antérieur.
En tout cas, l’opposant doit fournir à l’Office avec des copies de la publication et de l’enregistrement de l’IGP au Journal officiel et, si ces documents ne comportent pas toutes les informations nécessaires sur le droit de l’opposant, d’autres documents justifiant son droit de former opposition en tant que titulaire ou personne autorisée en vertu du droit national applicable à exercer ce droit (article 41, paragraphe 1, point c), du RMC et règle 19, paragraphe 2, du REMC). Voir à cet égard la résolution du 17 octobre 2013, R1825/2012-4, «Dresdner StriezelGlühwein/DesdnerStollen», point 37).
Le système de l’UE en matière de protection des IGP relatives aux denrées alimentaires, aux vins et aux boissons spiritueuses revêt une nature exhaustive et supplante la protection nationale accordée à ces produits. C’est ce qu’il ressort des conclusions de la Cour dans l’arrêt C-478/07, «BUD», du 8 septembre 2009, points 95 à 129. Dans cet arrêt en effet, la Cour a fait savoir que le règlement n° 510/2006 (qui a précédé le règlement actuel sur les denrées alimentaires) avait pour objet de fournir un système de protection uniforme et exclusif des IGP pour les produits agricoles et les denrées alimentaires, capable de supplanter les législations nationales applicables aux produits concernés6. Bien que la Cour ne se soit pas spécifiquement prononcée sur la nature exhaustive des règlements sur les vins et les boissons spiritueuses, il y a lieu de leur appliquer ce même principe puisqu’ils comportent, en substance, des dispositions similaires au règlement sur les denrées alimentaires et visent à la même finalité pour leurs produits respectifs.
3.2.4.2 Droits antérieurs découlant des législations des États membres
Certaines IGP issues des législations des États membres peuvent servir de motif d’opposition en vertu de l’article 8, paragraphe 4, du RMC. Cependant, pour les raisons exposées ci-avant, en ce qui concerne les denrées alimentaires, les vins et les boissons spiritueuses, la protection à l’échelle de l’Union européenne est de nature exhaustive, ce qui signifie qu’une opposition au titre de l’article 8, paragraphe 4, du RMC ne peut se fonder sur des droits nationaux applicables dans ces domaines. Cela s’explique par le fait que le système de protection de l’UE incluant les règlements précités abroge et remplace la protection nationale des IGP des denrées alimentaires, des vins et des boissons spiritueuses.
5 Article 14, article 102 et article 23 des règlements sur les denrées alimentaires, les vins et les boissons spiritueuses, respectivement. 6 Pour plus d’informations, voir les Directives, Partie B: Examen, Section 4, Motifs absolus de refus et Marques communautaires collectives, paragraphe 2.09 sur l’article 7, paragraphe 1, point j), du RMC, et paragraphe 2.10 sur l’article 7, paragraphe 1, point k), du RMC.
Droits en vertu de l’article 8, paragraphe 4, du RMC
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Par voie de conséquence, les IGP de certaines denrées alimentaires7 et de certains produits non agricoles8[comme définis à l’annexe I du traité sur le fonctionnement de l’Union européenne (TFUE) et à l’annexe I du règlement sur les denrées alimentaires], de vins et produits de la vigne9 (comme définis à l’annexe VII, part 2 du règlement sur les vins) et de boissons spiritueuses10 (définies à l’annexe II du règlement sur les boissons spiritueuses) qui sont protégés en vertu des législations nationales ne constituent pas un motif d’opposition recevable en vertu de l’article 8, paragraphe 4, du RMC. Pour ces produits, l’opposant doit, dans son acte d’opposition, invoquer la législation de l’UE pertinente.
Cependant, lorsqu’il n’existe aucune protection uniforme à l’échelle de l’UE pour une catégorie de produits donnée (par ex., pour des produits de l’artisanat), les IGP qui sont protégées au titre des législations nationales peuvent constituer un motif d’opposition en vertu de l’article 8, paragraphe 4, du RMC (par ex., ČESKÝ PORCELÁN/FINE BOHEMIAN CHINA pour le cristal).
3.2.4.3 Droits antérieurs découlant des accords internationaux
Pour qu’une opposition en vertu de l’article 8, paragraphe 4, du RMC fondée sur un droit découlant d’un accord international quelconque aboutisse, les dispositions de l’accord international doivent s’appliquer directement et doivent permettre au titulaire d’une IGP d’entamer des poursuites judiciaires directes pour interdire l’usage d’une marque ultérieure.
Sur ce dernier point, les accords internationaux ne sont pas toujours directement applicables. Cette application directe dépend des caractéristiques intrinsèques de l’accord et de son interprétation par la juridiction concernée. À titre d’exemple, l’Office estime que les dispositions de l’Arrangement de Lisbonne (notamment ses articles 3 et 8) ne sont pas directement applicables. Ainsi que le dispose expressément l’article 8 de l’Arrangement de Lisbonne, c’est la législation nationale pertinente qui doit déterminer le type de poursuites judiciaires pouvant être engagées, leur portée et si ces poursuites autorisent le titulaire d’une appellation d’origine d’interdire l’usage d’une marque ultérieure. Dès lors, en pareils cas, la législation nationale pertinente doit être invoquée en ce qu’elle constitue une composante fondamentale permettant à l’opposant de démontrer que l’IGP concernée peut interdire l’usage de la marque ultérieure et qu’elle est habilitée, en vertu de la législation pertinente, à exercer ce droit.
Accords internationaux signés par l’Union
Les IGP issues d’accords conclus entre des pays de l’Union européenne et des pays tiers peuvent être invoquées en vertu de l’article 8, paragraphe 4, du RMC si les dispositions de ces accords cèdent les IGP à un bénéficiaire donné ou à une catégorie précise d’utilisateurs disposant d’un droit d’action directe11.
7 Par ex., viande, fromage, pâtisserie, huiles comestibles, légumes, fruits, boissons à base d’extraits de plantes, vinaigre (en ce compris le vinaigre de vin), tabac non manufacturé, bière, confiserie. 8 Par ex., laine, cuir, huiles essentielles. 9 Par ex., vin, vin pétillant, vin de liqueur, moût de vin, mais pas le vinaigre de vin. 10 Par ex., boisson spiritueuse de céréales, eau-de-vie de vin, eau-de-vie de fruit, eau-de-vie, liqueurs, rhum, whisky, gin. 11 Les IGP de pays tiers peuvent également être enregistrées à l’échelle de l’Union européenne en vertu des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses.
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Accords internationaux signés par les États membres, y compris l’Arrangement de Lisbonne12
Pour les raisons exposées au paragraphe 3.2.4.2 ci-avant, une IGP protégée en vertu d’un accord international conclu par des États membres (avec d’autres États membres ou avec des pays tiers) ne saurait être invoquée comme droit antérieur au sens de l’article 8, paragraphe 4, du RMC si elle porte atteinte à la nature exhaustive du droit de l’Union européenne dans les domaines concernés (en l’espèce, dans les domaines des denrées alimentaires, des vins et des boissons spiritueuses).
Dans l’arrêt C-478/07, «BUD», la Cour a examiné la nature exhaustive du droit de l’Union européenne au regard des IGP issues des États membres. Selon l’interprétation de l’Office, le même principe s’applique aussi a fortiori aux IGP des pays tiers dans les catégories de produits pertinentes qui jouissent d’une protection sur le territoire d’un État membre par l’intermédiaire d’un accord international conclu entre ledit État membre et un pays tiers13.
Il s’applique également à l’Arrangement de Lisbonne. L’Arrangement de Lisbonne instaure un système international d’enregistrement et de protection des «appellations d’origine» (article 2, paragraphe 1). La définition des «appellations d’origine» pour les denrées alimentaires et les boissons en vertu de cet instrument équivaut largement à celle d’une «désignation d’origine»14 aux termes des règlements de l’Union européenne. Par voie de conséquence, les appellations d’origine protégées dans un État membre en vertu de l’Arrangement de Lisbonne ne peuvent constituer un motif d’opposition au sens de l’article 8, paragraphe 4, du RMC.
Les seules exceptions à ce qui précède sont les suivantes:
les accords internationaux incluant des IGP ne se rapportant pas à des denrées alimentaires, des vins ou des boissons spiritueuses;
les accords internationaux conclus avec des pays tiers par un État membre avant son adhésion à l’UE. En effet, les obligations découlant d’un accord international conclu par un État membre avant son adhésion à l’UE doivent être respectées. Cependant, les États membres ont l’obligation de recourir à tous les moyens appropriés pour éliminer les incompatibilités existant entre une convention conclue antérieurement à l’adhésion d’un État membre et le traité (voir l’article 307 du traité instituant la Communauté européenne, aujourd’hui article 351 TFUE, tel qu’il est interprété par la Cour dans son arrêt C-216/01, «BUD», du 18 novembre 2003, points 168 à 172);
les accords internationaux conclus avec un pays tiers par un État membre après son adhésion à l’Union, mais avant l’entrée en vigueur du système de protection harmonisé de l’UE dans le domaine de produits concerné.
12 Certains États membres (Bulgarie, France, Hongrie, Italie, Portugal, République tchèque et Slovaquie) sont parties à l’Arrangement de Lisbonne concernant la protection des appellations d’origine et leur enregistrement international de 1958 (tel qu’il a été révisé à Stockholm en 1967 et modifié le 28 septembre 1979). L’Union européenne n’est pas signataire de l’Arrangement de Lisbonne. 13 Auquel l’UE n’est pas partie contractante. 14 Ce terme est défini et expliqué dans les Directives, Partie B: Examen, Section 4, Motifs absolus de refus et Marques communautaires collectives, paragraphe 2.09 sur l’article 7, paragraphe 1, point j), du RMC, et paragraphe 2.10 sur l’article 7, paragraphe 1, point k), du RMC.
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Dans la mesure où les États membres sont dans l’obligation d’éliminer les incompatibilités avec le droit de l’UE, l’Office n’appliquera les deux dernières exceptions (qui concernent exclusivement des IGP de pays tiers dans les domaines des denrées alimentaires, des vins ou des boissons spiritueuses) que lorsque l’opposant se référera expressément à l’exception et l’étaiera par une argumentation cohérente et des éléments de preuve pertinents (notamment concernant la date d’entrée en vigueur de l‘accord international invoqué dans l’État membre de l’UE dans lequel la protection est revendiquée et le maintien de sa validité). Toute allégation générale formulée par l’opposant (la simple citation de l’accord international concerné par exemple) ne suffira pas en tant que tel à amener l’Office à considérer que l’une des deux dernières exceptions est applicable.
3.2.4.4. Étendue de la protection des IGP
La capacité des IGP à interdire l’usage est régie par les dispositions pertinentes des règlements de l’Union européenne (article 13, article 103 paragraphe 2, et article 16 des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement). Il est important, dans ce contexte, d’établir une distinction entre ces dispositions, qui interdisent l’usage, et celles qui interdisent l’enregistrement15 d’une marque et qui ne constituent pas des motifs d’opposition au sens de l'article 8, paragraphe 4, du RMC16.En conséquence, conformément à l’article 8, paragraphe 4, du RMC, une IGP peut prévaloir si les conditions fixées dans les dispositions interdisant l’usage sont remplies. Ces conditions sont les suivantes:
la demande de marque communautaire contestée se compose exclusivement de l’IGP dans son intégralité ou inclut d’autres termes ou éléments figuratifs (usage direct ou indirect) pour des produits comparables ou, même s’il ne s’agit pas de produits comparables, si l’usage de l’IGP s’appuie sur la renommée du nom protégé;17
la demande de marque communautaire contestée contient ou consiste en une imitation ou une évocation de l’IGP;18
autres indications et pratiques pouvant prêter à confusion.19
Des informations détaillées sur l’étendue de la protection des IGP protégées en application de la législation de l’UE sont présentées dans les Directives, Partie B: Examen, Section 4, Motifs absolus de refus et Marques communautaires collectives, paragraphe 2.09 sur l’article 7, paragraphe 1, point j), du RMC, et paragraphe 2.10 sur l’article 7, paragraphe 1, point k), du RMC (par ex., définition de l’usage direct, des produits comparables ou de l’évocation).
15 Article 14, article 102, et article 23 des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement. 16 Voir l’arrêt du 12 juin 2007 dans les affaires jointes T-60/04 à 64/04, «Bud», point 78. 17 Article 13, paragraphe 1, point a), article 103, paragraphe 2, point a), et article 16, paragraphe 1, point a), des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement. 18 Article 13, paragraphe 1, point b), article 103, paragraphe 2, point b), et article 16, paragraphe 1, point b), des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement. 19 Article 13, paragraphe 1, points c) et d), article 103, paragraphe 2, points c) et d), et article 16, paragraphe 1, points c) et d), des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement.
Droits en vertu de l’article 8, paragraphe 4, du RMC
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Les dispositions des règlements de l’UE interdisant l’usage prévoient des situations dans lesquelles une IGP peut également être invoquée contre des produits ou services qui ne relèvent pas nécessairement des produits et services contestables en vertu d’un examen ex officio des motifs absolus de refus, sous réserve des conditions des dispositions pertinentes des règlements de l’UE correspondants. Par exemple, en vertu de l’article 13, paragraphe 1, point a), de l’article 103, paragraphe 2, point a) ii), et de l’article 16, point a), des règlements sur les denrées alimentaires, sur les vins et sur les boissons spiritueuses, respectivement, une IGP avec renommée peut être invoquée contre des produits et des services qui ne pourraient être contestés ex officio en vertu des motifs absolus de refus.
L’étendue de la protection des IGP qui sont protégées par d’autres règlements que les règlements de l’UE susmentionnés dépend des dispositions pertinentes.
Toutefois, que ce soit en vertu de la législation de l’Union européenne ou de la législation nationale, l’étendue de la protection des IGP ne peut excéder ce qui est nécessaire pour garantir la fonction de l’IGP, cette fonction étant de désigner des produits comme ayant une origine géographique particulière et disposant de qualités spécifiques connexes. Contrairement à d’autres signes, les IGP ne sont pas utilisées pour indiquer l’origine commerciale de produits et n’offrent aucune protection à cet égard. Aussi, lorsque la spécification d’une demande de marque communautaire n’inclut que des produits conformes à la spécification de l’IGP concernée, la fonction de l’IGP pertinente est garantie pour ces produits car la demande de marque communautaire ne couvre que des produits de l’origine géographique spécifique et disposant des qualités spécifiques connexes. Par voie de conséquence, toute opposition formée à l’encontre d’une demande de marque communautaire convenablement limitée est vouée à être rejetée. Se reporter, en ce sens, à l’article 12, paragraphe 1, du règlement sur les denrées alimentaires ou à l’article 103, paragraphe 1 du règlement sur les vins.
Lorsqu’une IGP est invoquée en vertu de l’article 8, paragraphe 4, du RMC, ainsi que pour tous les autres signes relevant de cet article, l’opposant doit démontrer que le signe est utilisé dans la vie des affaires dont la portée n'est pas seulement locale. L’usage doit être fait conformément à la fonction essentielle d’un tel signe, à savoir garantir aux consommateurs l’origine géographique des produits et les qualités particulières qui leur sont intrinsèques, mais il doit aussi montrer que le signe a été utilisé dans la vie des affaires, c’est-à-dire, comme un élément distinctif servant à identifier une activité économique exercée par son titulaire (voir l’arrêt C-96/09P, «BUD», du 29 mars 2011, points 147 et 149, respectivement). Par voie de conséquence, les documents mentionnant une IGP dans un contexte non commercial exclusivement ne peuvent suffire aux fins de l’article 8, paragraphe 4, du RMC.
3.3 Exigences d’usage
Les droits antérieurs doivent faire l’objet d’un usage pour que l’article 8, paragraphe 4, du RMC, puisse être valablement invoqué dans le cadre d’une procédure d’opposition. Il existe deux normes différentes d’exigence d’usage qui doivent être prises en considération:
la norme nationale; la norme européenne;
Droits en vertu de l’article 8, paragraphe 4, du RMC
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Il est cependant évident que les deux normes d’exigence d’usage se chevauchent. Elles ne doivent pas être considérées de façon isolée mais doivent être appréciées conjointement. Ceci s’applique notamment à l’«intensité de l’usage» prévue par la norme nationale et à l’«usage dont la portée n’est pas seulement locale» au sens de la norme européenne.
3.3.1 Norme nationale
La norme nationale est pertinente, étant donné qu’elle définit l’étendue de la protection des droits antérieurs qui ne sont souvent pas faciles à identifier, d’autant plus que leur protection n’est pas harmonisée à l’échelle de l’Union européenne (voir le paragraphe 3.4 ci-dessous sur l’étendue de la protection). Cette norme détermine l’existence du droit national et les conditions à remplir pour bénéficier de la protection. Pour les marques non enregistrées et les signes distinctifs des entreprises qui ne nécessitent pas d’enregistrement, l’usage constitue la seule condition de fait justifiant l’existence du droit, y compris la détermination de la date de début de son existence. La norme nationale prescrit aussi l’intensité de l’usage au sens de la législation nationale pertinente, qui peut varier d’un simple premier usage dans la vie des affaires à un usage devant être assorti d’une reconnaissance ou d’une réputation.
Par exemple, le droit afférent à une marque non enregistrée au Danemark est acquis par le simple fait de commencer à utiliser cette marque sur le territoire danois.
En Allemagne cependant, le droit afférent à une marque non enregistrée est acquis par un usage qui a conduit à une reconnaissance de ce droit en tant que marque auprès du public pertinent (Verkehrsgeltung). Selon la jurisprudence, les signes distinctifs requièrent 20 % à 25 % de reconnaissance, tandis que les signes non distinctifs doivent acquérir une reconnaissance auprès de la moitié du public pertinent.
3.3.2 Norme européenne: usage dans la vie des affaires dont la portée n’est pas seulement locale
Conformément à l’article 8, paragraphe 4, du RMC, l’existence d’une marque antérieure non enregistrée ou d’un autre signe légitime l’opposition dès lors que le signe satisfait, entre autres, aux conditions suivantes: il doit être utilisé dans la vie des affaires et l’usage doit avoir une portée qui ne soit pas seulement locale.
Les deux conditions ci-dessus découlent des termes mêmes de l’article 8, paragraphe 4, du RMC, et, partant, doivent être interprétées à la lumière du droit communautaire. L’objet commun des deux conditions posées à l’article 8, paragraphe 4, du RMC, est de limiter les conflits entre les signes en empêchant qu’un droit antérieur qui n’est pas suffisamment caractérisé, c’est-à-dire important et significatif dans la vie des affaires, puisse faire obstacle à l’enregistrement d’une nouvelle marque communautaire. Une telle faculté d’opposition doit être réservée aux signes qui sont effectivement et réellement présents sur leur marché pertinent (arrêt du 29 mars 2011, C-96/09 P, «BUD», point 157).
3.3.2.1 Usage dans la vie des affaires
La première exigence au sens de l’article 8, paragraphe 4, du RMC, est l’utilisation du signe dans la vie des affaires.
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L’expression «usage dans la vie des affaires» au sens de l’article 8, paragraphe 4, du RMC, n’a pas une signification identique à celle de l’«usage sérieux» au sens de l’article 42, paragraphes 2 et 3, du RMC (arrêt du 30 septembre 2010, T-534/08, «Granuflex», points 24 à 27). Les finalités et les conditions liées à la preuve de l’usage sérieux de marques communautaires ou nationales enregistrées diffèrent de celles relatives à la preuve de l’usage, dans la vie des affaires, des signes visés à l’article 8, paragraphe 4, du RMC (arrêt du 9 juillet 2010, T-430/08, «GRAIN MILLERS», point 26, et arrêt du 29 mars 2011, C-96/09 P, «BUD», point 143). Par conséquent, l’usage doit être interprété selon le type particulier de droit concerné.
La Cour de justice a retenu que l’«usage du signe dans la vie des affaires» au sens de l’article 8, paragraphe 4, du RMC, fait référence à l’usage du signe «dans le contexte d’une activité commerciale visant à un avantage économique et non dans le domaine privé» (arrêts du 12 novembre 2002, C-206/01, «Arsenal», point 40; du 25 janvier 2007, C-48/05, «Adam Opel», point 18; et du 11 septembre 2007, C-17/06, «CÉLINE», point 17).
Toutefois, la Cour de justice a également retenu que des livraisons faites à titre gratuit pouvaient être prises en compte afin de vérifier la condition de l’usage dans la vie des affaires du droit antérieur invoqué, dès lors que celles-ci ont pu être réalisées dans le cadre d’une activité commerciale visant à un avantage économique, à savoir acquérir de nouveaux débouchés (arrêt du 29 mars 2011, C-96/09 P, «BUD», point 152).
S’agissant de la période de l’usage du signe, un opposant doit prouver que l’usage a eu lieu avant le dépôt de la demande de marque communautaire (ou la date de priorité, le cas échéant). Voir l’arrêt du 29 mars 2011, C-96/09P ‘BUD’ points 166-168.
Signe antérieur Affaire n°
BUD C-96/09 P
La Cour a examiné si l'utilisation qui a lieu exclusivement ou dans une large mesure entre le dépôt d'une demande d'enregistrement et sa publication a été suffisante pour satisfaire à l'exigence de l'utilisation. L'une des parties avaient fait valoir que seule l'acquisition du droit devait avoir lieu avant le dépôt de la demande de marque communautaire, mais pas son utilisation. La Cour a appliqué la même condition temporelle pour l'acquisition du droit et a conclu que l'utilisation devait avoir lieu avant le dépôt de la demande. La Cour de justice a considéré que, eu égard au délai significatif qui peut s’écouler entre le dépôt de la demande d’enregistrement et la publication de celle-ci, la condition de l’usage du signe dans la vie des affaires avant le dépôt de la demande de marque est de nature à garantir que l’usage invoqué du signe en cause est un usage sérieux et non une pratique qui n’aurait eu pour objet que d’empêcher l’enregistrement d’une marque nouvelle (points 166 à 168).
Dans le cas de signes non enregistrés, l’usage doit être continu et ininterrompu jusqu’au dépôt de l’opposition car, à défaut, il n’est pas certain que les droits au titre du signe non enregistré n’aient pas expiré. Dans ce contexte, la règle 19, paragraphe 2, point d), du REMC, dispose expressément que si une opposition est fondée sur l’existence d’un droit antérieur au sens de l’article 8, paragraphe 4, du RMC, l’opposant doit produire la preuve de son acquisition, de sa permanence (mise en exergue ajoutée) et de l’étendue de la protection de ce droit.
L’exemple ci-dessous concerne une affaire inter partes relative à une procédure en nullité. Le raisonnement et les conclusions s’appliquent aussi aux oppositions, étant donné que l’article 8, paragraphe 4, du RMC, est un motif qui peut être invoqué tant dans le cadre d’une opposition que dans celui d’une procédure en nullité:
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Signe antérieur Affaire n°
«BAMBOLINA» (marque non enregistrée dans un certain nombre
d’États membres)
Décision d’annulation 3728 C (confirmée par la décision de la chambre de
recours R-1822/2010-2, et l’arrêt T-581/11)
Les preuves démontrent l’usage de la marque non enregistrée dans la vie des affaires pendant trois ans, mais ne couvrent pas les deux dernières années précédant la date de dépôt de la demande en nullité. La division d’annulation a retenu qu’un signe antérieur non enregistré invoqué dans une action en nullité doit être utilisé à la date de dépôt de la demande. Dans la mesure où, pour de tels signes, l’usage constitue la considération de fait justifiant l’existence du droit, la même considération de fait doit encore exister, et être démontrée, à la date de dépôt de la demande en nullité (paragraphes 25 à 28 de la décision d’annulation). La chambre a confirmé les conclusions de la division d’annulation, ajoutant que la règle 19, paragraphes 1 et 2, point d), du REMC, dispose que lorsqu’une opposition est fondée sur l’article 8, paragraphe 4, du RMC, l’opposant doit produire la preuve, notamment, de sa «permanence» au cours du délai fixé par l’Office pour présenter ou compléter les faits, preuves et observations à l’appui de l’opposition. À défaut de preuve de l’existence, de la validité et de l’étendue de la protection de la marque ou du droit antérieur dans ce délai, l’opposition est rejetée comme infondée (règle 20, paragraphe 1, du REMC). Selon la chambre, ces règles s’appliquent mutatis mutandis aux procédures en annulation (paragraphe 15 de la décision de la chambre de recours).
Comme exposé ci-dessus, l’exigence d’un usage du signe dans la vie des affaires doit être interprétée à la lumière du droit communautaire. Elle doit être distinguée des exigences prévues par les législations nationales applicables, qui peuvent fixer des exigences spécifiques concernant l’intensité de l’usage.
L’exigence d’usage applicable à l’échelle de l’Union européenne, telle que prescrite par l’article 8, paragraphe 4, du RMC, s’applique indépendamment du fait que la législation nationale admette ou non l’interdiction d’une marque plus récente sur la base du seul enregistrement d’un signe, c’est-à-dire sans aucune exigence quant à son usage. Dans l’exemple ci-dessous, l’opposant s’était fondé sur l’enregistrement d’un nom commercial à l’échelle nationale, mais n’avait pas démontré que le signe était utilisé dans la vie des affaires:
Signe antérieur Affaire n°
«NACIONAL» (nom d’établissement portugais) R-693/2011-2
Aux termes de l’article 8, paragraphe 4, du RMC, le fait que l’opposant puisse, conformément au droit portugais, avoir acquis des droits exclusifs pleinement opposables à des marques plus récentes sur la base de l’enregistrement d’un «nom d’établissement» ne l’exonère pas de l’obligation de démontrer que le signe en question a fait l’objet d’un usage dans la vie des affaires dont la portée ne soit pas seulement locale. Le simple fait que le signe soit enregistré conformément aux exigences du droit portugais applicable n’est pas suffisant, en soi, pour l’application de l’article 8, paragraphe 4, du RMC (paragraphes 20 à 26).
En fonction de la législation nationale applicable, il est possible qu’un opposant doive prouver non seulement que le signe invoqué est utilisé dans la vie des affaires (ceci constituant une exigence du droit communautaire), mais également qu’il a été enregistré auprès des autorités nationales compétentes. Il ne serait pas suffisant de satisfaire à l’exigence européenne d’«usage dans la vie des affaires» sans satisfaire à celle de l’enregistrement. Toutefois, en vertu de certaines législations nationales, des droits au titre d’une raison sociale peuvent être invoqués dès lors que la raison sociale a été utilisée avant l’inscription de l’entité au registre des sociétés. Dans l’exemple
Droits en vertu de l’article 8, paragraphe 4, du RMC
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ci-dessous, l’opposant a invoqué des droits antérieurs afférents à une raison sociale utilisée dans la vie des affaires en Allemagne qui n’était pas enregistrée à la date de dépôt de la demande de marque communautaire contestée:
Signe antérieur Affaire n°
«Grain Millers GmbH & Co. KG» (raison sociale allemande) T-430/08
L’opposant a invoqué, au titre de l’article 8, paragraphe 4, du RMC, la raison sociale «Grain Millers GmbH & Co. KG» utilisée dans la vie des affaires en Allemagne pour de la «farine, notamment farine de blé et de seigle». L’opposant a donc revendiqué le nom d’une GmbH (Gesellschaft mit beschränkter Haftung, société à responsabilité limitée en français). Sur le fondement de l’article 11, paragraphe 1, de la loi allemande sur les sociétés à responsabilité limitée (GmbH-Gesetz), le requérant a affirmé qu’une GmbH n’existait pas avant son enregistrement et que l’opposant n’était donc pas habilité à invoquer son nom commercial à l’appui de son opposition puisque la société n’avait été enregistrée qu’après le dépôt de la demande de marque communautaire contestée. Le Tribunal a adopté une position différente et retenu que, selon la jurisprudence des juridictions allemandes, le droit sur un nom commercial existe conformément à l’article 5, paragraphe 2, du Markengesetz dès le premier usage dans la vie des affaires, et ce sans obligation d’enregistrement (point 36).
Un signe est utilisé dans la vie des affaires dès lors que cet usage intervient dans le contexte d’une activité commerciale visant à un avantage économique et non dans le domaine privé.
Partant, l’Office rejettera une opposition en l’absence d’usage réel du signe invoqué. Dans les exemples ci-dessous, l’opposant n’a pas satisfait à cette exigence fondamentale:
Signe antérieur Affaire n°
Octopussy (titre de film) R-526/2008-4
L’opposant a simplement présenté des informations générales expliquant le contenu du film, ses personnages, des chiffres bruts, des offres vidéos sur Internet et des publicités sans aucune précision sur le marché pertinent. Les informations relatives au chiffre d’affaires sont également insuffisantes car elles constituent une référence trop générale aux activités exercées par l’opposant et ne précisent pas le type d’activité ou le territoire concernés. Pour la même raison, les chiffres d’un périodique concernant les recettes générées par le film étaient sans rapport avec l’usage du signe en Allemagne. Les autres articles de presse fournis par l’opposant concernent des sujets ne pouvant pas corroborer l’usage du signe dans les États membres indiqués. Les accords de licence de marchandisage ne constituent pas une preuve de l’usage du signe comme titre de film. Enfin, le simple fait que le film ait rencontré un succès mondial ne peut se substituer à l’obligation de l’opposant d’apporter des preuves concrètes concernant les États membres dans lesquels il invoque une protection au titre de l’article 8, paragraphe 4, du RMC (paragraphe 26).
Signe antérieur Affaire n°
«lucky-pet.de» (nom de domaine allemand) R-275/2011-1
L’opposant a invoqué, au titre de l’article 8, paragraphe 4, du RMC, le nom de domaine «lucky-pet.de» utilisé dans la vie des affaires en Allemagne pour des «carpettes pour animaux; services de vente au détail concernant des articles pour animaux domestiques». Il n’a pas été démontré que le nom de domaine ait fait l’objet d’un usage autre que local pour les produits et services demandés. Les factures fournies et le catalogue montrent uniquement l’adresse internet www.lucky-pet.de, mais ne prouvent pas
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que le site internet www.lucky-pet.deait reçu des visites et, s’il en avait reçu, dans quelles proportions. Aucun document n’affirme ni ne démontre que de nombreuses personnes ont visité le site internet et commandé des produits par courrier électronique (paragraphe 31).
3.3.2.2 Portée de l’usage
Les droits relevant de l’article 8, paragraphe 4, du RMC, peuvent uniquement être invoqués si la portée de leur usage n’est pas seulement locale. Cette exigence est valable pour tous les droits relevant de l’article 8, paragraphe 4, du RMC, c’est-à-dire pour les marques non enregistrées comme pour les autres signes distinctifs des entreprises. Conformément à l’article 111 du RMC, les titulaires de droits dont l’usage est seulement de portée locale conservent leurs droits exclusifs en vertu de la législation nationale applicable.
La question de savoir si la portée de l’usage d’un signe non enregistré est autre que seulement locale sera tranchée par l’application d’une norme européenne uniforme (voir l’arrêt du 18 avril 2013, T-506/11, «Peek & Cloppenburg», points 19, 47 et 48).
Le Tribunal a retenu que la portée d’un signe utilisé pour identifier des activités commerciales déterminées doit être définie par rapport à la fonction d’identification jouée par celui-ci. Cette considération exige de tenir compte, en premier lieu, de la dimension géographique de la portée du signe, c’est-à-dire du territoire sur lequel il est utilisé pour identifier l’activité économique de son titulaire, ainsi que cela ressort d’une interprétation textuelle de l’article 8, paragraphe 4, du RMC. Il convient de tenir compte, en second lieu, de la dimension économique de la portée du signe, qui est évaluée au regard de la durée pendant laquelle il a rempli sa fonction dans la vie des affaires et de l’intensité de son usage, au regard du cercle des destinataires parmi lesquels le signe en cause est devenu connu en tant qu’élément distinctif, à savoir les consommateurs, les concurrents, voire les fournisseurs, ou encore de la diffusion qui a été donnée au signe, par exemple, par voie de publicité ou sur internet (arrêt du 24 mars 2009, T-318/06 à T-321/06, «GENERAL OPTICA», points 36 et 37, et arrêt du 30 septembre 2010, T-534/08, «GRANUFLEX», point 19).
La Cour de justice a précisé que la portée d’un signe ne saurait être fonction de la seule étendue géographique de sa protection, car, s’il en était ainsi, un signe dont l’étendue de la protection n’est pas purement locale pourrait, de ce seul fait, faire obstacle à l’enregistrement d’une marque communautaire, et ce alors même qu’il ne serait utilisé dans la vie des affaires que d’une manière marginale. Le signe doit être effectivement utilisé d’une manière suffisamment significative dans la vie des affaires et avoir une étendue géographique qui ne soit pas seulement locale, ce qui implique, lorsque le territoire de protection de ce signe peut être considéré comme autre que local, que cet usage ait lieu sur une partie importante de ce territoire (arrêt du 29 mars 2011, C-96/09 P, «BUD», points 158 et 159).
Toutefois, il n’est pas possible d’établir a priori, de façon abstraite, quelle partie d’un territoire doit être utilisée comme référence pour prouver que l’usage d’un signe n’est pas seulement local. Par conséquent, l’appréciation de la portée du signe doit être réalisée in concreto, selon les circonstances de chaque affaire.
Partant, le critère de la «portée autre que seulement locale» constitue plus qu’un examen géographique. L’impact économique de l’usage du signe doit aussi être évalué. Il convient de tenir compte des éléments suivants, sur lesquels doivent porter les éléments de preuve:
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a) l’intensité de l’usage (ventes réalisées sous le signe);
b) la durée de l’usage;
c) l’éventail des produits (sur le territoire des clients);
d) la publicité du signe et les médias utilisés pour cette publicité, y compris la diffusion de la publicité.
Dans les exemples suivants, il a été retenu que tant la dimension géographique que la dimension économique de l’usage du signe étaient conformes aux normes:
Signe antérieur Affaire n°
GLADIATOR (marque non enregistrée en République tchèque) R-1529/2010-1
Les quelque 230 factures sont suffisantes pour conclure que le signe «GLADIATOR» a été utilisé dans la vie des affaires pour des «véhicules tout-terrain». Elles sont adressées aux clients de l’opposant dans des villes tchèques comme «Prague», «Kraslice», «Dolnì Lánov», «Pelhrimov», «Opava», «Bozkov», «Plzen» et de nombreuses autres villes couvrant de multiples régions de la République tchèque. De surcroît, les catalogues et les magazines «4x4 Style» de 2007 sont écrits en langue tchèque et il est très probable qu’ils soient distribués en différents endroits de la République tchèque. Les documents tels que la liste des distributeurs, les catalogues et les magazines étayent les conclusions selon lesquelles le signe a été utilisé dans la vie des affaires (paragraphes 22 à 33).
Signe antérieur Affaire n°
«FORGE DE LAGUIOLE» (raison sociale française)
R-181/2007-1 (recours T-453/11)
La raison sociale «FORGE DE LAGUIOLE», que la demanderesse en nullité a adoptée en 1994, apparaît sur tous les documents fournis, en particulier sur les statuts et sur l’extrait du certificat d’immatriculation de la société, sur le papier à en-tête de la société, sur les barèmes de prix de 1998, ainsi que sur la correspondance et les factures, datées de 1998, envoyées à des destinataires dans la France entière. L’expansion très rapide des activités et du réseau de ventes de la demanderesse en nullité, ainsi que de son chiffre d’affaires, est démontrée par les documents produits. Il ressort clairement de la liste des clients pour 2001 que la demanderesse a développé une clientèle qui couvre l’ensemble du territoire français. Cette conclusion est aussi confirmée par les factures produites, établies au nom de clients de la France entière, ainsi que d’autres pays européens. Enfin, il est établi que la société est citée dans un certain nombre d’articles, tant dans la presse française que dans la presse européenne et internationale (paragraphes 52 à 68).
Signe antérieur Affaire n°
«PORTO» (appellation d’origine portugaise)
Opposition B-998 510 (confirmée par la décision de la chambre de
recours R-1101/2009-2)
Les éléments de preuve produits, ainsi que le volume et le contenu de la législation, de la réglementation et des certificats d’immatriculation, indiquent que le porto a été et est encore utilisé comme une appellation d’origine pour du vin. Il ressort clairement de l’ensemble des éléments de preuve que la portée de l’appellation d’origine n’est pas seulement locale, mais a au contraire un impact international, tel que le reflète son histoire et son usage comme moyen d’attirer des touristes. La promotion de l’appellation d’origine s’est notamment déroulée par l’intermédiaire des établissements «SOLAR DO VINHO DO PORTO» à Lisbonne et Porto, ainsi que par l’intermédiaire de «PORT WINE ROUTE», dans la région du Douro. Compte tenu de ce qui précède, l’Office conclut que l’opposant a démontré avoir utilisé ses appellations d’origine dans la vie des affaires et que l’usage n’était pas de portée seulement locale.
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Signe antérieur Affaire n°
BRADBURY (marque non enregistrée au Royaume-Uni) R-66/2008-2
S’agissant de l’image de la marque, la chambre de recours a retenu que les éléments de preuve produits par l’opposant sont suffisants pour démontrer que le signe non enregistré BRADBURY bénéficie d’une image de marque: 1) Les factures produites illustrent les ventes d’une gamme de produits à différentes entités au Royaume-Uni et dans d’autres pays. 2) Les montants de ces factures sont compris entre un peu plus de 100 GBP et plusieurs milliers de GBP. Ces éléments de preuve démontrent des ventes de produits revêtus de la marque antérieure non enregistrée à différentes entités. 3) Les déclarations et l’étude de marché montrent également que le signe a bénéficié d’un niveau de reconnaissance auprès du public pertinent à l’égard des produits du titulaire du droit. 4) Le fait que le signe apparaisse sur un certain nombre de catalogues et publicités et que des centres de service après-vente soient situés dans plusieurs municipalités et villes importantes dans tout le Royaume-Uni démontre que la marque a été portée à l’attention d’un large public en termes de portée géographique (paragraphes 31-33).
Signe antérieur Affaire n°
«GOLDEN ELEPHANT, marque figurative» (marque non enregistrée au Royaume-Uni) T-303/08
La partie se fondant sur la marque antérieure non enregistrée a constamment vendu du riz sous le signe depuis 1988, c’est-à-dire pendant une période de huit ans avant la date de dépôt de la demande de la marque communautaire litigieuse par la demanderesse. La quantité de riz vendue, située entre 42 et 84 tonnes par an de 1988 à 1996, ne peut pas être considérée comme tout à fait insignifiante. Le seul fait que la part de marché de la partie est très faible par rapport au montant total des importations de riz au Royaume-Uni ne suffit pas à considérer que les ventes de riz se situent en dessous du seuil minimal. Dans ce cadre, il convient de souligner que les juridictions du Royaume-Uni ont beaucoup de réticence à juger qu’une entreprise peut avoir des clients mais pas de goodwill. «À supposer même que ce goodwill doive être considéré comme faible en raison de la quantité limitée des ventes, il ne saurait en tout état de cause être considéré comme inexistant» (points 112-116).
S’agissant de la dimension géographique de l’usage du signe, en général, ni le territoire d’une seule ville, aussi grande fût-elle, ni un district régional ni une province n’ont une portée qui n’est pas seulement locale. Il dépendra des circonstances de l’affaire (voir exemples ci-dessous). L’arrêt déterminant à cet égard est celui rendu par le Tribunal dans l’affaire «GENERAL OPTICA»; l’usage du signe était confiné à une localité spécifique et, partant, était insuffisant pour satisfaire aux exigences prescrites:
Signe antérieur Affaire n°
Generalóptica (nom d’établissement portugais) Affaires jointes T-318/06 à T-321/06
Il ne ressort pas des preuves fournies par l’opposant que la portée du signe invoqué en l’espèce n’est pas seulement locale au sens de l’article 8, paragraphe 4, du RMC. Ainsi que la chambre de recours l’a constaté au paragraphe 33 des décisions attaquées, il résulte des documents présentés par l’opposant, que, au moment de demander l’enregistrement des deux premières marques communautaires, le signe en question n’était utilisé depuis presque dix ans que pour désigner un établissement ouvert au public dans la localité portugaise de Vila Nova de Famalicão, laquelle compte 120 000 habitants. Malgré ses explications lors de l’audience, la requérante n’a apporté aucun élément permettant d’attester de sa connaissance parmi les consommateurs, ni de ses rapports commerciaux en dehors de la localité susmentionnée. De même, la requérante n’a pas démontré qu’elle ait développé une quelconque activité publicitaire afin d’assurer la promotion de son établissement en dehors de ladite ville. Il y a donc lieu d’estimer que le nom d’établissement Generalóptica a une portée strictement locale au sens de l’article 8, paragraphe 4, du RMC (point 44).
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Signe antérieur Affaire n°
FORTRESS FORTRESS INVESTMENTS
FORTRESS INVESTMENT GROUP (marques non enregistrées au Royaume-Uni)
R-354/2009-2
R-355/2009-2
Le fait que la demanderesse en nullité a été impliquée dans l’acquisition, la location et la gestion de portefeuilles de biens nationaux d’institutions et de sociétés britanniques majeures prouve que l’usage n’était pas de portée seulement locale. Il est pertinent que l’usage soit limité à Londres dans le sens où Londres est le siège de presque toutes les institutions et entités gouvernementales et le lieu d’implantation de la City, l’un des premiers centres financiers au monde. La dimension économique de la portée du signe a été importante puisque, au milieu des années 2000, la demanderesse en nullité gérait déjà plus d’un milliard de dollars US de capitaux propres. De surcroît, le groupe de destinataires connaissant le signe était important puisqu’il incluait les principaux acteurs du secteur financier et des institutions publiques britanniques. L’exposition donnée au signe est elle aussi importante, comme le démontre la couverture de presse nationale et spécialisée. Partant, l’usage dans la vie des affaires n’a pas une portée seulement locale (paragraphes 49-51).
La notion selon laquelle l’usage dans la vie des affaires du signe invoqué doit être prouvé sur le territoire de l’État membre ou des États membres dans lequel ou lesquels la protection est demandée n’est pas incompatible avec l’usage du signe en relation avec des transactions commerciales transfrontalières:
Signe antérieur Affaire n°
GRAIN MILLERS (nom commercial allemand) T-430/08
L’utilisation d’un nom commercial dans le cadre de l’importation de produits depuis un autre État membre (en l’espèce, des documents relatifs à la transaction conclue par l’opposant concernant l’importation de blé de Roumanie en Allemagne) constitue effectivement un usage dans le contexte d’une activité commerciale visant à un avantage économique dans la mesure où l’import-export constitue une activité normale et courante d’une entreprise, impliquant nécessairement au moins deux États (point 41).
Dans les exemples ci-dessous, l’opposant n’avait pas démontré que la dimension économique de l’usage des signes concernés était suffisante pour satisfaire aux exigences légales en vigueur:
Signe antérieur Affaire n°
BUD (appellation d’origine)
T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, T- 309/06 RENV
Quatre factures d’un montant très faible concernant uniquement trois villes et dépourvues de toute publicité ne remplissaient pas la condition relative à l’usage dans la vie des affaires d’un signe dont la portée n’est pas seulement locale (point 56). La même conclusion s’appliquait à l’Autriche, le Tribunal ayant estimé que l’utilisation était limitée à des livraisons de 12 à 25 hectolitres par an, pour un chiffre d’affaires minime (environ 1 200 EUR) et effectuées presqu’exclusivement à Vienne (points 59 à 61).
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Signe antérieur Affaire n°
BRIGHTON (marque non enregistrée dans plusieurs États
membres) R-408/2009-4
Le graphique des ventes fourni par l’opposant montre que les activités commerciales dans les États membres concernés ne sont pas constantes dans le temps dans la mesure où aucune vente n’a été réalisée certaines années et les recettes sont effectivement très faibles pour d’autres. Partant, les chiffres des ventes montrent que l’opposant n’était pas capable de maintenir une intensité de l’usage des signes au cours de trois années consécutives. Dans cette situation, il est peu probable que le public ait été en mesure de mémoriser la marque comme une indication d’origine. L’opposant n’a pas présenté de preuves concernant la publicité et la promotion des marques effectuées dans les États membres concernés, ou d’autres éléments montrant que les signes en question se sont établis sur le marché dans une mesure insuffisante pour justifier l’acquisition de droits exclusifs afférents à des marques non enregistrées (paragraphes 12-21).
Signe antérieur Affaire n°
(marque grecque non enregistrée)
R-242/2010-1
Bien que les documents confirment que la portée géographique de la marque est la Grèce, les preuves relatives à la période de l’usage allégué sont manifestement insuffisantes. Le document le plus récent date de 1997, soit sept ans avant le dépôt de la demande contestée. De plus, les documents les plus récents sur lesquels apparaît la marque «ESKIMO» sont les factures datées de 1991 à 1994, qui ne reflètent que les ventes d’un peu moins de 100 unités au cours de ces quatre années, ce qui ne peut être jugé suffisant pour démontrer l’usage de la marque par l’opposant comme identificateur d’entreprise (paragraphes 27 et 28).
Signe antérieur Affaire n°
Up Way Systems – Representaçoes Unipessoal LDA (raison sociale portugaise) R-274/2012-5
Trois factures, adressées à des sociétés dans la région de Porto au Portugal, pour un montant total de 16 314 EUR, ne suffisent pas à démontrer que le signe a été utilisé dans la vie des affaires compte tenu du niveau de prix des matériaux de construction et des services de construction en général (paragraphes 20-23).
Pour que l’article 8, paragraphe 4, du RMC puisse être invoqué, l’usage d’un signe doit avoir lieu conformément à la fonction essentielle de ce signe. Cela signifie que si un opposant se fonde sur une marque non enregistrée, la preuve de l’usage du signe comme raison sociale ne suffit pas pour étayer le droit antérieur.
Dans l’exemple ci-dessous, la preuve démontre l’usage d’un signe dont la fonction ne correspond pas à celle du signe invoqué:
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Signe antérieur Affaire n°
JAMON DE HUELVA (nom commercial espagnol) R-1714/2010-4
La preuve fournie pour étayer l’usage de «Jamón de Huelva» concerne presque exclusivement la désignation d’origine «Jamón de Huelva». Les désignations d’origine sont des concepts juridiques très différents des appellations commerciales puisque, au lieu d’identifier une origine commerciale particulière, il s’agit d’indications géographiques relatives à un produit agricole ou alimentaire dont les qualités ou caractéristiques sont essentiellement ou exclusivement dues à l’environnement géographique dans lequel ils sont produits, traités ou préparés. Il convient de rejeter l’opposition fondée sur l’usage en Espagne du nom commercial «Jamón de Huelva» au motif que les preuves fournies ne portent pas sur ce concept juridique et n’identifient pas une activité commerciale particulière, mais plutôt des activités relatives à une désignation d’origine et le commissariat aux comptes afférent (paragraphes 34-37).
L’exigence selon laquelle le signe doit être utilisé dans la vie des affaires pour sa propre fonction économique spécifique n’exclut pas que ce même signe puisse être utilisé à d’autres fins.
Il est de pratique courante sur le marché d’utiliser une raison sociale ou un nom commercial comme une marque, seul ou en association avec d’autres identificateurs de produits. C’est le cas des «marques génériques», c’est-à-dire des indications qui coïncident généralement avec la raison sociale ou le nom commercial du fabriquant et qui non seulement identifient le produit ou le service en tant que tel, mais établissent aussi un lien direct entre une ou plusieurs gammes de produits/services et une entreprise particulière.
Partant, selon les circonstances particulières de l’affaire, dans une affaire dans laquelle un opposant se fonde sur une marque non enregistrée, l’usage du même signe comme raison sociale ou nom commercial peut également remplir la fonction d’indication de l’origine des produits ou services concernés (et donc la fonction de marque), pour autant que le signe soit utilisé de façon à établir un lien entre le signe qui constitue la raison sociale ou le nom commercial de l’entreprise et les produits commercialisés ou les services fournis (voir, par analogie, l’arrêt du 11 septembre 2007, C-17/06, «CÉLINE», points 22 et 23).
3.4 Droit antérieur
Le droit invoqué au titre de l’article 8, paragraphe 4, du RMC doit être antérieur à la demande de marque communautaire. Pour déterminer quel droit litigieux est le plus ancien, il convient de comparer les dates pertinentes auxquelles les droits ont été acquis.
Pour la demande de marque communautaire, il s’agit de la date de dépôt ou de toute date de priorité invoquée valablement (ci-après la «date de la marque communautaire»). Les revendications d’ancienneté, même si elles concernent l’État membre dans lequel l’existence de l’autre droit antérieur est invoquée, ne sont pas pertinentes.
S’agissant du droit visé à l’article 8, paragraphe 4, du RMC, la date décisive est la date pertinente d’acquisition de droits exclusifs en vertu de la législation nationale [voir l’arrêt du 7 mai 2013, T-579/10 «makro», dans lequel le Tribunal a
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confirmé le rejet par la chambre des preuves présentées par le demandeur en nullité, qui portaient sur des périodes ultérieures à la demande de marque communautaire du titulaire (point 70)].
Si la législation nationale dispose qu’un simple usage suffit, celui-ci doit avoir débuté avant la date de la marque communautaire. Si une reconnaissance dans la vie des affaires ou une réputation sont requises, celles-ci doivent avoir été acquises avant la date de la marque communautaire. Lorsque ces conditions ne sont satisfaites qu’après la date de la marque communautaire, l’opposition doit être rejetée.
3.5 Étendue de la protection
Les droits antérieurs relevant de l’article 8, paragraphe 4, du RMC, sont uniquement protégés s’ils confèrent à leurs titulaires, en vertu de la législation applicable, le droit d’interdire l’usage d’une marque antérieure.
Á cette fin, il est nécessaire de prouver, de manière abstraite, qu’en vertu du droit national applicable, des droits tels que ceux en cause sont des droits exclusifs qui peuvent faire l’objet d’une exécution à titre conservatoire contre des marques plus récentes, ainsi que de prouver que, dans l’affaire en cause, les conditions pour obtenir une ordonnance de référé étaient réunies (étendue de la protection), si la demande de marque communautaire contestée était utilisée sur le territoire en question. Les deux questions doivent être tranchées en fonction du droit applicable. L’Office appliquera la législation des États membres, le droit communautaire ou des accords internationaux.
Pour de nombreux droits, voire la plupart des droits relevant de l’article 8, paragraphe 4, du RMC, les prérequis des réglementations nationales sont assez similaires à ceux utilisés pour la résolution des conflits entre marques bien connus des examinateurs de l’Office, à savoir le risque de confusion, l’atteinte à la renommée ou au caractère distinctif.
Par exemple, les marques non enregistrées sont généralement protégées contre les marques plus récentes dans le cas où il existerait un risque de confusion et, dès lors, selon les critères applicables aux conflits entre les marques enregistrées, à savoir l’identité ou la similitude des signes, l’identité ou la similitude des produits ou services, etc. Dans ces cas, les critères retenus par les tribunaux et par l’Office pour l’application de l’article 8, paragraphe 1, du RMC, peuvent être aisément transposés à l’article 8, paragraphe 4, du RMC, à moins que la partie puisse s’appuyer sur une jurisprudence pertinente des tribunaux nationaux démontrant une approche différente.
Lorsque la législation nationale applicable accorde aux marques non enregistrées une protection différente de celle prévue à l’article 8, paragraphe 1, du RMC, l’étendue de la protection du droit antérieur invoqué est fonction des dispositions de la législation nationale. Si, par exemple, la législation nationale applicable accorde également, sous certaines conditions, la protection aux marques non enregistrées pour des produits et services différents, la même protection sera octroyée au titre de l’article 8, paragraphe 4, du RMC.
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4 Preuve de la législation applicable au signe
4.1 La charge de la preuve
Conformément à l’article 76, paragraphe 1, du RMC, dans toutes les affaires inter partes, il revient à la partie formulant une réclamation ou une allégation particulière de fournir à l’Office les faits et arguments nécessaires pour étayer la réclamation. Contrairement aux autres motifs visés à l’article 8 du RMC, l’article 8, paragraphe 4, du RMC ne précise pas les conditions régissant l'acquisition et l'étendue de la protection du droit antérieur invoqué. Il s'agit d'une disposition-cadre, et il appartient à l'opposant de produire les dispositions pertinentes de la législation applicable.
La règle 19, paragraphe 2, point d), du REMC prévoit que si une opposition est fondée sur l’existence d’un droit antérieur au sens de l’article 8, paragraphe 4, du RMC, l’opposant doit produire la preuve de son acquisition, de sa permanence et de l’étendue de la protection de ce droit.
Il ressort de la législation telle qu’interprétée par le Tribunal qu’il incombe à l’opposant de s’appuyer sur la législation nationale pertinente et de démontrer qu’il aurait réussi à interdire l’usage d’une marque plus récente en vertu de cette législation nationale:
À cet égard, il convient de rappeler que l’article 8, paragraphe 4, point b), du RMC énonce la condition aux termes de laquelle, selon le droit de l’État membre qui est applicable au signe invoqué au titre de cette disposition, ce signe donne à son titulaire le droit d’interdire l’usage d’une marque plus récente.
En outre, conformément à l’article 74, paragraphe 1 [article 76, paragraphe 1 actuel], du RMC, la charge de prouver que cette condition est remplie incombe à l’opposant devant l’OHMI.
Dans ce contexte et s’agissant des droits antérieurs invoqués..., il convient de tenir compte, notamment, de la réglementation nationale alléguée au soutien de l’opposition et des décisions juridictionnelles rendues dans l’État membre concerné et que, sur ce fondement, l’opposant doit démontrer que le signe en cause entre dans le champ d’application du droit de l’État membre invoqué et qu’il permet d’interdire l’usage d’une marque plus récente.
(Voir l’arrêt du 29 mars 2011, C-96/09 P, «BUD», points 188 à 190.)
Le Tribunal a estimé que, dans les demandes en nullité présentées au titre de l’article 53, paragraphe 2, du RMC, il appartient à la partie qui entend se prévaloir d'un droit antérieur protégé par la législation nationale
de présenter à l’OHMI non seulement les éléments démontrant qu’il remplit les conditions requises, conformément à la législation nationale dont il demande l’application, afin de pouvoir faire interdire l’usage d’une marque communautaire en vertu d’un droit antérieur, mais aussi les éléments établissant le contenu de cette législation»
(Voir les arrêts du 5 juillet 2011, C-263/09 P, «Elio Fiorucci», point 50, et du 27 mars 2014, C-530/12 P, «Représentation d’une main», point 34.)
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Bien que ces arrêts fassent référence à la procédure de nullité visée à l’article 53, paragraphe 2, du RMC, étant donné que l’article 8, paragraphe 4, concerne également l’application de droits antérieurs protégés en vertu de la législation européenne ou du droit de l’État membre applicable au signe en cause, la jurisprudence citée s’applique également aux oppositions formées au titre de l’article 8, paragraphe 4, du RMC.
Les informations relatives à la législation applicable doivent permettre à l’Office de comprendre et d’appliquer le contenu de cette législation, les conditions d’obtention de la protection et l’étendue de celle-ci, et permettre au demandeur d’exercer son droit de défense. Il peut également s’avérer particulièrement utile de présenter des preuves de la jurisprudence pertinente et/ou de la jurisprudence interprétant la législation invoquée.
L’Office doit évaluer de manière efficace l’applicabilité du motif de refus invoqué. Afin de garantir l’application correcte du droit invoqué, il a le pouvoir de vérifier, par tout moyen qu’il juge approprié, la teneur, les conditions d’application et la portée des dispositions du droit applicable invoqué par l’opposant (voir l’arrêt du 27 mars 2014, C-530/12 P, «Représentation d’une main», points 44 à 46), tout en respectant le droit des parties d’être entendues. Si, après vérification des preuves présentées, l’Office est d’avis que l’interprétation ou l’application du droit invoqué proposée par les parties est inexacte, il peut produire des éléments nouveaux et/ou supplémentaires. Afin de respecter le droit des parties d’être entendues, l’Office les invitera à formuler des observations sur ces éléments, le cas échéant.
Ce pouvoir de vérification se limite à garantir l’application correcte de la législation dont se prévaut l’opposant. Par conséquent, il n’exonère par l’opposant de la charge de la preuve et ne peut servir à le remplacer en ce qui concerne son obligation de citer la législation pertinente aux fins de l’affaire (voir la décision du 2 juin 2014, R 1587/2013-4 «GROUP», paragraphe 26, et la décision du 30 juin 2014, R 2256/2013-2, «ENERGY», paragraphe 26).
4.2 Moyens et niveau de preuve
Conformément à l’article 8, paragraphe 4, du RMC, le droit applicable peut être le droit d’un État membre ou la législation de l’Union européenne.
4.2.1 Droit national
Concernant le droit national, l’opposant doit produire:
a) les dispositions du droit applicable:
sur les conditions d’acquisition des droits (s’il existe une exigence d’usage et, dans l’affirmative, le niveau d’usage requis; s’il existe une exigence d’enregistrement, etc.); et
sur l’étendue de la protection du droit (si elle confère le droit d’interdiction de l’usage; les préjudices envers lesquels la protection est accordée, par exemple le risque de confusion, une représentation trompeuse, un avantage indu, l’évocation);
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b) les éléments prouvant le respect des conditions:
d’acquisition (habilitation; acquisition antérieure; si le droit antérieur est en vigueur ou non; preuve de l’usage s’il est fondé sur l’usage; preuve de l’enregistrement s’il est fondé sur l’enregistrement, etc.); et
de l’étendue de la protection (faits, preuves et/ou arguments selon lesquels les exigences fixées par la législation applicable pour une interdiction de l’usage sont satisfaites, par exemple la nature des produits, des services ou de l’activité commerciale protégés par le droit antérieur et leur lien avec les produits ou services contestés; un argument pertinent démontrant l’existence d’un risque de préjudice).
Tout d’abord, en ce qui concerne les dispositions du droit applicable [voir point a) ci-dessus], l’opposant doit fournir la référence à la législation applicable invoquée et son contenu. Il doit fournir la référence à la disposition juridique pertinente (le numéro de l’article ainsi que le numéro et l’intitulé de la législation) et le contenu (texte) de cette disposition juridique, soit dans ses observations, soit en les soulignant dans une autre publication jointe aux observations (par exemple, des extraits d’un journal officiel, un commentaire juridique ou une décision judiciaire). Si la disposition pertinente renvoie à une autre règle de droit, celle-ci doit également être produite afin de permettre au demandeur et à l’Office de comprendre tout le sens de la disposition invoquée et de déterminer l’éventuelle pertinence de cette autre règle.
L’opposant étant tenu de prouver le contenu de la législation applicable, il doit la produire dans la langue d’origine. Si cette langue n’est pas la langue de la procédure, il doit également fournir une traduction complète des dispositions juridiques invoquées conformément aux règles usuelles en matière de justification. Cependant, une simple traduction du droit applicable ne constitue pas en soi une preuve et ne saurait remplacer l’original. Par conséquent, la traduction seule n’est pas considérée comme suffisante pour démontrer la pertinence du droit invoqué. Voir la règle 19, paragraphe 2, point d), du REMC, qui exige que la preuve soit produite, et la règle 19, paragraphe 3, du REMC, qui exige que les traductions soient produites dans le délai fixé pour la production du document original.
Lorsque l’opposant entend se prévaloir de la jurisprudence nationale interprétant la législation invoquée, il doit produire des informations pertinentes suffisamment détaillées (par exemple une copie de la décision invoquée ou des extraits des commentaires juridiques) et pas uniquement des références à une publication. Les règles en matière de traduction s’appliquent également à ces preuves.
En second lieu, en ce qui concerne les éléments prouvant le respect des conditions de la législation applicable [voir point b) ci-dessus], outre les preuves pertinentes d’acquisition du droit invoqué, l’opposant doit présenter des preuves attestant que les conditions de protection vis-à-vis de la marque contestée sont effectivement satisfaites et, plus particulièrement, avancer des arguments pertinents quant aux raisons pour lesquelles il aurait réussi à interdire l’usage de la marque contestée en vertu de la législation applicable. La simple production de la législation nationale n’est pas considérée comme suffisante, car il n’appartient pas à l’Office d’avancer des arguments pertinents en lieu et place de l’opposant.
En outre, dans une opposition en vertu de l’article 8, paragraphe 4, du RMC, ce qui importe est de savoir si les dispositions pertinentes de la législation conférant à l’opposant le droit d’interdire l’usage d’une marque plus récente s’appliqueraient à la marque contestée de manière abstraite, et non de savoir si l’usage de la marque
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contestée pourrait être réellement interdit. Par conséquent l’argument invoqué par le demandeur dans sa défense, selon lequel l’opposant n’avait jusque-là pas invoqué ou pas été en mesure d’interdire l’usage concret de la marque contestée sur le territoire pertinent ne peut être retenu (voir l’arrêt du 29 mars 2011, C-96/09 P, «BUD», points 191 et 193).
Un tableau de synthèse présentant les informations essentielles des législations nationales applicables dans les États membres est annexé à la fin de cette section des directives, à titre purement informatif. Ce tableau contenant une description des dispositions juridiques à des fins purement informatives, une simple référence à celui-ci n’exonère par l’opposant de l’obligation de prouver que la législation pertinente applicable au signe lui confère le droit d’interdire l’usage d’une marque plus récente, comme décrit ci-dessus [voir la décision du 22 janvier 2013, R 1182/2011-4, «Crown Lounge (marque fig.)», paragraphes 48 à 50].
Sur la base de ce qui précède, l’Office rejette l’opposition si:
l’opposant invoque un droit mais n’inclut pas de référence à une législation nationale spécifique et/ou à une disposition juridique protégeant ce droit (par exemple, l’opposant indique uniquement que l’opposition est fondée sur une désignation commerciale en Allemagne ou que l’opposition fondée sur une désignation commerciale en Allemagne est protégée en vertu de la loi allemande relative aux marques); ou
l'opposant fournit une référence à la législation nationale et aux dispositions juridiques applicables, mais cette référence est incomplète: les dispositions juridiques indiquent uniquement les conditions régissant l’acquisition du droit mais pas l’étendue de la protection de ce droit (ou inversement) (par exemple, l’opposant indique que l’opposition est fondée sur une désignation commerciale en Allemagne protégée en vertu de l’article 5 de la loi allemande relative aux marques, qui fixe les conditions d’acquisition du droit, mais la référence aux conditions concernant l’étendue de la protection, à savoir l’article 15 de la loi allemande relative aux marques, fait défaut); ou
l’opposant fournit la référence à la disposition juridique pertinente mais ne produit pas le contenu (libellé) de la disposition juridique (par exemple, les observations de l’opposant font référence à la loi allemande relative aux marques mais n’incluent pas le contenu de cette loi); ou
l’opposant ne fournit le contenu de la disposition juridique que dans la langue de la procédure et non dans la langue d’origine (par exemple, la langue de la procédure est l’anglais, mais le texte de la loi allemande n’est produit qu’en anglais, et non en allemand); ou
l’opposant ne fournit pas ou pas suffisamment de preuves de l’acquisition du droit invoqué ou ne fournit pas d’arguments quant aux raisons pour lesquelles il satisfait aux conditions régissant l’étendue de la protection (par exemple, l’opposant fait référence aux dispositions juridiques pertinentes et fournit leur contenu dans la langue d’origine et leur traduction dans la langue de procédure, mais ne fournit pas ou pas suffisamment de preuves de l’acquisition de la protection ou n’indique pas si le droit satisfait aux conditions sur l’étendue de la protection).
4.2.2 Droit de l’Union européenne
Les exigences visées ci-dessus s’appliquent également au droit de l’Union européenne, hormis le fait que l’opposant n’est pas tenu de produire le contenu (libellé)
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de l’acte invoqué. L’opposant doit cependant produire les éléments prouvant le respect des conditions fixées dans les dispositions pertinentes du droit de l’Union européenne [point b) ci-dessus].
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TABLEAU SUR LES DROITS NATIONAUX CONSTITUANT DES «DROITS ANTÉRIEURS»AU SENS DE L’ARTICLE 8,
PARAGRAPHE 4, DU RMC
DOCUMENT D’INFORMATION20
1 Benelux 35
2 Bulgarie 36
3 Républiquetchèque 37
4 Danemark 38
5 Allemagne 39
6 Estonie 42
7 Irlande 43
8 Grèce 44
9 Espagne 46
10 France47
11 Croatie 48
12 Italie 49
13 Chypre 50
14 Lettonie 50
15 Lituanie 51
16 Hongrie 52
17 Malte 52
18 Autriche 54
19 Pologne 55
20 Portugal 56
21 Roumanie 58
22 Slovénie 59
23 Slovaquie 59
24 Finlande 61
25 Suède 63
26 Royaume-Uni63
20 Le contenu du tableau est en grande partie basé sur les informations et les avis communiqués par les offices des marques et des associations d'usagers en 2013/2014. Cependant, ce tableau n'est pas une source légale et il est mis à disposition uniquement à titre d'information. Il est possible qu’il ne contienne pas les dernières évolutions législatives ni une liste exhaustive de tous les droits antérieurs nationaux qui peuvent être invoqués en vertu de l'article 8, paragraphe 4, du RMC.
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1 Benelux
1.1 Marques non enregistrées
Les marques non enregistrées ne sont pas reconnues au titre de la convention Benelux uniforme en matière de propriété intellectuelle (la «CBPI»).
1.2 Autres signes utilisés dans la vie des affaires
Pour le territoire du Benelux, chaque État doit être considéré séparément.
1.2.1 Belgique
Nom commercial / dénomination sociale
Article 2.19 de la CBPI. Article 95 de la loi du 6 avril 2010 relative aux pratiques du marché et à la protection du consommateur. Article 1382 du code civil.
Conditions de protection
Le nom commercial est acquis par son premier usage dans la vie des affaires. La protection est limitée à la zone géographique dans laquelle le nom commercial ou la dénomination sociale est utilisé.
La dénomination sociale est acquise en principe à compter de la date d’établissement de la société. La protection s’étend à l’ensemble du territoire national.
Droits conférés
Droit d’interdire l’usage de marques (enregistrées) plus récentes.
1.2.2 Luxembourg
Nom commercial / dénomination sociale
Article 2.19 de la CBPI. Article 14 de la 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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Droits conférés
Droit d’interdire l’usage de marques (enregistrées) plus récentes.
1.2.3 Pays-Bas
Nom commercial
Article 2.19 de la CBPI. Loi du 5 juillet 1912 relative aux noms commerciaux (Handelsnaamwet). Article 6:162 du code civil néerlandais (Burgerlijk Wetboek).
Conditions de protection
Le droit est acquis par le premier usage du nom commercial dans la vie des affaires. La protection est limitée à la zone géographique dans laquelle le nom commercial est utilisé. Les noms commerciaux peuvent être inscrits volontairement au registre du commerce auprès de la chambre de commerce, mais une telle inscription ne confère aucun droit au titulaire. Il n’existe pas d’exigence particulière imposant au nom commercial un caractère distinctif et l’absence de caractère descriptif.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques (enregistrées) plus récentes. b) Un risque de confusion doit être constaté.
2 Bulgarie
2.1 Marques non enregistrées
En Bulgarie, les marques non enregistrées sont protégées de deux façons.
Marques non enregistrées
Article 12, paragraphe 6, de la loi bulgare relative aux marques et indications géographiques (2010).
Conditions de protection
La marque doit avoir été utilisée dans la vie des affaires sur le territoire de la Bulgarie avant la date de dépôt de la marque contestée.
Droits conférés a) et conditions b)
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a) Droit d’interdire l’enregistrement d’une marque plus récente. b) La marque plus récente doit être identique ou similaire et couvrir des produits
et/ou services identiques ou similaires.
Marques notoirement connues
Article 12, paragraphe 2, point 7, de la loi bulgare relative aux marques et indications géographiques (2010).
Conditions de protection
La marque doit être notoirement connue sur le territoire de la Bulgarie au sens de l’article 6 bis de la Convention de Paris avant le dépôt de la marque contestée.
Droits conférés a) et conditions b)
a) Droit d’interdire l’enregistrement d’une marque plus récente. b) La marque plus récente doit être identique ou similaire et couvrir des produits
et/ou services identiques ou similaires.
2.2 Autres signes utilisés dans la vie des affaires
Les autres signes utilisés dans la vie des affaires ne sont pas inclus dans la législation bulgare relative aux marques comme des droits antérieurs pouvant servir de fondement à une opposition.
3 République tchèque
3.1 Marques non enregistrées
Les marques non enregistrées sont protégées en République tchèque:
Article 7, paragraphe 1, point g), de la loi tchèque relative aux marques (CZ-LM).
Conditions de protection
Les signes non enregistrés doivent avoir acquis un caractère distinctif par un usage dans la vie des affaires, d’une portée qui ne soit pas seulement locale, avant le dépôt de la demande contestée.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 38
FINAL VERSION 1.0 01/08/2015
b) Les signes doivent être identiques ou similaires (interprétés comme un risque de confusion) et couvrir des produits et/ou services identiques ou similaires. L’étendue de la protection est la même que pour une marque enregistrée en République tchèque.
3.2 Autres signes utilisés dans la vie des affaires
Article 7, paragraphe 1, point g), CZ-LM
Noms commerciaux et autres signes associés (par exemple noms d’organisations non commerciales)
Conditions de protection
Ces noms/signes doivent avoir acquis un caractère distinctif par un usage dans la vie des affaires, d’une portée qui ne soit pas seulement locale, avant le dépôt de la demande contestée.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Les signes doivent être identiques ou similaires (interprétés comme un risque
de confusion) et couvrir des produits et/ou services identiques ou similaires. L’étendue de la protection est la même que pour une marque enregistrée en République tchèque.
4 Danemark
4.1 Marques non enregistrées
Les marques non enregistrées sont protégées au Danemark:
Article 3, paragraphe 1, point ii), de la loi danoise relative aux marques (DK-LM). Article 4, paragraphes 1 et 2, et article 15, paragraphe 4, point ii), DK-LM.
Conditions de protection
Les droits relatifs à une marque non enregistrée sont acquis à compter du début de l’usage de la marque au Danemark.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques (enregistrées) plus récentes. b) La marque non enregistrée doit continuer à être utilisée pour les produits et/ou
services pour lesquels elle a été utilisée la première fois. L’étendue de la
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 39
FINAL VERSION 1.0 01/08/2015
protection est la même que pour les marques danoises enregistrées, c’est-à- dire qu’elle correspond à l’article 9, paragraphe 1, points a), b) et c), du RMC.
4.2 Autres signes utilisés dans la vie des affaires
Dénominations sociales
Le terme «dénomination sociale» doit être interprété de façon large et couvre non seulement les entreprises privées, telles que les sociétés privées, sociétés à responsabilité limitée, autres sociétés commerciales et noms commerciaux secondaires, mais aussi les fondations, unions, associations, musées et institutions publiques.
Article 18 de la loi danoise relative aux pratiques de marketing. Article 2, point ii), de la loi danoise sur les sociétés. Article 6, point ii), de la loi consolidée relative à certaines entreprises commerciales.
Conditions de protection
La protection des dénominations sociales ne requiert pas d’enregistrement, mais la personne concernée doit avoir un titre légal pour la dénomination sociale.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques (enregistrées) plus récentes. b) Les signes doivent être identiques ou similaires.
Signes utilisés dans la vie des affaires, tels que les noms commerciaux et les façades de magasins
Le terme «signes utilisés dans la vie des affaires» doit être interprété largement et couvre, conformément à la législation danoise, toute signification commerciale ou tout symbole commercial qui permet d’établir un lien entre une entreprise et ses clients/utilisateurs, y compris, entre autres, les noms commerciaux et les façades de magasins.
Article 18 de la loi danoise relative aux pratiques de marketing.
5 Allemagne
5.1 Marques non enregistrées
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 40
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Article 4, point 2, de la loi allemande relative aux marques (DE-LM), articles 12 et 14 DE-LM
Conditions de protection
La protection est acquise par l’usage qui a permis au public concerné de reconnaître le signe comme une marque (Verkehrsgeltung) (article 4, paragraphe 2, DE-LM). Selon la jurisprudence, un degré de reconnaissance de 20 % à 25 % par le public concerné est normalement suffisant et il doit être d’au moins 50 % si le signe est dépourvu de caractère distinctif.
Droits conférés a) et conditions b)
a) Droit d’interdire l’utilisation d’une marque plus récente si la reconnaissance existe dans l’ensemble de l’Allemagne. Ce n’est pas le cas si la reconnaissance n’est établie que dans une ville ou région donnée (articles 12 et 14 DE-LM).
b) Protection identique à celle des marques enregistrées en Allemagne, c’est-à- dire que la protection correspond à l’article 9, paragraphe 1, points a), b) et c), du RMC (article 14, paragraphe 2, points 1, 2 et 3 DE-LM).
5.2 Autres signes utilisés dans la vie des affaires
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 41
FINAL VERSION 1.0 01/08/2015
Article 5, paragraphes 1, 2 et 3, DE-LM
Les dénominations commerciales (geschäftliche Bezeichnungen) sont une catégorie large qui comprend les éléments suivants:
Les enseignes (Unternehmenskennzeichen) sont des signes utilisés dans la vie des affaires en tant que nom, dénomination sociale ou désignation particulière d’un établissement commercial ou d’une entreprise. Les symboles commerciaux et autres signes qui sont conçus pour distinguer un établissement commercial des autres et sont considérés comme des symboles de l’établissement commercial par le public concerné sont réputés équivalents à la désignation particulière d’un établissement commercial.
Un nom ou une entreprise est la désignation officielle ou officiellement enregistrée d’un commerçant. Un symbole commercial est un signe utilisé par un commerçant pour identifier sa société ou son entreprise en tant que telle et qui fonctionne comme le nom de la société ou de l’entreprise.
Les titres d'œuvres sont les noms ou désignations particulières d'imprimés, d'œuvres cinématographiques, les œuvres musicales, les œuvres de théâtre ou d'autres œuvres analogues. Cela peut être un travail individuel, une série de travaux, ou une publication périodique. Cela comprend également les titres des séries de radio ou de télévision, des jeux informatiques et de jeux vidéo, peut-être aussi des programmes informatiques. Il n'est pas nécessaire que l’ouvre désigné par le titre est protégé par le droit d'auteur.
Conditions de protection
Symboles de société – Si le signe présente un caractère distinctif intrinsèque, la protection est acquise par un usage dans la vie des affaires comme symbole de société. Selon la jurisprudence, le degré de caractère distinctif intrinsèque requis est faible. L’«utilisation dans la vie des affaires comme symbole de société» couvre toute activité commerciale externe en Allemagne visant à une activité commerciale à long terme. Si le signe ne présente pas de caractère distinctif intrinsèque, la protection est acquise par la reconnaissance en tant que signe de l’entreprise par le public pertinent (Verkehrsgeltung).
Symboles commerciaux et autres signes destinés à distinguer les activités commerciales – La protection est acquise par la reconnaissance en tant que signe par le public pertinent.
Les titres d'œuvres: si le titre de travail est intrinsèquement distinctif, l'acquisition par l'usage dans la vie des affaires, c'est à dire normalement à partir de l'apparition de l'œuvre. Le degré de caractère distinctif intrinsèque requis est faible. Si le titre de travail n'est pas un caractère distinctif intrinsèque, l'acquisition de ce droit par la reconnaissance du marché (Verkehrsgeltung).
Droits conférés a) et conditions b)
a) Droit d’interdire l’utilisation d’une marque plus récente. b) Risque de confusion (article 15, paragraphe 2, DE-LM); dans le cas d’une
désignation commerciale ayant acquis une renommée, si l’utilisation tirait indûment profit du caractère distinctif ou de la renommée d’une désignation commerciale ou leur portait préjudice (article 15, paragraphe 3, DE-LM).
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 42
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6 Estonie
6.1 Marques non enregistrées
Les marques non enregistrées ne sont pas protégées par la législation estonienne, à moins qu’elles ne soient considérées comme notoirement connues en Estonie au sens de l’article 6 bis de la Convention de Paris.
6.2 Autres signes utilisés dans la vie des affaires
Noms commerciaux
Article 10, paragraphes 1 et 4, de la loi estonienne relative aux marques (EST-LM).
Conditions de protection
Inscription au registre du commerce avant la date de dépôt de la demande, la date de l’enregistrement international ou la date de priorité. La protection d’un nom commercial est acquise à compter de la date d’inscription au registre du commerce.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques (enregistrées) plus récentes. b) Les signes doivent être identiques ou similaires et le domaine d’activité pour
lequel une inscription a été faite au registre commercial doit inclure les produits et/ou services pour lesquels la marque contestée est ou sera utilisée (désignation).
Noms de spécialités pharmaceutiques
Article 10, paragraphes 1 et 5, EST-LM.
Conditions de protection
Les noms doivent être enregistrés en Estonie avant la date de dépôt de la demande de marque, la date de l’enregistrement international ou la date de priorité.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques (enregistrées) plus récentes. b) Le signe contesté doit être identique ou similaire au point de prêter à confusion
avec la spécialité pharmaceutique enregistrée en Estonie et les produits pour lesquels la marque est ou sera utilisée doivent appartenir au domaine de la médecine.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 43
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7 Irlande
7.1 Marques non enregistrées
Les marques non enregistrées utilisées dans la vie des affaires sont protégées en Irlande.
Section 10, paragraphe 4, point a), IE-LM.
Conditions de protection
La marque doit être utilisée dans la vie des affaires si elle est protégée par une règle de droit, y compris la loi relative à l’usurpation (passing off).
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage d’une marque plus récente si elle est protégée par une règle de droit, en particulier la loi relative à l’usurpation («passing off»).
b) Le signe plus récent doit constituer une présentation trompeuse susceptible de conduire à une tromperie ou à une confusion, et susceptible de porter préjudice à l’image de marque ou à l’entreprise du titulaire du signe antérieur. Le demandeur doit prouver que l’image de sa marque et son entreprise ont subi ou subiront probablement un préjudice du fait des activités du défendeur.
L’action en usurpation est basée sur l’image de marque acquise par l’usage du signe antérieur. L’image de marque est parfois appelé la renommée. En Irlande, l’image de marque peut s’acquérir sans qu’il y ait nécessairement activité commerciale sur le territoire à condition que l’existence d’une renommée ou de consommateurs en Irlande puisse être prouvée. Le préjudice survient si le signe plus récent produit une représentation incorrecte susceptible de conduire à une tromperie ou à une confusion, et susceptible de porter atteinte à l’image de marque ou à l’entreprise du titulaire du signe antérieur. La loi est expliquée dans «Intellectual Property Law in Ireland» de Robert Clark, Shane Smyth, Niamh Hall, Bloomsbury Professional, 3e édition, 2010 (voir http://www.bloomsburyprofessional.com/1155/Bloomsbury-Professional- Intellectual-Property-Law-in-Ireland-3rd-edition.html). On trouvera des interprétations faisant autorité dans les arrêts de la Cour, par exemple dans les affaires C. & A. Modes contre C. & A. (Waterford) [1978] Fleet Street Reports 126; Adidas K.G. contre O’neill & Co. Limited [1983] Fleet Street Reports 76; Guiness Ireland Group contre Kilkenny Brewing Co Limited [2000] Fleet Street Reports 112; Allergan Inc. contre Ocean Healthcare Ltd [2008] IEHC 189; Jacob Fruitfield Food Group Ltd contre United Biscuits (UK) Ltd [2007] IEHC 368; et McCambridge contre Brennan Bakeries Ltd [2012] IESC 46.
7.2 Autres signes utilisés dans la vie des affaires
Enseigne utilisée dans la vie des affaires
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 44
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Section 10, paragraphes 4, point a), et 5, IE-LM
Droit d’interdire l’usage de marques plus récentes si elles sont protégées par une règle de droit, en particulier la loi relative à l’usurpation (passing off). Voir, à cet égard, les observations supra au point A.
Conditions de protection
Identiques à celles exposées au point 7.1 ci-dessus.
a) Droits conférés a) et conditions b)
Identiques à ceux exposés au point 7.1 ci-dessus.
8 Grèce
8.1 Marques non enregistrées
Il existe deux ensembles de dispositions relatives à la protection des marques non enregistrées et des signes y afférents: a) la loi relative à la marque confère au titulaire le droit d’interdire l’enregistrement d’une marque plus récente, tandis que b) la loi relative à la concurrence déloyale ainsi que d’autres dispositions spécifiques traitent de la question de l’usage. Dans la mesure où l’application complémentaire de la loi relative à la marque est généralement acceptée pour toute question qui n’est pas directement traitée dans d’autres textes législatifs, les deux ensembles de règles sont indiqués.
Article 124, paragraphe 3, point a), GR-LM (loi n° 4072/2012); article 13, paragraphe 1, de la loi n° 46/1914 relative à la concurrence déloyale
Conditions de protection
La protection est acquise par l’usage dans la vie des affaires. Si les marques non enregistrées ne présentent pas de caractère distinctif intrinsèque, elles doivent aussi être «établies sur le marché».
Droits conférés a) et conditions b)
a) Droit d’interdire l’enregistrement d’une marque plus récente. b) Usage antérieur, risque de confusion quant à l’origine.
8.2 Autres signes utilisés dans la vie des affaires
Dénominations sociales
Article 58 du code civil.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 45
FINAL VERSION 1.0 01/08/2015
Articles 4 à 8 de la loi 1089/1980, telle que modifiée par la loi 1746/1988.
Conditions de protection
La protection est acquise exclusivement par l’usage dans la vie des affaires. L’enregistrement est inopérant pour la protection, il n’est utile qu’à des fins administratives.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Usage antérieur, risque de confusion quant à l’origine.
Noms commerciaux et insignes des établissements commerciaux
Article 124, paragraphe 3, point a), GR-LM (loi n° 4072/2012). Article 13, paragraphes 1 et 2, loi n° 146/1914 relative à la concurrence déloyale.
Conditions de protection
La protection est acquise exclusivement par l’usage dans la vie des affaires. Si le nom commercial ou l’insigne ne présente pas de caractère distinctif intrinsèque, il doit aussi être «établi sur le marché».
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Usage antérieur, risque de confusion quant à l’origine.
Autres signes distinctifs
Article 124, paragraphe 3, point a), GR-LM
La forme particulière des produits ou de leur emballage, ainsi que la présentation ou la décoration particulière de ceux-ci (Iδιαίτερος διασχηματισμός, διακόσμηση).
Conditions de protection
Les signes doivent être connus dans le secteur commercial concerné en tant que signes identificateurs du produit d’un commerçant donné. La protection est acquise par l’usage dans la vie des affaires. Les signes doivent être à même d’assumer une fonction comparable à celle d’une marque (c’est-à-dire posséder un caractère distinctif conféré par un certain degré d’originalité).
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 46
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b) Usage antérieur, risque de confusion quant à l’origine.
Remarque générale: tous les signes exclusifs mentionnés ci-dessus sont également protégés au titre de l’article premier de la loi n° 146/1914 relative à la «concurrence déloyale», en particulier en ce qui concerne les infractions non couvertes par les dispositions ci-dessus (par ex., protection des signes renommés pour des produits dissemblables – atteinte au caractère distinctif ou à la renommée ou profit indu tiré de ceux-ci, c’est-à-dire lorsque le risque de confusion n’est pas pertinent).
9 Espagne
9.1 Marques non enregistrées
Les marques non enregistrées ne sont pas protégées en Espagne, à moins qu’elles ne soient considérées comme notoirement connues en Espagne au sens de l’article 6 bis de la Convention de Paris.
9.2 Autres signes utilisés dans la vie des affaires
Noms commerciaux (nombres comerciales) Article 7, paragraphe 1, points a) et b), et article 7, paragraphe 2, points a) et b), ES- LM.
Conditions de protection
Le nom doit être enregistré ou avoir été demandé auprès de l’Office espagnol des brevets et des marques.
Droits conférés a) et conditions b)
a) Droit de contester et d’interdire l’usage de marques plus récentes. b) Signes identiques ou similaires, produits ou services identiques ou similaires et
risque de confusion.
Noms commerciaux, désignations ou raisons sociales de personnes morales Article 9, paragraphe 1, point d), ES-LM.
Conditions de protection
Les noms ne doivent pas avoir été enregistrés ou demandés auprès de l’Office espagnol des brevets et des marques dès lors qu’ils identifient une personne (morale) aux fins de la vie des affaires. Une preuve de l’usage ou une preuve de ce que le signe est notoirement connu sur le territoire national doit être produite.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 47
FINAL VERSION 1.0 01/08/2015
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Signes identiques ou similaires, produits ou services identiques ou similaires et
risque de confusion.
10 France
10.1 Marques non enregistrées
Les marques non enregistrées ne sont pas reconnues en droit français, à l’exception des marques notoirement connues au sens de l’article 6 bis de la Convention de Paris [article L711-4, point a) du code de la propriété intellectuelle français (FR-CPI)].
10.2 Autres signes utilisés dans la vie des affaires
L’article L711-4 FR-CPI prévoit une liste non exhaustive de signes qui, s’ils sont qualifiés d’antérieurs, peuvent empêcher l’enregistrement d’une marque plus récente.
Dénomination sociale ou style d’une entreprise
Article L711-4, point b) FR-CPI.
Conditions de protection
La protection de la dénomination sociale est acquise à compter du moment où les documents fondateurs de la société sont prêts. Connaissance requise sur l’ensemble du territoire national français.
Droits conférés a) et conditions b)
a) Droit d’interdire l’utilisation d’une marque plus récente. b) Il doit exister un risque de confusion dans l’esprit du public.
Nom commercial
Article L711-4, point c) FR-CPI.
Conditions de protection
Protection acquise à compter du premier usage dans la vie des affaires.
Droits conférés a) et conditions b)
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 48
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a) Droit d’interdire l’utilisation d’une marque plus récente. b) Il doit exister un risque de confusion dans l’esprit du public.
Enseigne
Article L711-4, point c) FR-CPI.
Conditions de protection
Protection acquise à compter du premier usage dans la vie des affaires. Connaissance requise sur l’ensemble du territoire national français (enseigne notoire).
Droits conférés a) et conditions b)
a) Droit d’interdire l’utilisation d’une marque plus récente. b) Il doit exister un risque de confusion dans l’esprit du public.
Noms de domaine
Conditions de protection
Le nom de domaine est protégé quand il est réservé et utilisé.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage d’une marque plus récente pour des produits identiques ou similaires et/ou en cas d’avantage indu ou d’atteinte à la réputation (dilution).
b) Il doit exister un risque de confusion ou de préjudice pour le premier utilisateur.
11 Croatie
11.1 Marques non enregistrées
Les marques non enregistrées sont protégées en Croatie: Article 6, paragraphes 2 et 4, de la loi croate relative aux marques et de la loi portant modification de la loi relative aux marques.
Conditions de protection
La marque non enregistrée doit être notoirement connue (au sens de l’article 6bis de la Convention de Paris) en Croatie avant la date de dépôt / priorité de la marque contestée.
Droits conférés a) et conditions b)
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 49
FINAL VERSION 1.0 01/08/2015
a) Droit de s’opposer à l’enregistrement d’une marque plus récente. b) La marque plus récente doit être identique ou similaire et avoir été déposée
pour des produits et/ou services identiques ou similaires.
11.2 Autres signes utilisés dans la vie des affaires
Entreprise antérieure
Article 6, paragraphe 6, de la loi croate relative aux marques et de la loi portant modifications de la loi relative aux marques.
Conditions de protection
Ils doivent être enregistrés.
Droits conférés a) et conditions b)
a) Droit de s’opposer à l’enregistrement d’une marque plus récente. b) L’entreprise ou une partie essentielle de celle-ci doit être identique ou similaire
au signe visé par la demande d’enregistrement, et les produits et/ou services doivent être identiques ou similaires, à moins que la requérante n’ait été en possession de l’entreprise identique ou similaire à la date de dépôt de la demande d’enregistrement d’une marque.
12 Italie
12.1 Marques non enregistrées
Une marque non enregistrée (marchio di fatto) est un signe connu comme une marque ou comme un signe distinctif/-ive de produits manufacturés ou de services qui ont été mis sur le marché. Elle doit avoir fait notoirement l’objet d’un usage antérieur.
Article 12, paragraphe 1, point a), IT-CPI.
Conditions de protection
La marque non enregistrée doit être utilisée dans la mesure où elle est «notoirement connue» dans l’ensemble de l’Italie ou sur une partie substantielle du territoire italien.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Signes identiques ou similaires, produits ou services identiques ou similaires et
risque de confusion, comprenant le risque d’association.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 50
FINAL VERSION 1.0 01/08/2015
12.2 Autres signes utilisés dans la vie des affaires
Article 12, paragraphe 1, point b), IT-CPI.
Dénomination sociale, raison sociale, nom commercial ou enseignes, noms de domaine adoptés par d’autres (ditta, denominazione sociale, ragione sociale, insegna, nome a dominio)
Conditions de protection
Utilisé(e) dans la mesure où il/elle est notoirement connu(e) dans l’ensemble de l’Italie ou sur une partie substantielle du territoire italien.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage d’une marque plus récente, pour autant qu’elle soit connue du public pertinent dans l’ensemble de l’Italie ou sur une partie substantielle du territoire italien.
b) Signes identiques ou similaires, produits ou services identiques ou similaires et risque de confusion comprenant le risque d’association.
13 Chypre
13.1 Marques non enregistrées
Les marques non enregistrées ne sont pas reconnues par la législation chypriote.
14 Lettonie
14.1 Marques non enregistrées
Les marques non enregistrées sont protégées en Lettonie. Article 9, paragraphe 3, point 4, LV-LM.
Conditions de protection
La marque non enregistrée doit avoir été utilisée de bonne foi et légalement avant la date de dépôt de la demande d’enregistrement de la marque (ou la date de priorité respective) dans le cadre d’activités commerciales en Lettonie en lien avec des produits ou services identiques ou similaires.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 51
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Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Signes identiques ou similaires et produits ou services identiques ou similaires;
l’usage de la marque plus récente doit aussi être susceptible d’induire les consommateurs en erreur quant à l’origine des produits et services.
14.2 Autres signes utilisés dans la vie des affaires
Noms commerciaux provenant de Lettonie ou d’un pays tiers (désignations commerciales, noms d’un média de masse ou autres signes similaires) qui sont notoirement connus en Lettonie.
Article 9, paragraphe 3, point 3, LV-LM.
Conditions de protection
Le nom commercial doit avoir été acquis par un usage loyal et légal dans la vie des affaires en Lettonie avant la date de dépôt / priorité d’une marque plus récente utilisée dans un secteur commercial identique ou similaire. Un nom commercial notoirement connu doit être devenu notoirement connu en Lettonie avant la date de dépôt / priorité de la marque plus récente.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Les signes doivent être identiques ou similaires au point de prêter à confusion
et couvrir des produits et services identiques ou similaires.
15 Lituanie
15.1 Marques non enregistrées
Article 7, paragraphes 1 et 3, et article 9, LT-LM.
Conditions de protection
Les marques non enregistrées ne sont protégées que si elles sont reconnues comme étant notoirement connues par une décision de justice.
15.2 Autres signes utilisés dans la vie des affaires
Noms commerciaux et autres signes distinctifs des entreprises
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 52
FINAL VERSION 1.0 01/08/2015
Droits conférés a) et conditions b)
a) Droit d’annuler des marques (enregistrées) plus récentes. b) L’enregistrement d’une marque sera déclaré nul si la marque est identique au
nom commercial d’une personne morale ou si elle est susceptible d’être confondue avec le nom commercial d’une personne morale.
Article 7, paragraphe 1, point 4, LT-LM.
16 Hongrie
16.1 Marques non enregistrées
Les marques non enregistrées ne sont pas protégées par la législation hongroise, à moins d’avoir fait l’objet d’un usage sérieux dans le pays dans lequel l’utilisation du signe sans le consentement de l’utilisateur antérieur serait contraire à la loi.
Article 5, paragraphe 2, point a), HU-LM.
L’article 6 de la loi LVII de 1996 sur l’interdiction des pratiques commerciales déloyales et restrictives interdit la fabrication, la distribution ou la promotion de produits et services sans le consentement des concurrents dès lors que les produits et services en question revêtent une présentation, un emballage ou un étiquetage caractéristique (y compris la désignation d’origine), ainsi que l’usage d’un nom, d’une marque ou d’une désignation par lequel un concurrent ou ses produits et services sont habituellement reconnus.
Les dispositions mentionnées ci-dessus ne sont pas exhaustives.
17 Malte
17.1 Marques non enregistrées
Chapitre 26 de la loi maltaise sur les marques; article 6, paragraphe 4, MT-LM.
Conditions de protection
La protection est acquise par un usage antérieur permanent.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 53
FINAL VERSION 1.0 01/08/2015
b) Les signes doivent être susceptibles de créer un risque de confusion et couvrir des produits et services identiques ou similaires.
17.2 Autres signes utilisés dans la vie des affaires
Article 11, paragraphe 3, MT-LM.
Conditions de protection
La protection est acquise par un usage permanent.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes (article 6, paragraphe 2, MT-LM). b) Risque de confusion.
Compte tenu de l’article 6, paragraphe 4, et de l’article 11, paragraphe 3, MT-LM, les autres signes utilisés dans la vie des affaires sont considérés comme des droits antérieurs.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 54
FINAL VERSION 1.0 01/08/2015
18 Autriche
18.1 Marques non enregistrées
Les marques non enregistrées sont protégées en Autriche:
Article 31 de la loi autrichienne relative à la protection des marques (1970).
Conditions de protection
Une marque non enregistrée doit avoir acquis un certain niveau de reconnaissance dans la vie des affaires (Verkehrsgeltung) avant que le titulaire d’une marque (enregistrée) plus récente n’ait demandé l’enregistrement de sa marque, à moins que le titulaire de la marque (enregistrée) plus récente ne l’ait utilisée sans l’enregistrer pour une période au moins aussi longue que le titulaire de la marque non enregistrée.
Droits conférés a) et conditions b)
a) Droit de demander l’annulation d’une marque (enregistrée) plus récente. b) Le titulaire de la marque non enregistrée ne doit pas avoir toléré l’usage dans la
vie des affaires de la marque enregistrée plus récente pendant cinq années consécutives (Verwirkung). Ceci vaut uniquement pour les produits et/ou services pour lesquels la marque enregistrée a été utilisée et uniquement si la demande de la marque enregistrée n’a pas été déposée de mauvaise foi. Un risque de confusion doit être constaté.
18.2 Autres signes utilisés dans la vie des affaires
Article 32 de la loi autrichienne relative à la protection des marques (1970). Article 9 de la loi fédérale contre la concurrence déloyale (1984).
Signes d’entreprise (Unternehmenskennzeichen), c’est-à-dire noms, entreprises (noms commerciaux) (Firma) ou désignations spécifiques d’une entreprise (besondere Bezeichnungeines Unternehmens) ou désignations similaires
Conditions de protection
L’entrepreneur doit être le titulaire du ou des signes d’entreprise.
Droits conférés a) et conditions b)
a) Droit de demander l’annulation d’une marque (enregistrée) plus récente. b) L’entrepreneur ne doit pas avoir toléré l’usage dans la vie des affaires de la
marque enregistrée pendant cinq années consécutives (Verwirkung). Ceci vaut uniquement pour les produits et/ou services pour lesquels la marque enregistrée a été utilisée et uniquement si la demande de la marque enregistrée n’a pas été déposée de mauvaise foi. L’usage de la marque
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 55
FINAL VERSION 1.0 01/08/2015
pourrait induire un risque de confusion dans la vie des affaires avec l’un des signes d’entreprise précités du demandeur.
Signes d’entreprise (Geschäftsabzeichen) et autres signes destinés à distinguer l’entreprise d’autres entreprises, y compris la présentation ou le conditionnement de produits ou la présentation du papier à en-tête professionnel
Conditions de protection
Les signes d’entreprise doivent être perçus comme des désignations de l’entreprise par les acteurs du marché concernés, ou avoir acquis une telle reconnaissance par l’usage (Verkehrsgeltung).
Droits conférés a) et conditions b)
a) [Seul] le droit de poursuivre le contrevenant en cessation et abstention [d’une telle action] ainsi que de réclamer des dommages et intérêts si la contrefaçon a été réalisée de façon intentionnelle ou par négligence. [Outre ce qui précède, dans le cas de marques enregistrées, le titulaire a également le droit de poursuivre en cessation et abstention [de l’usage de sa marque] et de réclamer des dommages et intérêts devant une juridiction civile.
b) L’entrepreneur ne doit pas avoir toléré l’usage dans la vie des affaires de la marque enregistrée pendant cinq années consécutives (Verwirkung). Ceci vaut uniquement pour les produits et/ou services pour lesquels la marque enregistrée a été utilisée et uniquement si la demande de la marque enregistrée n’a pas été déposée de mauvaise foi. La marque doit être utilisée de telle façon qu’elle soit susceptible d’être confondue dans la vie des affaires avec l’un des signes d’entreprise de l’entrepreneur.
19 Pologne
19.1 Marques non enregistrées
Article 132, paragraphe 1, point ii), PL-LPI.
Conditions de protection
Les marques non enregistrées sont protégées uniquement si elles sont notoirement connues et utilisées dans la vie des affaires.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 56
FINAL VERSION 1.0 01/08/2015
b) Une marque non enregistrée doit être notoirement connue et utilisée dans la vie des affaires; risque de confusion.
Une protection supplémentaire est possible pour les marques non enregistrées notoirement connues bénéficiant d’une réputation (marques renommées). Le titulaire d’une telle marque peut demander que l’enregistrement d’une marque plus récente identique ou similaire soit déclaré nul, indépendamment des produits ou services pour lesquels elle est enregistrée, dès lors que son usage sans juste motif tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou lui porterait préjudice. Le titulaire d’une marque n’est pas autorisé à introduire une telle action s’il avait connaissance de l’usage de la marque plus récente et l’a toléré pendant cinq années consécutives.
19.2 Autres signes utilisés dans la vie des affaires
Article 131, paragraphes 1 et 5, PL-LPI. Article 156, paragraphe 1, point i), PL-LPI, article 158, paragraphe 1, PL-LPI.
Nom ou adresse utilisés pour exercer une activité commerciale
Conditions de protection
Nom sous lequel une personne exerce son activité commerciale.
Droits conférés a) et conditions b)
a) Droit d’interdire le dépôt d’une marque. b) Le nom doit avoir fait l’objet d’un usage antérieur pour une activité commerciale
afférente à des produits identiques ou similaires de sorte qu’il soit susceptible d’induire le public en erreur quant à l’origine du produit.
20 Portugal
20.1 Marques non enregistrées
Les marques non enregistrées suivantes sont protégées au Portugal.
Marques non enregistrées qui sont utilisées
Article 227 PT-CPI.
Conditions de protection
La marque non enregistrée doit avoir été utilisée au Portugal pendant les six mois précédant le dépôt d’une demande d’enregistrement.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 57
FINAL VERSION 1.0 01/08/2015
Droits conférés a) et conditions b)
a) Droit de s’opposer à l’enregistrement de la même marque par d’autres entités. b) Les signes et les produits et/ou services doivent être les mêmes.
Marques renommées
Article 241 PT-CPI.
Conditions de protection
La marque en question doit être notoirement connue au Portugal.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Les signes doivent être identiques ou similaires et les produits et/ou services
identiques ou similaires; un risque de confusion ou d’association avec le titulaire du droit antérieur doit être établi; la partie concernée doit avoir demandé l’enregistrement de la marque notoirement connue.
Marques prestigieuses
Article 241 PT-CPI.
Conditions de protection
La marque en question doit jouir d’un prestige au Portugal.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Les signes doivent être identiques ou similaires ou, même si les produits et
services sont différents, l’usage de la marque demandée doit être susceptible de tirer indûment profit du caractère distinctif ou de la renommée de la marque prestigieuse antérieure ou de leur porter préjudice; la partie intéressée doit avoir demandé l’enregistrement de la marque prestigieuse.
20.2 Autres signes utilisés dans la vie des affaires
Noms commerciaux, dénominations sociales
Article 239, paragraphe 2, point a), PT-CPI.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 58
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b) Le nom en question doit être susceptible de tromper les consommateurs ou de semer la confusion dans leur esprit.
Logotypes (nom et emblème, insigne d’un établissement) (Signes verbaux et figuratifs identifiant une entité commercialisant des produits ou fournissant des services)
Article 304-N PT-CPI.
Conditions de protection
Le signe en question doit être enregistré.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de signes plus récents. b) Le titulaire ne doit pas avoir donné son consentement et le signe plus récent
doit être identique ou similaire au signe du titulaire.
21 Roumanie
21.1 Marques non enregistrées
De manière générale, les marques non enregistrées ne sont pas protégées par la législation roumaine relative aux marques (loi n° 84/1998 sur les marques et indications géographiques). Par dérogation à cette règle, en cas d’opposition, une marque non enregistrée peut être considérée comme un droit antérieur si elle est notoirement connue en Roumanie au sens de l’article 6bis de la Convention de Paris.
Article 3, point d), et article 6, paragraphe 2, point f), RO-LPI.
Conditions de protection
La marque non enregistrée doit être notoirement connue en Roumanie au sens de l’article 6 bis de la Convention de Paris.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Le signe doit être notoirement connu en Roumanie et il doit exister un risque de
confusion.
21.2 Autres signes utilisés dans la vie des affaires
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 59
FINAL VERSION 1.0 01/08/2015
Les autres signes utilisés dans la vie des affaires qui sont considérés comme des signes antérieurs sont les noms commerciaux.
Seul le titulaire d’un nom commercial peut s’opposer à une marque ou demander à l’autorité judiciaire compétente de prononcer la nullité de cette marque.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. Seul le titulaire d’un nom commercial peut former une opposition contre une marque ou demander à l’autorité judiciaire compétente de prononcer la nullité de cette marque.
b) Usage antérieur sur le marché.
22 Slovénie
22.1 Marques non enregistrées
Les marques non enregistrées ne sont pas directement reconnues par la législation slovène relative à la propriété intellectuelle.
Néanmoins, conformément à l’article 44, paragraphe 1, point d), SL–LPI, un signe n’est pas susceptible d’être enregistré s’il est identique ou similaire à une marque ou à un signe non enregistré; en Slovénie, ce dernier est considéré comme une marque renommée au sens de l’article 6bis de la Convention de Paris.
22.2 Autres signes utilisés dans la vie des affaires
Article 44, paragraphe 1, point f), SL–LPI.
Noms commerciaux enregistrés (dénominations sociales enregistrées), le terme «dénomination sociale» devant être interprété de façon large et couvrant non seulement les entreprises privées, telles que les sociétés privées, sociétés à responsabilité limitée, autres sociétés commerciales et noms commerciaux secondaires, mais aussi les fondations, unions, associations, musées et institutions publiques.
23 Slovaquie
23.1 Marques non enregistrées
Article 7, point f), SK-LM.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 60
FINAL VERSION 1.0 01/08/2015
Les marques non enregistrées sont définies comme des signes non enregistrés acquis et utilisés dans la vie des affaires avant le dépôt d’une demande ultérieure. Elles doivent présenter un caractère distinctif et ne pas se limiter à une portée locale.
Conditions de protection
La marque non enregistrée doit avoir fait l’objet d’un usage antérieur dans la vie des affaires de portée qui ne soit pas seulement locale et doit avoir acquis un caractère distinctif par l'usage dans la vie des affaires sur le territoire de la République slovaque de portée qui ne soit pas seulement locale avant le dépôt de la demande contestée.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Les signes doivent être identiques ou similaires et doivent couvrir des produits et / ou services identiques ou similaires
23.2 Autres signes utilisés dans la vie des affaires
Article 7, point f), SK-LM.
Noms commerciaux et d’autres signes associés.
Conditions de protection
Inscription au registre du commerce ou équivalent.
Ces signes doivent avoir acquis un caractère distinctif par l'usage dans la vie des affaires sur le territoire de la République slovaque de portée qui ne soit pas seulement locale avant le dépôt de la demande contestée.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Les signes doivent être identiques ou similaires et doivent couvrir des produits et / ou services identiques ou similaires
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 61
FINAL VERSION 1.0 01/08/2015
24 Finlande
24.1 Marques non enregistrées
Les marques non enregistrées sont protégées en Finlande:
Article premier, article 2, paragraphe 3, article 6 et article 14, paragraphes 1 et 6, de la loi finlandaise sur les marques (FI-LM).
Conditions de protection
Usage par lequel une marque non enregistrée s’établit sur le marché. Une marque est considérée comme établie si elle est généralement connue dans les cercles commerciaux ou de consommateurs pertinents en Finlande comme symbole spécifique aux produits et/ou services de son titulaire.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques (enregistrées) plus récentes. b) L’étendue de la protection est identique à celle d’une marque enregistrée en
Finlande, c’est-à-dire qu’elle correspond à l’article 9, paragraphe 1, points a), b) et c), du RMC.
24.2 Autres signes utilisés dans la vie des affaires
Articles premier, article 2, paragraphe 2, article 3, paragraphe 2, article 6 et article 14, paragraphes 1 et 6, FI-LM.
Noms commerciaux (toiminimi, firma: tout nom qu’une personne physique ou morale utilise dans le cadre d’activités commerciales), y compris noms commerciaux secondaires (aputoiminimi, bifirma: des personnes physiques ou morales peuvent exercer une partie de leur activité sous un nom commercial secondaire) et symboles secondaires (toissijainen tunnus, sekundärt kännetecken: signes, y compris signes figuratifs, utilisés dans la vie des affaires).
Conditions de protection
Usage par lequel un nom commercial s’établit sur le marché.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Les signes doivent être associés à des produits et/ou services identiques ou
similaires et il doit exister un risque de confusion.
Nom du commerçant
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 62
FINAL VERSION 1.0 01/08/2015
Article premier, article 6 et article 14, paragraphes 1 et 6, FI-LM.
Droits conférés a) et conditions b)
a) Droit d’interdire des marques plus récentes. b) Les signes doivent porter sur des produits et/ou services identiques ou
similaires et il doit exister un risque de confusion.
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 63
FINAL VERSION 1.0 01/08/2015
25 Suède
Nouvelle loi suédoise sur les marques (2010:1877).
25.1 Marques non enregistrées
Chapitre 1, article 7 et chapitre 2, article 8 SE-LM
Conditions de protection
La marque non enregistrée doit avoir été utilisée de façon à s’être établie sur le marché.
Droits conférés a) et conditions b)
a) Comme pour les marques enregistrées: droit d’interdire l’usage de marques plus récentes.
b) Une marque est considérée comme s’étant établie sur le marché quand elle est, auprès d’une partie significative du milieu auquel elle s’adresse, connue comme un symbole des produits qui sont mis sur le marché sous ladite marque.
25.2 Autres signes utilisés dans la vie des affaires
Noms commerciaux / dénominations sociales
Chapitre 1, article 7, paragraphe 1; chapitre 1, article 8; chapitre 2, article 9, SE-LM.
Conditions de protection
Le nom doit avoir été enregistré comme une dénomination sociale ou avoir été utilisé de sorte qu’il s’est établi sur le marché. Son usage peut être limité à une partie du pays dans laquelle il est établi sur le marché.
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Il doit exister un risque de confusion et les signes doivent couvrir des produits
et services identiques ou similaires.
26 Royaume-Uni
Note générale relative aux signes non enregistrés: l’usurpation (passing off) ne constitue en aucun cas un «droit de propriété intellectuelle» qui «protège une marque
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 64
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non enregistrée ou un autre signe utilisé dans la vie des affaires». Ce terme fait référence à une «invasion abusive» d’un droit de propriété, mais la propriété protégée dans ce cas est l’image de marque et la réputation d’une entreprise, auxquels il pourrait être porté atteinte à cause d’une représentation incorrecte. La question de savoir, par exemple, si une opposition fondée sur la section 5, paragraphe 4, point a), est accueillie, dépend donc d’un certain nombre de facteurs cumulatifs: démonstration et étendue de l’image de marque; représentation incorrecte, atteinte à l’image de marque. Sur cette base, toute distinction entre la «protection» octroyée à des «marques non enregistrées» et à d’«autres signes utilisés dans la vie des affaires» dans le contexte du droit d’«usurpation» du droit coutumier britannique est dénuée de sens. Le droit d’«usurpation» pourrait potentiellement (et c’est ce qui se produit le plus souvent) naître à l’échelle locale uniquement (désignant le Royaume-Uni dans son ensemble). [Voir ci-dessous, «Les particularités de l’action en usurpation (passing off)»].
26.1 Marques non enregistrées
Marques non enregistrées utilisées dans la vie des affaires
Section 5, paragraphe 4, point a), UK-LM.
Conditions de protection
La marque doit être utilisée dans la vie des affaires si elle est protégée par une règle de droit, y compris la loi relative à l’usurpation (passing off).
Droits conférés a) et conditions b)
a) Droit d’interdire l’usage de marques plus récentes. b) Une image de marque doit être démontrée au Royaume-Uni à la date
pertinente et elle doit s’étendre aux produits ou services visés par la demande; représentation incorrecte concernant les «signes» en cause; l’atteinte à l’image de marque de l’opposant peut être déduite de l’usage du signe demandé.
26.2 Autres signes utilisés dans la vie des affaires
Section 5, paragraphe 4, point a), UK-LM.
Signe utilisé dans la vie des affaires.
Signe utilisé dans la vie des affaires, protégé par une règle de droit, y compris la loi sur l’usurpation (passing off).
Conditions de protection
Identiques à celles visées au paragraphe 26.1.
Droits conférés a) et conditions b)
Droits en vertu de l’article 8, paragraphe 4, du RMC
Directives relatives à l’examen devant l’Office, Partie C Opposition Page 65
FINAL VERSION 1.0 01/08/2015
Identiques à ceux visés au paragraphe 26.1.
Remarques: la loi de protection du symbole olympique de 1995 contient des dispositions relatives à l’usage exclusif à des fins commerciales du symbole olympique et de certains mots associés aux jeux olympiques par un individu désigné par le Secrétaire d’État; ce droit ne constitue pas un fondement pour l’article 8, paragraphe 4, du RMC.
Les particularités de l’action en usurpation (passing off)
L’usurpation est un délit économique dans les juridictions relevant du droit coutumier, dont les éléments essentiels sont i) une représentation incorrecte ii) portant atteinte iii) à l’image de marque d’un ou de plusieurs commerçants. C’est une forme d’application de la propriété intellectuelle en réponse à un usage non autorisé d’un droit de propriété intellectuelle.
Cette section n’a pas pour objet d’analyser les exigences fondamentales d’une action en usurpation telles qu’elles sont développées par la jurisprudence des juridictions relevant du droit coutumier, mais de définir quels droits pouvant être protégés par des actions en usurpation relèvent du champ d’application de l’article 8, paragraphe 4, du RMC, et de montrer comment le juge communautaire a appliqué les exigences fondamentales de l’article 8, paragraphe 4, du RMC en matière d’usurpation.
Généralement, les actions en usurpation, sous leur forme la plus commune, octroient à des marques non enregistrées une protection similaire à celle dont bénéficient des marques enregistrées, en ce sens qu’elles empêchent l’utilisation d’un nom, d’un mot, d’un dispositif ou d’un habillage aboutissant à une représentation incorrecte des produits ou services d’un commerçant que l’on fait passer pour ceux d’un autre. Ce faisant, les actions en usurpation protègent l’image de marque que des commerçants acquièrent par l’utilisation de signes, plutôt que de protéger les signes en tant que tels.
Le délit d’usurpation couvre un vaste éventail de situations allant de sa forme habituelle susvisée à une forme élargie qui peut empêcher l’utilisation de termes génériques dès lors qu’un tel usage donne une présentation trompeuse de produits ou services en laissant penser qu’ils possèdent une caractéristique ou une qualité dont ils sont dépourvus (par exemple «Vodkat» utilisé sur un type de boisson qui n’est pas de la Vodka).
Dans les actions en usurpation, l’opposant (le requérant) doit produire la preuve de trois éléments, appelés la -«trinité classique»:
a) une image de marque associée aux produits ou services qu’il fournit;
b) une représentation incorrecte du défendeur au public (intentionnelle ou non) ayant ou susceptible d’avoir pour conséquence que le public croie que les produits ou services offerts sont ceux de l’opposant (requérant);
c) une atteinte (réelle ou éventuelle) découlant de la croyance erronée engendrée par la représentation incorrecte du défendeur.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE C
OPPOSITION
SECTION 5
MARQUES JOUISSANT D’UNE RENOMMÉE ARTICLE 8, PARAGRAPHE 5, DU RMC
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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Table des matières
1 Introduction................................................................................................ 4 1.1 Objectif de l’article 8, paragraphe 5, du RMC...........................................4 1.2 Cadre légal ..................................................................................................4
2 Champ d’application ................................................................................. 5 2.1 Applicabilité aux marques enregistrées ................................................... 6
2.1.1 La condition liée à l’enregistrement ................................................................ 6 2.1.2 Relation entre les marques jouissant d’une renommée (article 8,
paragraphe 5, du RMC) et les marques notoirement connues (article 8, paragraphe 2, point c), du RMC).................................................................... 7
2.2 Applicabilité aux produits ou services similaires ....................................9
3 Conditions d’application......................................................................... 10 3.1 Marque antérieure jouissant d’une renommée....................................... 11
3.1.1 Nature de la renommée................................................................................ 11 3.1.2 L’étendue de la renommée........................................................................... 12
3.1.2.1 Le degré de connaissance ........................................................................12 3.1.2.2 Le public pertinent .....................................................................................13 3.1.2.3 Les produits et services couverts ..............................................................15 3.1.2.4 Le territoire pertinent .................................................................................16 3.1.2.5 La date à prendre en compte ....................................................................17
3.1.3 Appréciation de la renommée – Facteurs pertinents ................................... 20 3.1.3.1 La connaissance de la marque..................................................................21 3.1.3.2 La part de marché .....................................................................................22 3.1.3.3 L’intensité de l’usage.................................................................................24 3.1.3.4 L’étendue géographique de l’usage ..........................................................26 3.1.3.5 La durée de l’usage...................................................................................27 3.1.3.6 Les opérations publicitaires .......................................................................28 3.1.3.7 Les autres facteurs....................................................................................30
3.1.4 La preuve de la renommée........................................................................... 32 3.1.4.1 La qualité de la preuve ..............................................................................32 3.1.4.2 La charge de la preuve..............................................................................32 3.1.4.3 L’évaluation des preuves...........................................................................33 3.1.4.4 Les moyens de preuve ..............................................................................34
3.2 La similitude des signes .......................................................................... 43 3.2.1 Notion de «similitude» telle que visée à l’article 8, paragraphe 5, du RMC
et à l’article 8, paragraphe 1, point b), du RMC............................................ 43
3.3 Le lien entre les signes ............................................................................ 45 3.3.1 Exemples dans lesquels un lien a été établi entre les signes ...................... 47 3.3.2 Exemples dans lesquels aucun lien n’a été trouvé entre les signes ............ 49
3.4 Le risque de préjudice ............................................................................. 50 3.4.1 Objets protégés ............................................................................................ 50 3.4.2 Évaluation du risque de préjudice ................................................................ 52 3.4.3 Types de préjudice ....................................................................................... 53
3.4.3.1 Le profit tiré indûment du caractère distinctif ou de la renommée .............54 3.4.3.2 Le préjudice porté au caractère distinctif ...................................................61 3.4.3.3 Le préjudice porté à la renommée.............................................................66
3.4.4 Preuve du risque de préjudice...................................................................... 73
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3.4.4.1 Qualité et charge de la preuve ..................................................................73 3.4.4.2 Les moyens de preuve ..............................................................................75
3.5 L’usage sans juste motif.......................................................................... 76 3.5.1 Exemples de juste motif ............................................................................... 77
3.5.1.1 Le juste motif a été accepté.......................................................................77 3.5.1.2 Le juste motif n’a pas été accepté .............................................................78
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1 Introduction
1.1 Objectif de l’article 8, paragraphe 5, du RMC
Alors qu’en vertu de l’article 8, paragraphe 1, point a), du RMC, la double identité de signes et de produits ou de services et qu’en vertu de l’article 8, paragraphe 1, point b), du RMC, le risque de confusion constituent les conditions préalables requises pour la protection d’une marque enregistrée, l’article 8, paragraphe 5, du RMC n’exige ni identité/similitude des produits ou services, ni risque de confusion. L’article 8, paragraphe 5, du RMC octroie protection aux marques enregistrées non seulement pour des produits et services identiques/similaires mais aussi afin d’inclure les produits ou services non similaires sans exiger de risque de confusion, à condition que les signes soient identiques ou similaires, que la marque antérieure jouisse d’une renommée, et qu’il soit établi que l'usage sans juste motif de la marque demandée tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou leur porterait préjudice.
L’extension de la protection au titre de l’article 8, paragraphe 5, du RMC découle de l’idée selon laquelle la fonction et la valeur d’une marque ne se limitent pas au fait qu’elle fait office d’indicateur d’origine. Une marque peut également véhiculer des messages autres que l’indication de l’origine des produits et services, comme la promesse ou l’assurance d’une certaine qualité ou une certaine image de luxe, de mode de vie, d’exclusivité, etc. («fonction de publicité») (arrêt du 18/06/2009, L’Oréal et autres, C-487/07). Les titulaires de marques investissent souvent beaucoup d’argent et d’efforts dans la création d’une certaine image de marque associée à leur marque. Cette image confère à la marque une valeur économique – souvent importante –, indépendante de la valeur des produits et services pour lesquels ladite marque est enregistrée.
L’article 8, paragraphe 5, du RMC vise à protéger cette fonction de publicité ainsi que les investissements consentis dans la création d’une certaine image de marque en octroyant une protection aux marques renommées, et ce indépendamment de la similitude des produits ou services ou du risque de confusion, à condition qu’il puisse être démontré que l’utilisation de la demande contestée sans juste motif tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou leur porterait préjudice. Par conséquent, le but de l’article 8, paragraphe 5, du RMC n’est pas de protéger le public contre une confusion quant à l’origine, mais plutôt de protéger le titulaire de la marque contre les avantages indus tirés du caractère distinctif ou de la renommée d’une marque ou contre le préjudice qui pourrait leur être porté, alors qu’il a consenti d’importants investissements pour ladite marque.
1.2 Cadre légal
Selon l’article 8, paragraphe 5, du RMC, sur opposition du titulaire d’une marque antérieure au sens du paragraphe 2, la marque demandée est refusée à l’enregistrement:
si elle est identique ou similaire à la marque antérieure et si elle est destinée à être enregistrée pour des produits ou des services qui ne sont pas similaires à ceux pour lesquels la marque antérieure est enregistrée, lorsque, dans le cas d’une marque communautaire antérieure, elle jouit
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d’une renommée dans la Communauté et, dans le cas d’une marque nationale antérieure, elle jouit d’une renommée dans l’État membre concerné et que l’usage sans juste motif de la marque demandée tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou qu’il leur porterait préjudice.
Ce libellé est identique à celui des dispositions parallèles de la directive sur les marques (Directive 2008/95/CE du Parlement européen et du Conseil, du 22/10/2008, rapprochant les législations des États membres sur les marques (version codifiée), ci- après la «directive sur les marques»), à savoir l’article 4, paragraphe 3, de la directive, qui concerne la protection des marques communautaires jouissant d’une renommée, et l’article 4, paragraphe 4, point a), de la directive, qui est la disposition équivalente pour les marques nationales. Bien que la mise en œuvre de l’article 4, paragraphe 4, point a), de la directive soit facultative, tous les États membres ont en fait adopté des dispositions qui confèrent une protection élargie aux marques nationales jouissant d’une renommée.
Toutefois, quand bien même un pays adhérent déciderait de ne pas adopter de disposition équivalente dans son droit des marques, la référence expresse faite aux marques nationales qui jouissent d’une renommée à l’article 8, paragraphe 5, du RMC, signifie que ces marques sont directement protégées au niveau communautaire, et ce que le droit national leur confère ou non une protection élargie.
Le libellé de l’article 8, paragraphe 5, du RMC est également très similaire à celui de l’article 9, paragraphe 1, point c), du RMC et de l’article 5, paragraphe 2, de la directive sur les marques, autrement dit aux dispositions régissant les droits exclusifs du titulaire d’une marque, sous réserve d’une légère différence concernant la condition liée au préjudice. Contrairement à l’article 8, paragraphe 5, du RMC, qui est rédigé au conditionnel et qui s’applique lorsque l’usage de la marque demandée «tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou qu’il leur porterait préjudice», l’article 9, paragraphe 1, point c), du RMC et l’article 5, paragraphe 2, de la directive visent le cas où l’usage «tire indûment profit» ou «porte préjudice à». Cette différence s’explique par le fait que, dans le premier cas, l’article 8, paragraphe 5, du RMC concerne les motifs de refus sur lesquels il peut y avoir lieu de statuer sans qu’aucun usage n’ait été fait de la marque postérieure, tandis que, dans le second cas, c’est l’interdiction de l’usage qui est en cause. L’impact de cette différence sur la nature des preuves requises, dans chaque cas, pour démontrer le préjudice, est examiné au point 3.4 ci-dessous.
2 Champ d’application
Le libellé de l’article 8, paragraphe 5, du RMC a donné lieu à quelques controverses concernant son applicabilité exclusive (a) aux marques enregistrées antérieures et (b) à des produits ou services non similaires. Ces questions ayant une incidence directe sur le champ d’application de l’article 8, paragraphe 5, il convient tout d’abord de préciser si ce texte peut également s’appliquer (a) aux marques non enregistrées/notoirement connues et (b) à des produits ou services similaires.
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2.1 Applicabilité aux marques enregistrées
2.1.1 La condition liée à l’enregistrement
L’article 8, paragraphe 5, du RMC précise les types de droits antérieurs sur lesquels l’opposition peut être fondée en faisant référence au paragraphe 2 dudit article, lequel inclut, outre les demandes ou enregistrements communautaires, internationaux, nationaux ou effectués au Benelux, les marques antérieures notoirement connues au sens de l’article 6 bis de la Convention de Paris, autrement dit des marques qui peuvent être ou non enregistrées.
Certains ont soutenu qu’en raison de cette référence, l’article 8, paragraphe 5, devrait également s’appliquer aux marques non enregistrées, du moins dans la mesure où elles sont devenues notoirement connues dans le territoire concerné, d’autant plus que la protection des marques notoirement connues pour des produits ou services non similaires est encouragée par l’article 4, paragraphe 1, point b), de la Recommandation commune concernant des dispositions relatives à la protection des marques notoires de l’OMPI, ainsi que par l’article 16, paragraphe 3, de l’Accord sur les aspects des droits de propriété intellectuelle qui touchent au commerce (ADPIC).
Toutefois, on ne saurait invoquer, à l’appui de cette interprétation, le libellé de l’article 8, paragraphe 5, du RMC car celui-ci restreint indirectement mais clairement son applicabilité aux marques enregistrées antérieures en interdisant l’enregistrement de la marque demandée «si elle est identique ou similaire à la marque antérieure et si elle est destinée à être enregistrée pour des produits ou des services qui ne sont pas similaires à ceux pour lesquels la marque antérieure est enregistrée». Il s’ensuit que l’existence d’un enregistrement antérieur est une condition nécessaire pour l’application de l’article 8, paragraphe 5, et que, par conséquent, la référence à l’article 8, paragraphe 2, doit être limitée aux enregistrements antérieurs et aux demandes antérieures sous réserve de leur enregistrement (arrêt du 11/07/2007, «TOSCA BLU», T-150/04, point 55).
Cette approche restrictive n’est pas incompatible avec l’article 16, paragraphe 3, de l’Accord sur les aspects des droits de propriété intellectuelle qui touchent au commerce (ADPIC), dont le libellé mentionne également un enregistrement antérieur de façon très similaire:
L’article 6 bis de la Convention de Paris (1967) s’appliquera, mutatis mutandis, aux produits ou services qui ne sont pas similaires à ceux pour lesquels une marque de fabrique ou de commerce est enregistrée, à condition que l’usage de cette marque […] indique un lien entre ces produits ou services et le titulaire de la marque enregistrée et à condition que cet usage risque de nuire aux intérêts du titulaire de la marque enregistrée. (Mise en gras ajoutée)
Ce point de vue ne saurait non plus être exclu au motif que les recommandations de l’OMPI n’imposent aucune condition pour l’octroi d’une protection élargie aux marques antérieures notoirement connues, puisque ces recommandations ne revêtent aucun caractère obligatoire pour l’interprétation du RMC.
Dès lors, l’article 8, paragraphe 5, du RMC ne s’applique qu’aux enregistrements antérieurs communautaires, internationaux, nationaux ou effectués au Benelux, ainsi qu’aux demandes antérieures sous réserve de leur enregistrement.
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2.1.2 Relation entre les marques jouissant d’une renommée (article 8, paragraphe 5, du RMC) et les marques notoirement connues (article 8, paragraphe 2, point c), du RMC)
L’exigence d’un enregistrement vise à délimiter l’article 8, paragraphe 5, et l’article 8, paragraphe 2, point c), du RMC. Toutefois, ni l’article 8, paragraphe 2, point c), du RMC, ni l’article 6 bis de la Convention de Paris ne stipulent expressément que la marque notoirement connue doit être une marque non enregistrée. L’application du principe selon lequel seules les marques non enregistrées sont couvertes par lesdites dispositions résulte indirectement de l’esprit et de la ratio legis desdites dispositions.
En ce qui concerne la Convention de Paris, l’objectif de la disposition de l’article 6 bis introduit pour la première fois dans la Convention en 1925, était d’éviter l’enregistrement et l’utilisation d’une marque susceptible de créer une confusion avec une autre marque déjà notoirement connue dans le pays d’enregistrement, même si la marque notoirement connue n’était pas, ou pas encore, protégée par un enregistrement dans ce pays.
En ce qui concerne le RMC, l’objectif était d’éviter un vide juridique, étant donné que l’article 8, paragraphe 5, ne protège que les MC enregistrées. Sans l’article 8, paragraphe 2, point c), du RMC, les marques renommées non enregistrées n’auraient pas pu bénéficier d’une protection (hormis celle conférée par l’article 8, paragraphe 4, du RMC). En vue d’éviter ce vide juridique, le RMC a prévu la protection des marques notoirement connues au sens de l’article 6 bis de la Convention de Paris, étant donné que cet article avait principalement été élaboré dans le but d’octroyer une protection aux marques non enregistrées ayant un caractère notoirement connu.
Par conséquent, d’une part, les marques notoirement connues qui ne sont pas enregistrées dans le territoire concerné ne peuvent bénéficier de la protection prévue à l’article 8, paragraphe 5, du RMC pour des produits non similaires. Elles ne peuvent être protégées que pour des produits identiques ou similaires s’il existe un risque de confusion en vertu de l’article 8, paragraphe 1, point b), auquel l’article 8, paragraphe 2, point c), fait référence pour déterminer l’étendue de la protection. Toutefois, ce principe ne remet pas en cause le fait que les marques notoirement connues, dans la mesure où elles ne sont pas enregistrées, peuvent aussi être protégées en vertu de l’article 8, paragraphe 4, du RMC. Dès lors, si le droit national applicable leur confère une protection pour des produits ou services non similaires, cette protection renforcée peut également être invoquée au titre de l’article 8, paragraphe 4.
D’autre part, les marques notoirement connues qui ont été enregistrées, soit en tant que marques communautaires, soit en tant que marques nationales dans l’un des États membres, peuvent être invoquées au titre de l’article 8, paragraphe 5, du RMC mais seulement si elles remplissent en outre les conditions de renommée.
Bien que les termes «notoirement connues» (expression consacrée utilisée à l’article 6 bis de la Convention de Paris) et «renommée» correspondent à des notions juridiques distinctes, il existe entre eux un chevauchement important, comme l’indique la comparaison entre la façon dont les marques notoires sont définies dans les recommandations de l’OMPI, et la façon dont la renommée a été décrite par la Cour dans l’arrêt «General Motors» du 14/09/1999, C-375/97 (qui conclut que la
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différence de terminologie ne représente qu’une «nuance, qui n’emporte pas une réelle contradiction», point 22).
Concrètement, le seuil permettant de déterminer si une marque est notoirement connue ou renommée est souvent le même. Ainsi, il n’est pas inhabituel qu’une marque ayant acquis une notoriété ait également atteint le seuil fixé par la Cour dans l’arrêt General Motors pour les marques jouissant d’une renommée, étant donné que l’appréciation repose principalement, dans les deux cas, sur des considérations d’ordre quantitatif concernant le degré de connaissance de la marque parmi le public, et que les seuils requis dans chacun des cas sont exprimés en des termes très similaires (marque «connue» ou «notoirement connue» d’un «secteur concerné du public»1 pour les marques notoires, et marque «connue d’une partie significative du public concerné» pour les marques jouissant d’une renommée).
Cet état de fait a également été confirmé par la jurisprudence. Dans son arrêt du 22/11/2007, «FINCAS TARRAGONA», C-328/06, la Cour a qualifié les termes «renommée» et «notoirement connu» de «notions voisines», soulignant ainsi leur chevauchement substantiel et la relation qui les lie (voir point 17). Voir aussi l’arrêt du 11/07/2007, t-150/04 «TOSCA BLU» (points 56-57)
Le chevauchement entre les marques jouissant d’une renommée et les marques enregistrées notoirement connues a des répercussions sur la formulation du motif d’opposition, en ce sens que peu importe en principe, pour l’applicabilité de l’article 8, paragraphe 5, du RMC que l’opposant définisse son enregistrement antérieur comme une marque notoire et non comme une marque jouissant d’une renommée. Il convient donc de procéder à un examen attentif de la terminologie employée, en particulier lorsque les motifs de l’opposition ne sont pas clairement expliqués, et d’adopter le cas échéant une approche souple.
Dans le contexte de l’article 8, paragraphe 2, point c), du RMC, les exigences requises pour l’application de l’article 6 bis de la Convention de Paris et de l’article 8, paragraphe 1, points a) et b), du RMC sont les mêmes, bien que la terminologie employée présente des différences. Les deux dispositions exigent une similitude ou une identité entre les produits ou services ainsi que des signes similaires ou identiques (l’article 6 bis utilise le terme «reproduction», qui correspond au terme «identité», et «imitation» pour désigner la similitude). Les deux articles requièrent également l’existence d’un risque de confusion («susceptible de créer une confusion» est le terme utilisé dans l’article 6 bis). Toutefois, alors que, selon l’article 8, paragraphe 2, point c), du RMC, une marque notoirement connue peut faire office de droit antérieur, et donc servir de base à une opposition, les motifs pour une opposition en vertu de l’article 8, paragraphe 2, point c), du RMC demeurent (exclusivement) l’article 8, paragraphe 1, point a) ou b), du RMC.
Par exemple, si l’opposition est fondée (i) sur un enregistrement antérieur en invoquant l’article 8, paragraphe 1, point b), et l’article 8, paragraphe 5, du RMC et (ii) sur une marque antérieure identique notoirement connue dans le même territoire au titre de l’article 8, paragraphe 2, point c), du RMC, le droit antérieur doit être examiné:
1. au titre de l’article 8, paragraphe 1, point b), du RMC, comme un enregistrement antérieur au caractère distinctif accru (compte tenu de sa notoriété);
1 Article 2, paragraphe 2, points b) et c), des Recommandations de l'OMPI.
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2. au titre de l’article 8, paragraphe 5, du RMC, comme un enregistrement antérieur jouissant d’une renommée;
3. au titre de l’article 8, paragraphe 2, point c), du RMC, comme une marque antérieure non enregistrée notoirement connue (ce qui ne sera utile que si l’enregistrement n’est pas démontré car, dans le cas contraire, le résultat est le même qu’au point (i) ci-dessus).
Même si l’opposant n’a pas expressément fondé l’opposition sur l’article 8, paragraphe 5, du RMC, le contenu de l’acte d’opposition et la formulation de l’exposé des motifs doivent être analysés attentivement afin de déterminer de manière objective si l’opposant souhaite également s’appuyer sur cet article 8, paragraphe 5.
2.2 Applicabilité aux produits ou services similaires
L’interprétation littérale de l’article 8, paragraphe 5, du RMC, conduit de prime abord à la conclusion qu’il ne s’applique qu’à des produits ou services non similaires, puisqu’il indique que la marque demandée est refusée à l’enregistrement «si elle est identique ou similaire à la marque antérieure et si elle est destinée à être enregistrée pour des produits ou des services qui ne sont pas similaires à ceux pour lesquels la marque antérieure est enregistrée».
Toutefois, l’interprétation ci-dessus a été vivement critiquée parce qu’elle conduit à des lacunes dans la protection des marques jouissant d’une renommée, car si la protection peut être accordée au titre de l’article 8, paragraphe 5, du RMC pour des produits ou services qui ne sont pas similaires, il paraîtrait incohérent d’en refuser l’application pour des produits ou services similaires lorsque les autres conditions sont remplies et que l’article 8, paragraphe 1, point b), du RMC, ne s’applique pas en raison de l’absence de risque de confusion. Dans cette hypothèse, les titulaires de marques bénéficieraient d’une plus grande protection dans le cas le moins dangereux, à savoir uniquement lorsque, a priori, les produits ou services n’étaient pas similaires. C’est pourquoi certains ont suggéré que l’article 8, paragraphe 5, devrait également s’appliquer, directement ou par analogie, lorsque les produits ou services sont identiques ou similaires.
Cette question relative à l’interprétation correcte des dispositions équivalentes de la directive sur les marques (article 4, paragraphe 4, point a), et article 5, paragraphe 2, de la directive) a été soumise à la Cour de justice à titre préjudiciel (arrêt du 09/01/2003, «DAVIDOFF», C-292/00).
Dans ses conclusions, l’avocat général dans l’affaire DAVIDOFF a suggéré de suivre l’approche littérale et, donc, de limiter la protection conférée par l’article 4, paragraphe 4, point a), et par l’article 5, paragraphe 2, de la directive sur les marques aux cas dans lesquels les produits et les services de la marque postérieure ne sont pas similaires à ceux de la marque antérieure. L’avocat général a considéré que l’intention du législateur était de limiter la protection spéciale accordée aux marques jouissant d’une renommée aux produits non similaires et qu’il n’existait pas dans la loi de véritable lacune justifiant que l’on interprète le texte dans un sens contraire à son libellé exprès.
Toutefois, la Cour n’a pas suivi les conclusions de l’avocat général et elle est parvenue à la conclusion contraire, à savoir que l’article 4, paragraphe 4, point a), et l’article 5,
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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paragraphe 2, de la directive sur les marques doivent être interprétés «en ce sens qu’ils laissent aux États membres le pouvoir de prévoir une protection spécifique au profit d’une marque enregistrée qui jouit d’une renommée lorsque la marque ou le signe postérieur […] est destiné à être utilisé ou est utilisé pour des produits ou des services identiques ou similaires à ceux couverts par celle-ci». (Mise en gras ajoutée, point 30).
Pour parvenir à cette conclusion, la Cour a relevé que l’article 5, paragraphe 2, de la directive ne doit pas être interprété exclusivement au regard de son libellé, mais également en considération de l’économie générale et des objectifs du système dans lequel il s’insère. Par conséquent, il ne saurait être donné dudit article une interprétation qui aurait pour conséquence une protection des marques renommées moindre en cas d’usage d’un signe pour des produits ou des services identiques ou similaires. La Cour a justifié cette position en indiquant qu’il s’agit de la seule approche cohérente avec son interprétation de l’article 4, paragraphe 1, point b), et de l’article 5, paragraphe 1, point b), de la directive sur les marques, et en faisant référence aux conclusions des arrêts du 11/11/1997, «SABEL», C-251/95 et du 22/06/2000, «Marca Mode», C-425/98, dans lesquelles elle a exclu une interprétation large de la notion de confusion.
L’arrêt de la Cour dans l’affaire DAVIDOFF, qui octroie une protection élargie au titre de l’article 4, paragraphe 4, point a), et de l’article 5, paragraphe 2, de la directive sur les marques également pour des produits ou services similaires ou identiques, a été confirmé dans plusieurs arrêts ultérieurs (arrêt du 23/03/2010, «Google France», C-238/08, point 48; arrêt du 18/06/2009, «L’Oréal et autres», C-487/07, point 35; arrêt du 23/10/2003, «Adidas Salomon et Adidas Benelux», C-408/01, point 18).
Dans la pratique, le vide dans la protection comblé par l’inclusion de produits identiques et similaires à l’article 8, paragraphe 5, du RMC se limitera aux rares cas où les signes présentent une similitude, où les produits sont identiques ou similaires et où la marque antérieure jouit d’une renommée, mais où il n’y a pas de risque de confusion au sens de l’article 8, paragraphe 1, point b), du RMC. Comme l’avocat général l’a fait remarquer dans ses conclusions, un tel scénario serait vraiment exceptionnel.
3 Conditions d’application
Les conditions suivantes doivent être remplies pour que l’article 8, paragraphe 5, du RMC s’applique (arrêt du 16/12/2010 affaires conjointes «BOTOLIST / BOTOCYL», T-345/08 et T-357/08, confirmé par la Cour de Justice dans son arrêt du 10/05/2012, C-100/11 P):
1. il faut une marque enregistrée antérieure jouissant d’une renommée dans le territoire pertinent;
2. il doit y avoir identité ou similitude entre la demande de marque communautaire contestée et la marque antérieure;
3. il faut que l’usage du signe demandé puisse tirer indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou leur porter préjudice;
4. il faut que cet usage soit sans juste motif.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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Ces conditions sont cumulatives et le non-respect de l’une d’entre elles suffit à rendre ladite disposition caduque (arrêt du 25/05/2005, «SPA-FINDERS», T-67/04, point 30; arrêt du 22/03/2007, «VIPS», T-215/03, point 34; arrêt du 16/12/2010, «BOTOLIST / BOTOCYL», affaires conjointes T-345/08 et T-357/08, point 41).
L’ordre dans lequel ces exigences sont examinées peut varier en fonction des particularités de chacune des affaires. Par exemple, l’examen peut débuter par l’évaluation des similitudes entre les signes, en particulier lorsque cette appréciation n’appelle guère d’observations, soit parce que les marques sont identiques, soit parce qu’elles sont manifestement similaires ou différentes.
3.1 Marque antérieure jouissant d’une renommée
3.1.1 Nature de la renommée
La nature et l’étendue de la renommée ne sont définies ni par le règlement sur la marque communautaire, ni par la directive sur les marques. Par ailleurs, les termes utilisés dans les différentes versions linguistiques de ces textes ne sont pas parfaitement équivalents, ce qui a entraîné une confusion considérable quant au véritable sens du terme «renommée», comme indiqué par l’avocat général Jacobs dans ses conclusions du 26/11/1998 dans l’affaire «General Motors», C-375/97, points 34 à 36.
En l’absence de définition légale, la Cour a défini la nature de la renommée par référence à la finalité des dispositions applicables. La Cour a soutenu, à propos de l’interprétation de l’article 5, paragraphe 2, de la directive sur les marques, que le texte de la directive «implique un certain degré de connaissance de la marque antérieure parmi le public» et elle a expliqué que «ce n’est que dans l’hypothèse d’un degré suffisant de connaissance de cette marque que le public mis en présence de la marque postérieure peut, le cas échéant, […] effectuer un rapprochement entre les deux marques, et que, par voie de conséquence, il peut être porté atteinte à la marque antérieure» (arrêt du 14/09/1999, «General Motors», C-375/97, point 23).
Au vu de ces considérations, la Cour a conclu que la renommée correspond à l’exigence d’un seuil de connaissance, ce qui implique qu’elle doit être appréciée, pour l’essentiel, sur la base de critères quantitatifs. Pour remplir la condition de renommée, la marque antérieure doit être connue d’une partie significative du public concerné par les produits ou services couverts par cette marque (arrêt du 14/09/1999, «General Motors», C-375/97, points 22 et 23; arrêt du 25/05/2005, «SPA-FINDERS», T-67/04, point 34).
Par ailleurs, si la renommée doit être appréciée sur la base de critères quantitatifs, les arguments ou les preuves qui ont trait au prestige dont la marque jouit auprès du public, et non à sa connaissance, ne sont pas directement pertinents pour démontrer que la marque antérieure a acquis une renommée suffisante aux fins de l’article 8, paragraphe 5, du RMC. Toutefois, étant donné que la valeur économique de la renommée fait également l’objet de la protection prévue par cette disposition, tous ses aspects qualitatifs sont pertinents pour apprécier le risque de préjudice ou de profit indu (voir également le point 3.4 ci-dessous). L’article 8, paragraphe 5, du RMC protège les marques «notoires» non en tant que telles, mais plutôt pour le succès et la réputation qu’elles ont acquis sur le marché. Un signe ne jouit d’aucune renommée intrinsèquement, par exemple du seul fait qu’il fait référence à une personne ou à un
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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événement de renom, mais seulement par rapport aux produits ou services qu’il désigne et à l’usage qui en a été fait.
N° de l’affaire Commentaire
R 0011/2008-4, «CASAS DE FERNANDO ALONSO (fig.)»
Toutes les preuves soumises par l’opposant concernaient la popularité de Fernando Alonso, champion de formule 1, et l’utilisation de son image par différentes entreprises en vue de promouvoir leurs produits et services. Toutefois, il n’y avait aucune preuve de renommée pour l’utilisation de la marque antérieure en tant qu’elle est enregistrée pour les produits et services concernés (points 44 et 48).
R 0201/2010-2 «BALMAIN ASSET MANAGEMENT»
Les seuls éléments de preuve concernant la renommée de la marque antérieure soumis dans les délais, à savoir une page montrant des sites internet contenant le terme «BALMAIN», un extrait de Wikipédia concernant le designer français Pierre Balmain et cinq extraits du site internet www.style.com faisant référence à la collection de prêt-à-porter «BALMAIN», ne suffisaient manifestement pas pour établir la renommée de la marque antérieure dans l’UE. Par conséquent, l’opposition a été déclarée non fondée (points 36 et 37).
3.1.2 L’étendue de la renommée
3.1.2.1 Le degré de connaissance
La renommée étant définie comme l’exigence d’un seuil de connaissance, la question qui se pose nécessairement est celle de savoir quel degré de connaissance la marque antérieure doit atteindre parmi le public pour franchir ce seuil. La Cour a soutenu, à cet égard, que «le degré de connaissance requis doit être considéré comme atteint lorsque la marque antérieure est connue d’une partie significative du public» et que «ni la lettre ni l’esprit de l’article 5, paragraphe 2, de la directive n’autorisent à exiger que la marque soit connue d’un pourcentage déterminé du public» (arrêt du 14/09/1999, «General Motors», C-375/97, points 25 et 26; arrêt du 16/11/2011, «DORMA», T-500/10, point 45).
En s’abstenant de définir de façon plus détaillée le sens du terme «significative» et en affirmant qu’il n’est pas nécessaire que la marque soit connue d’un pourcentage déterminé du public, la Cour s’est prononcée en substance contre l’utilisation de critères fixes d’applicabilité générale, étant donné que le recours à un degré prédéterminé de connaissance pourrait s’avérer inapproprié pour une appréciation réaliste de la renommée si ce degré était considéré isolément.
Dès lors, pour déterminer si la marque antérieure est connue d’une partie significative du public, il faut tenir compte non seulement du degré de connaissance de la marque, mais aussi de tout autre facteur pertinent du cas d’espèce. Pour plus de détails sur les facteurs concernés et leur interaction, voir le point 3.1.3 ci-dessous.
Toutefois, lorsque les produits ou les services concernent de très petits groupes de consommateurs, et que la taille globale du marché est de ce fait limitée, une partie significative de celui-ci est nécessairement restreinte en valeur absolue. Par conséquent, la taille limitée du marché concerné ne doit pas être considérée en soi comme un facteur susceptible d’empêcher une marque d’acquérir une renommée au sens de l’article 8, paragraphe 5, du RMC, étant donné que la renommée se mesure plus en termes de proportions qu’en valeur absolue.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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Exiger que la marque antérieure soit connue d’une partie significative du public permet également de différencier les notions de renommée en tant que condition nécessaire à l’application de l’article 8, paragraphe 5, du RMC, et de caractère distinctif accru par l’usage en tant que facteur de l’évaluation du risque de confusion aux fins d’application de l’article 8, paragraphe 1, point b), du RMC.
Bien que les deux termes concernent la connaissance de la marque parmi le public concerné, il existe en cas de renommée un seuil au-dessous duquel une protection élargie ne peut être accordée, alors qu’il n’existe aucun seuil de ce type en cas de caractère distinctif accru. Il s’ensuit que, dans le dernier cas, tout signe de connaissance accrue de la marque doit être pris en compte et évalué selon son importance, et ce qu’il atteigne ou non la limite exigée par l’article 8, paragraphe 5, du RMC. Dès lors, la constatation d’un «caractère distinctif accru» au titre de l’article 8, paragraphe 1, point b), du RMC, n’est pas nécessairement probante aux fins de l’article 8, paragraphe 5, du RMC.
N° de l’affaire Commentaire
R 1054/2007-4 «mandarino (fig.)»
Les documents soumis par l’opposant démontraient des efforts de promotion tels que le caractère distinctif est accru par l’utilisation. Toutefois, l’utilisation du produit ne suffisait pas pour atteindre le seuil de renommée. Aucun des documents ne faisait référence à la connaissance de la marque antérieure par les consommateurs concernés, ni ne présentait de preuves de la part de marché des produits enregistrés par l’opposant (point 61).
3.1.2.2 Le public pertinent
Pour définir le type de public à prendre en compte pour apprécier la renommée, la Cour a indiqué que «le public parmi lequel la marque antérieure doit avoir acquis une renommée est celui concerné par cette marque, c’est-à-dire, en fonction du produit ou du service commercialisé, soit le grand public, soit un public plus spécialisé, par exemple un milieu professionnel donné» («General Motors», C-375/97, point 24, «SPA-FINDERS», points 34 et 41).
Ainsi, si les produits ou services désignés par la marque sont des produits de grande consommation, le public pertinent est le grand public, tandis que si les produits désignés ont une application très spécifique ou sont exclusivement destinés à un usage professionnel ou industriel, le public pertinent est limité aux acquéreurs spécifiques des produits en cause.
N° de l’affaire Commentaire
R 1265/2010-2 «MATTONI (fig.)» Compte tenu de la nature des produits pour lesquels l’opposant invoque la renommée, à savoir de l’eau minérale, le public pertinent est le grand public (point 44).
R 2100/2010-1 SEXIALIS
Les produits pour lesquels le signe jouit d’une renommée sont des médicaments pour le traitement de la dysfonction érectile. Le public pertinent est le grand public ainsi que les professionnels ayant un niveau élevé d’attention (point 64).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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N° de l’affaire Commentaire
Affaires conjointes T-345/08 et T-357/08,«BOTOLIST / BOTOCYL», confirmées par C-100/11 P
Les produits pour lesquels la marque antérieure jouit d’une renommée sont des produits pharmaceutiques pour le traitement des rides. Les preuves de la promotion de la marque antérieure «BOTOX» en langue anglaise dans la presse scientifique et de vulgarisation étaient suffisantes pour établir la renommée de la marque parmi le grand public et les professionnels de la santé (C-100/11 P, points 65 à 67). Par conséquent, il convient de tenir compte de ces deux catégories de consommateurs.
Outre les acheteurs effectifs des produits en cause, la notion de public pertinent couvre aussi les acquéreurs potentiels de ces produits, ainsi que les membres du public qui ne sont qu’indirectement en contact avec la marque, dans la mesure où ces groupes de consommateurs sont également ciblés par les produits en cause (par exemple les passionnés de sport s’agissant des vêtements d’athlétisme, ou encore les personnes qui prennent régulièrement l’avion s’agissant des compagnies aériennes).
N° de l’affaire Commentaire
T-47/06 «NASDAQ»
Les services concernés sont des services de cotation des cours de bourse compris dans les classes 35 et 36, qui s’adressent normalement à des professionnels. L’opposant a soumis des preuves démontrant que la marque «NASDAQ» apparaît presque quotidiennement dans de nombreux journaux et sur de nombreuses chaînes télévisées qui peuvent être lu(e)s/regardé(s) partout en Europe. Par conséquent, la chambre de recours était fondée à conclure que, pour le public européen, la renommée de la marque «NASDAQ» devait être appréciée non seulement parmi les professionnels, mais également dans une partie importante du sous-secteur du grand public (points 47 et 51).
T-60/10 «ROYAL SHAKESPEARE»
La preuve de la renommée étaye et renforce le fait que le public pertinent dans le cas des représentations de théâtre est le grand public et non un cercle restreint et exclusif. Les activités de l’intervenante faisaient l’objet de publicité, de présentations et de commentaires dans de nombreux journaux ciblant le grand public. L’intervenante a fait des tournées dans différentes régions du Royaume-Uni et s’est produite devant un large public au Royaume- Uni. Le fait qu’il s’agit d’une activité à grande échelle, et donc d’un service rendu au grand public, est démontré par le chiffre d’affaires élevé et le grand nombre d’entrées vendues. En outre, il ressort de documents soumis par l’intervenante que cette dernière a reçu des ressources annuelles de parrainage de la part d’entreprises de divers secteurs atteignant également le grand public, tels que des banques, des entreprises dans le domaine des boissons alcoolisées ainsi que des producteurs d’automobiles (points 3 et 36).
Très souvent, un produit donné concerne divers groupes d’acheteurs aux profils différents, comme c’est le cas pour les produits à usages multiples, ou les produits qui transitent par plusieurs intermédiaires avant d’atteindre leur destination finale (distributeurs, détaillants, utilisateurs finaux). Dans ce cas, la question se pose de savoir si la renommée doit être appréciée au sein de chaque groupe distinct, ou si elle doit s’étendre à tous les types d’acquéreur. L’exemple donné par la Cour dans l’affaire «General Motors», C-375/97 (milieu professionnel donné) implique que la renommée au sein d’un seul groupe peut suffire.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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De même, si la marque antérieure est enregistrée pour des produits ou services très hétérogènes, différents types de public peuvent être concernés par chaque type de produits, et, partant, la renommée globale de la marque doit être appréciée séparément pour chaque catégorie de produits concernés.
Il convient de souligner que les observations qui précèdent ne concernent que le type de public à prendre en compte pour apprécier si la marque antérieure a atteint le seuil de renommée fixé par la Cour dans l’affaire General Motors. Toutefois, pour apprécier le préjudice ou le profit indu, la question se pose de savoir si la marque antérieure doit également être connue du public concerné s’agissant des produits ou services couverts par la marque postérieure, car, dans le cas contraire, l’on voit mal comment le public pourrait associer les deux marques. Cette question est examinée au point 3.4 ci- dessous.
3.1.2.3 Les produits et services couverts
Les produits et services doivent avant tout être ceux pour lesquels la marque antérieure a été enregistrée et pour lesquels la renommée est revendiquée.
N° de l’affaire Commentaire
R 1473/2010-1 «SUEDTIROL»
L’opposition a été rejetée car les marques antérieures n’étaient pas enregistrées pour les services qui, selon l’opposant, jouissent d’une renommée. L’article 8, paragraphe 5, du RMC peut uniquement être invoqué si la marque dont l’opposant revendique la notoriété/renommée est une marque enregistrée et si les produits/services pour lesquels cette renommée/notoriété est invoquée figurent sur le certificat (point 49).
Les produits et services auxquels les éléments de preuve font référence doivent être identiques (pas seulement similaires) aux produits et services pour lesquels la marque antérieure est enregistrée.
N° de l’affaire Commentaire
R 1033/2009-4 «PEPE»
Les produits qui ont été jugés comme jouissant d’une renommée en Allemagne par la décision et l’ordonnance en question ne concernent que des articles de soins de la peau et du corps et une crème pour enfants. Ces articles ne sont pas identiques aux produits de la marque antérieure compris dans la classe 3, produits de maquillage; produits pour le soin des ongles; à savoir vernis à ongles et dissolvant. Par conséquent, l’opposant n’a pas prouvé la renommée pour la marque allemande antérieure dans les territoires concernés (point 31).
Lorsque la marque antérieure est enregistrée pour un large éventail de produits ou de services ciblant différents types de public, il y a lieu d’apprécier la renommée séparément pour chaque catégorie de produits. Dans ce cas, il peut arriver que la marque antérieure n’ait pas de renommée pour tous les produits, faute peut-être d’avoir été utilisée pour certains d’entre eux, tandis que pour d’autres elle n’a peut-être pas atteint le degré de connaissance nécessaire pour l’application de l’article 8, paragraphe 5, du RMC.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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Par conséquent, si les éléments de preuve indiquent que la marque antérieure jouit d’une renommée partielle, c’est-à-dire si la renommée ne concerne que certains des produits ou des services pour lesquels la marque est enregistrée, ce n’est que dans cette mesure que ladite marque peut être protégée au titre de l’article 8, paragraphe 5, du RMC. Par conséquent, seuls ces produits peuvent être pris en compte aux fins de l’examen.
N° de l’affaire Commentaire
R 1588/2009-4 «PINEAPPLE»
La chambre de recours a conclu que le caractère distinctif accru et la renommée des marques antérieures ne concernaient pas les produits et services de l’opposant, qui étaient considérés comme identiques aux produits et services contestés. En effet, aucun caractère distinctif ou renommée n’a été prouvé pour ces produits et services, à l’exception des logiciels informatiques compris dans la classe 9 (point 43).
R 1466/2008-2 et R 1565/2008-2, «COMMERZBANK ARENA»
Les preuves soumises démontraient dans une mesure suffisante que la marque «ARENA» était connue d’une part significative du public pertinent. Toutefois, les preuves en question ne comportaient aucune information permettant de déterminer le niveau de connaissance de la marque «ARENA» dans des secteurs autres que les vêtements de natation ou les accessoires de natation (points 58 et 60).
3.1.2.4 Le territoire pertinent
Selon l’article 8, paragraphe 5, du RMC, le territoire pertinent à retenir pour démontrer la renommée de la marque antérieure est le territoire de protection: la marque antérieure doit jouir d’une renommée dans le territoire dans lequel elle est enregistrée. Par conséquent, le territoire à prendre en compte est l’État membre concerné pour les marques nationales, et l’Union européenne pour les marques communautaires.
Dans l’affaire General Motors, la Cour a indiqué, à propos des marques nationales, qu’il ne peut être exigé que la renommée existe dans tout le territoire de l’État membre. Il suffit qu’elle existe dans une partie substantielle de celui-ci. Pour le territoire Benelux en particulier, la Cour a soutenu qu’une partie substantielle de celui-ci pouvait correspondre, le cas échéant, à une partie de l’un des pays du Benelux (arrêt du 14/09/1999, General Motors, C-375/97, points 28 et 29).
La Cour a précisé que, dans le cas d’une marque communautaire antérieure, la renommée sur le territoire d’un seul État membre peut suffire.
N° de l’affaire Commentaire
C-301/07 «PAGO»
Cette affaire concerne une marque communautaire jouissant d’une renommée en Autriche. La Cour a indiqué qu’une marque communautaire doit être connue dans une partie substantielle de la Communauté par une partie significative du public concerné par les produits et services couverts par cette marque. Compte tenu des faits exposés dans cette affaire, le territoire de l’État membre en cause (Autriche) a été considéré comme constituant une partie substantielle du territoire de la Communauté (points 29 et 30).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 17
FINAL VERSION 1.0 01/08/2015
Toutefois, en règle générale, il faut tenir compte, pour évaluer si la partie du territoire en cause constitue une partie substantielle, à la fois de la taille de la zone géographique concernée et de la proportion de la population totale qui y réside, ces deux critères pouvant influer sur l’importance globale du territoire en cause.
N° de l’affaire Commentaire
R 1283/2006-4 «RANCHO PANCHO (fig.)»
Même si les preuves soumises démontraient l’utilisation de la marque dans 17 restaurants en France en 2002, ce chiffre a été considéré comme relativement bas pour un pays qui compte 65 millions d’habitants. Par conséquent, la renommée n’a pas été prouvée (point 22).
Les opposants indiquent souvent dans l’acte d’opposition que la renommée de la marque antérieure s’étend au-delà du territoire de protection (par exemple, ils invoquent une renommée paneuropéenne pour une marque nationale). Dans ce cas, la revendication de l’opposant doit être examinée pour le territoire pertinent.
De même, les pièces produites doivent se rapporter précisément au territoire concerné. Par exemple, des pièces concernant le Japon ou des régions mal définies ne permettent pas d’établir la renommée dans l’Union européenne ou dans un État membre. Ainsi, le montant des ventes réalisées dans l’ensemble de la Communauté ou dans le monde entier ne saurait prouver la renommée dans un État membre donné si les données en cause ne sont pas ventilées par territoire. Autrement dit, pour être prise en compte, une renommée «plus large» doit aussi être démontrée précisément pour le territoire concerné.
N° de l’affaire Commentaire
R 1718/2008-1 «LINGLONG»
La plupart des documents soumis faisaient référence à des pays en dehors de l’Union européenne, principalement la Chine, le pays d’origine de l’opposant, ainsi que d’autres pays asiatiques. Par conséquent, l’opposant ne peut revendiquer la possession d’une marque notoirement connue dans l’UE (point 53).
R 1795/2008-4 «ZAPPER-CLICK» (appel rejeté T-360/10)
Dans la notification d’annulation, la partie défenderesse a affirmé que la renommée était réclamée pour le territoire du Royaume-Uni. Toutefois, l’enregistrement international ne visait que l’Espagne, la France et le Portugal et ne s’étendait donc pas jusqu’au territoire du Royaume-Uni. De surcroît, la partie défenderesse n’a soumis aucune preuve d’une quelconque renommée dans les États membres désignés par l’enregistrement international (point 45).
Toutefois, lorsque la renommée invoquée s’étend au-delà du territoire de protection et qu’il existe des preuves à cet égard, cet élément doit être pris en compte parce qu’il peut renforcer la renommée constatée dans le territoire de protection.
3.1.2.5 La date à prendre en compte
L’opposant doit démontrer que la marque antérieure avait acquis une renommée à la date de dépôt de la demande de marque communautaire contestée, compte tenu, le cas échéant, de toute priorité revendiquée, à condition bien entendu que cette revendication ait été admise par l’Office.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 18
FINAL VERSION 1.0 01/08/2015
Il faut en outre que la renommée de la marque antérieure subsiste jusqu’à ce que la décision concernant l’opposition soit rendue. Toutefois, il suffira en principe que l’opposant démontre que sa marque avait déjà une renommée à la date de dépôt/priorité de la demande de marque communautaire, tandis qu’il appartient au demandeur d’invoquer et de démontrer toute perte de renommée ultérieure. En pratique, ce cas sera assez exceptionnel, puisqu’il présuppose un changement spectaculaire des conditions du marché sur une période relativement brève.
Le fait que l’opposition soit fondée sur une demande antérieure ne fait pas obstacle à l’application de l’article 8, paragraphe 5, du RMC, lequel englobe les demandes antérieures par référence à l’article 8, paragraphe 2, du RMC. Dans la plupart des cas, la demande antérieure n’aura pas acquis de renommée suffisante dans un si bref délai. Néanmoins, l’on ne saurait exclure a priori la possibilité qu’un degré suffisant de renommée soit atteint sur une période exceptionnellement courte. Par ailleurs, la demande peut également concerner une marque déjà utilisée depuis longtemps au moment du dépôt de la demande, et qui a eu assez de temps pour acquérir une renommée. En tout état de cause, les effets de l’enregistrement étant rétroactifs, l’applicabilité de l’article 8, paragraphe 5, du RMC aux demandes antérieures ne peut être considérée comme une dérogation à la règle selon laquelle l’article 8, paragraphe 5, du RMC, ne s’applique qu’aux enregistrements antérieurs, comme indiqué en conclusion au point 2.1 ci-dessus.
En règle générale, plus la date des éléments de preuve est proche de la date à prendre en compte, plus il sera facile de présumer que la marque antérieure avait acquis une renommée à cette date. Il est probable que la valeur de preuve d’un document varie en fonction de la proximité entre la période couverte et la date de dépôt. Des éléments de preuve de la renommée concernant un point ultérieur dans le temps pourraient permettre de tirer des conclusions concernant la renommée de la marque antérieure à la date à prendre en compte (voir, par analogie, ordonnance du 27/01/2004, «La Mer Technology», C-259/02, point 31; arrêt du 17 /04/ 2008, «FERRO», C-108/07, point 53; arrêt du 15/12/2005, «Forme d’un briquet à pierre», T-262/04, point 82).
C’est pourquoi les pièces déposées en vue de prouver la renommée doivent être datées, ou du moins indiquer clairement à quelle date les faits attestés ont eu lieu. Par conséquent, les documents non datés ou les documents portant une date ajoutée ultérieurement (dates inscrites manuellement sur des documents imprimés, par exemple) ne peuvent pas fournir des informations fiables sur la date à prendre en compte.
N° de l’affaire Commentaire
R 0055/2009-2 «BRAVIA»
Les preuves démontraient que la marque «BRAVIA» était utilisée pour des téléviseurs LCD en Pologne, en République tchèque, en Slovaquie, en Hongrie, en Allemagne, en Turquie, au Portugal, en Autriche, en France, en Italie et aux Pays-Bas. Toutefois, aucun des documents soumis n’était daté. L’opposant n’a soumis aucune information relative à la durée. Par conséquent, les éléments de preuve, considérés dans leur ensemble, étaient insuffisants pour prouver la renommée au sein de l’Union européenne (points 27 et 28).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 19
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
R 1033/2009-4 «PEPE»
De l’avis de la chambre de recours, un arrêt de 1972 ne suffisait pas pour prouver le caractère distinctif accru au moment du dépôt de la demande de MC, à savoir le 20/10/2006. De plus, «il découle de la décision du Tribunal [T-164/03] que la renommée de la marque antérieure a été évaluée au 13/06/1996, soit plus de dix ans avant la date à prendre en compte pour établir la renommée» (point 31).
Lorsque le délai écoulé entre la date des preuves les plus récentes de l’usage et la date de dépôt de la demande de marque communautaire est très important, il convient d’apprécier avec soin la pertinence des preuves eu égard au type de produits ou de services concernés. En effet, l’évolution des habitudes et des perceptions des consommateurs peut prendre un certain temps, généralement en fonction du marché concerné.
Le marché de l’habillement, par exemple, est fortement lié aux saisons et aux différentes collections présentées chaque trimestre. Ce facteur devra être pris en compte pour apprécier une éventuelle perte de renommée dans ce secteur. De même, le marché des fournisseurs internet et des sociétés de commerce électronique est très concurrentiel et connaît une croissance rapide, ainsi qu’un déclin rapide, de telle sorte que la renommée risque de connaître une dilution plus rapide dans ce domaine que dans d’autres secteurs du marché.
N° de l’affaire Commentaire
R 0883/2009-4 «MUSTANG»
La partie requérante n’est pas parvenue à prouver que la marque antérieure était déjà notoirement connue à la date de la demande de la marque communautaire contestée. Les certificats relatifs à la renommée de la «désignation Mustang» ne font référence ni à la marque figurative «Calzados Mustang» revendiquée ni à la période pendant laquelle la renommée doit être déterminée (point 28).
Une question similaire se pose en cas de preuves postérieures à la date de dépôt de la demande de marque communautaire. Bien qu’en règle générale ces preuves ne soient pas suffisantes en soi pour établir que la marque avait acquis une renommée au moment du dépôt de la marque communautaire, il ne convient pas de les rejeter comme non pertinentes. Étant donné que la renommée s’acquiert généralement sur plusieurs années, qu’il n’est pas possible de la faire brusquement apparaître ou disparaître, et que certains types de preuves (sondages d’opinion, déclarations sous serment, par exemple) ne sont pas nécessairement disponibles avant la date à prendre en compte, puisqu’ils ne sont généralement établis qu’après la survenance du litige, il convient d’évaluer ces pièces sur la base de leur contenu et conjointement avec le reste des preuves. Par exemple, un sondage d’opinion réalisé après la date à prendre en compte et mettant en évidence un degré suffisamment élevé de connaissance peut suffire pour prouver que la marque avait acquis une renommée à cette date, s’il est établi par ailleurs que les conditions du marché n’ont pas changé (par exemple, que le même niveau de ventes et de dépenses publicitaires a été maintenu avant la réalisation de ce sondage).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 20
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
Affaires conjointes «BOTOLIST / BOTOCYL», T-345/08 et T-357/08, confirmées par C-100/11 P
Même si la renommée d’une marque antérieure doit être établie à la date de dépôt de la marque contestée, les documents portant une date postérieure à cette date ne sauraient toutefois être privés de valeur probante s’ils permettent de tirer des conclusions sur la situation telle qu’elle se présentait à cette même date (point 52).
On ne peut exclure automatiquement la possibilité qu’un document établi quelque temps avant ou après cette date puisse contenir des informations utiles compte tenu du fait qu’en règle générale, une marque acquiert sa renommée progressivement. Il est probable que la valeur de preuve d’un tel document varie en fonction de la proximité entre la période couverte et la date de dépôt (voir, par analogie, ordonnance du 27/01/2004, «La Mer Technology», C-259/02, point 31; arrêt du 17/04/2008, «Ferro», point 53, C-108/07 P; arrêt du 15/12/2005, «Shape of a lighter», T-262/04, point 82).
N° de l’affaire Commentaire
Affaires conjointes «BOTOLIST / BOTOCYL», T-345/08 et T-357/08 , confirmées par C-100/11 P
Les articles de presse produits ont permis d’établir l’existence d’une importante couverture médiatique en ce qui concerne les produits commercialisés sous la marque BOTOX à la date de dépôt des marques contestées (point 53).
3.1.3 Appréciation de la renommée – Facteurs pertinents
Après avoir indiqué que «ni la lettre ni l’esprit de l’article 5, paragraphe 2, de la directive n’autorisent à exiger que la marque soit connue d’un pourcentage déterminé du public», la Cour a également soutenu qu’il convient de prendre en considération tous les éléments pertinents lors de l’appréciation de la renommée de la marque antérieure, à savoir, «notamment la part de marché détenue par la marque, l’intensité, l’étendue géographique et la durée de son usage, ainsi que l’importance des investissements réalisés par l’entreprise pour la promouvoir» (arrêt du 14/09/1999, «General Motors», C-375/97, points 25 et 27).
Si l’on considère conjointement ces deux déclarations, il s’ensuit que le degré de connaissance requis aux fins de l’article 8, paragraphe 5, du RMC ne peut être défini de façon abstraite, mais doit être évalué au cas par cas en tenant compte non seulement du degré de connaissance de la marque, mais aussi de tout autre fait pertinent du cas d’espèce, autrement dit de tout facteur susceptible de fournir des informations sur les performances de la marque sur le marché.
La liste de facteurs à prendre en considération pour apprécier la renommée d’une marque antérieure (notamment la part de marché détenue par la marque, l’intensité, l’étendue géographique et la durée de son usage, ainsi que l’importance des investissements réalisés par l’entreprise pour la promouvoir) servent seulement comme des exemples.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 21
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
T-47/06 ‘Nasdaq’
L'opposant a fourni des preuves détaillées relatives à l'intensité, l'étendue géographique et la durée de l'utilisation de sa marque NASDAQ et le montant dépensé dans la promotion, la démonstration qu'elle était connue d'une partie significative du public concerné par elle. La Cour estime que le fait qu'il n'a pas produit de chiffres concernant la part de marché ne remet pas en cause cette conclusion (par. 51). La Cour a conclu que la liste des facteurs à prendre en considération afin de déterminer la réputation d'une marque antérieure ne servent qu'à titre d'exemples, que tous les éléments pertinents dans l'affaire doit être prise en considération et, d'autre part, l'autre détaillé et vérifiable éléments de preuve produits par l'intervenante est déjà suffisant en soi pour prouver de façon concluante la réputation de sa marque NASDAQ (point 52).
Par ailleurs, les facteurs pertinents doivent être appréciés non seulement en vue d’établir le degré de connaissance de la marque par le public pertinent, mais aussi afin de déterminer si les autres conditions liées à la renommée sont remplies, par exemple si la renommée invoquée couvre une partie significative du territoire pertinent, ou si la renommée avait réellement été acquise avant la date de dépôt ou de priorité de la demande de la marque communautaire contestée.
Il convient également de noter que le même type de test est mis en œuvre pour déterminer si la marque a acquis par l’usage un caractère distinctif accru aux fins de l’article 8, paragraphe 1, point b), du RMC, ou si la marque est notoirement connue au sens de l’article 6 bis de la Convention de Paris, car, dans tous les cas, l’objet de la preuve est en substance le même, à savoir le degré de connaissance de la marque par le public pertinent, sans préjudice du seuil exigé dans chaque cas.
3.1.3.1 La connaissance de la marque
L’affirmation de la Cour selon laquelle il n’y a pas lieu d’«exiger que la marque soit connue d’un pourcentage déterminé du public» ne saurait être interprétée en ce sens que les chiffres concernant la connaissance de la marque ne sont pas pertinents pour l’appréciation de la renommée, ou qu’il convient de leur attribuer une valeur probante moindre pour cette appréciation. Elle implique seulement que les pourcentages de connaissance définis de façon abstraite risquent de ne pas être appropriés dans tous les cas d’espèce et que, par conséquent, il n’est pas possible de fixer a priori un seuil de connaissance applicable d’une façon générale, au-delà duquel il faudrait présumer que la marque est renommée (voir, à cet égard et par analogie, l’arrêt du 04/05/1999, «Windsurfing Chiemsee», affaires conjointes C-108/97 et C-109/97, point 52; arrêt du 22/06/1999, «Lloyd Schuhfabrik Meyer», C-342/97, point 24; arrêt du 16/11/2011, «DORMA»,T-500/10, point 52).
Dès lors, bien qu’il ne soit pas expressément cité par la Cour parmi les facteurs à prendre en compte pour apprécier la renommée, le degré de connaissance de la marque par le public pertinent est directement pertinent et peut être particulièrement utile pour apprécier si la marque est suffisamment connue aux fins de l’article 8, paragraphe 5, du RMC, à condition bien sûr que la méthode de calcul soit fiable.
En règle générale, il est d’autant plus facile d’admettre que la marque a une renommée que le pourcentage de connaissance de la marque est élevé. Toutefois, en l’absence de seuil clairement défini, les pourcentages de connaissance ne sont
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 22
FINAL VERSION 1.0 01/08/2015
convaincants que si les preuves mettent en évidence un degré élevé de connaissance de la marque. Les pourcentages considérés isolément ne sont pas probants. Comme expliqué ci-dessus, la renommée doit plutôt être évaluée sur la base d’une appréciation globale de tous les facteurs pertinents du cas d’espèce. Il est d’autant moins nécessaire de fournir des preuves complémentaires attestant de la renommée que le degré de connaissance est élevé, et vice versa.
N° de l’affaire Commentaire
R 0765/2009-1 «BOB THE BUILDER (fig.)»
Les preuves soumises ont permis de démontrer que la marque antérieure jouissait d’une importante renommée en Suède pour les gelées confitures, panades de fruits, boissons fruitées, concentrés pour la production de boissons et de jus. Selon le sondage mené par TNS Gallup, la connaissance spontanée (réponses téléphoniques à la question «Quelles sont les marques de – "la catégorie de produits en question est citée»– dont vous avez déjà entendu parler ou que vous connaissez?») pour la marque «BOB» variait entre 25 et 71 %, en fonction des produits visés: compotes de pommes, confitures, marmelades, sodas, boissons fruitées et jus de fruits. La connaissance du support (réponse à un questionnaire montrant les produits de la marque) variait entre 49 et 90 %, en fonction des produits. En outre, entre 2001 et 2006, la part de marché moyenne oscillait entre 30 et 35 % pour les catégories de produits ci-dessus (point 34).
Lorsqu’il s’avère, au vu des preuves, que la marque ne jouit que d’un degré de connaissance plus faible, il convient de ne pas présumer automatiquement sa renommée. Autrement dit, la plupart du temps, de simples pourcentages ne sont pas probants en tant que tels. Dans ce cas, c’est seulement si les preuves de la connaissance sont étayées par des indications suffisantes concernant la performance globale de la marque sur le marché que l’on pourra évaluer, avec un degré raisonnable de certitude, si la marque est connue d’une partie significative du public pertinent.
3.1.3.2 La part de marché
La part de marché des produits proposés ou vendus sous la marque et la position de la marque sur le marché sont des indications précieuses pour l’appréciation de la renommée, car elles permettent toutes deux de connaître le pourcentage du public pertinent qui achète en réalité les produits et de mesurer le succès de la marque par rapport aux produits concurrents.
On entend par part de marché le pourcentage du total des ventes réalisées sous une marque dans un secteur donné du marché. Pour définir le secteur du marché concerné, il convient de tenir compte des produits ou des services pour lesquels la marque a été utilisée. Si ces produits ou services sont plus limités que ceux pour lesquels la marque a été enregistrée, l’on se trouve dans un cas de renommée partielle, similaire à celui qui se produit lorsque la marque est enregistrée pour un large éventail de produits, mais n’a acquis une renommée que pour une partie d’entre eux. Dans ce cas, seuls les produits ou services pour lesquels la marque a été réellement utilisée et a acquis une renommée sont pris en compte aux fins de cet examen.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 23
FINAL VERSION 1.0 01/08/2015
Ainsi, une part de marché très substantielle, ou une position de leader sur le marché, constitue généralement un argument de poids en faveur de la renommée, en particulier si elle est associée à un degré suffisamment élevé de connaissance de la marque. À l’inverse, une faible part de marché plaide, dans la plupart des cas à l’encontre de la renommée, à moins qu’il n’existe d’autres facteurs suffisants, à eux seuls, pour justifier cette revendication.
N° de l’affaire Commentaire
Affaires conjointes T-345/08 et T-357/08 «BOTOLIST / BOTOCYL», confirmées par C-100/11 P
«l’importance de la part de marché du BOTOX au Royaume-Uni, 74,3 % en 2003, tout comme le degré de connaissance de la marque de 75 % au sein du public spécialisé habitué aux traitements pharmaceutiques contre les rides, suffit à étayer l’existence d’un degré considérable de reconnaissance sur le marché» (point 76).
T-8/03 «EMILIO PUCCI»
Le Tribunal a estimé que l’opposant n’était pas parvenu à prouver le caractère distinctif accru ou la renommée de ses marques antérieures, étant donné que les preuves soumises (publicités, sept lettres de plusieurs directeurs publicitaires et une cassette vidéo) ne contenaient pas d’éléments objectifs suffisamment circonstanciés ou vérifiables pour permettre d’apprécier la part de marché détenue par les marques EMIDIO TUCCI en Espagne, l’intensité, l’étendue géographique et la durée de leur usage ou l’importance des investissements faits par l’entreprise pour les promouvoir (point 73).
Une part de marché modérée n’est pas toujours un argument probant à l’encontre de la renommée car le pourcentage du public qui connaît en réalité la marque peut dépasser amplement celui des acquéreurs effectifs des produits en cause. Tel est notamment le cas des produits qui sont normalement destinés à plusieurs utilisateurs (magazines familiaux ou journaux, par exemple) (arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, points 35 et 36, et arrêt du 10/07/2007, «NASDAQ», T-47/06, points 47 et 51) ou des produits de luxe, connus de nombreuses personnes, mais que seuls certains peuvent acquérir (par exemple, un pourcentage élevé de consommateurs européens connaissent la marque «Ferrari» pour les voitures, mais seuls quelques-uns en possèdent une). C’est pourquoi la part de marché attestée par des éléments de preuve doit être appréciée en tenant compte des particularités du marché concerné.
N° de l’affaire Commentaire
R 1659/2011-2 «KENZO»
Aux yeux du public européen, «KENZO» fait référence à un fournisseur de premier plan de produits de mode et de luxe sous la forme de parfums, de produits cosmétiques et de vêtements. Le public pertinent a toutefois été considéré comme étant le grand public (point 29).
Dans certains cas, il n’est pas facile de définir la part de marché de la marque antérieure, notamment lorsque la taille exacte du marché concerné ne peut être déterminée avec précision, en raison des particularités des produits ou des services concernés.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 24
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
R 0446/2010-1 «TURBOMANIA»
La présence limitée du produit sur le marché ne l’a aucunement empêché d’acquérir une certaine notoriété auprès du public concerné. Les éléments de preuve ont clairement démontré que la marque en question est continuellement apparue dans les magazines spécialisés de ce marché entre décembre 2003 et mars 2007 (date de dépôt de la demande de marque communautaire). Cela signifie que le public ciblé par les magazines a eu un contact constant et prolongé avec la marque de l’opposant pendant une période de trois ans avant la date concernée. Une telle présence dans la presse, ciblant spécifiquement le public concerné, constituait une preuve suffisante de la connaissance de la marque par le public (point 31).
Dans ce cas, d’autres indications similaires peuvent être pertinentes, comme l’audimat pour la télévision, par exemple dans le cas de courses automobiles ou d’autres évènements à caractère sportif ou culturel.
N° de l’affaire Commentaire
T-47/06 «NASDAQ»
L’opposant a soumis des preuves démontrant que la marque «NASDAQ» apparaissait presque quotidiennement, en particulier par le biais de références aux indices NASDAQ, dans de nombreux journaux et sur de nombreuses chaînes télévisées susceptibles d’être lus/regardées partout en Europe. L’opposant a également soumis des preuves d’investissements publicitaires substantiels. Le Tribunal a estimé que la renommée était prouvée, même si l’opposant n’avait soumis aucun chiffre relatif aux parts de marché (points 47 à 52).
3.1.3.3 L’intensité de l’usage
L’intensité de l’usage d’une marque peut être démontrée par référence au volume de ventes (nombre d’unités vendues) et au chiffre d’affaires (montant total des ventes) réalisés par l’opposant pour les produits revêtus de la marque. En règle générale, les chiffres à prendre en compte correspondent aux ventes d’une année, mais il peut arriver qu’une unité de temps différente soit utilisée.
N° de l’affaire Commentaire
R 2100/2010-1 «SEXIALIS»
Les documents soumis (articles de presse, chiffres de vente, enquêtes) montrent que le signe antérieur «CIALIS» était très régulièrement utilisé avant la date de dépôt de la demande de marque communautaire, que les produits portant la marque «CIALIS» étaient commercialisés dans plusieurs États membres, où ils jouissaient d’une position de choix parmi les marques les plus populaires, et qu’ils bénéficiaient d’un important taux de connaissance par rapport au leader du marché «VIAGRA». La part de marché en hausse constante ainsi que les chiffres de vente ont permis de démontrer «l’expansion très nette de "CIALIS"» (point 55).
Pour évaluer l’importance d’un chiffre d’affaires ou d’un volume de ventes donné, il convient de tenir compte de l’importance du marché concerné en termes de population, dans la mesure où ce facteur a une incidence sur le nombre d’acquéreurs
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 25
FINAL VERSION 1.0 01/08/2015
potentiels des produits en cause. L’importance relative du même volume de ventes sera bien plus grande au Luxembourg, par exemple, qu’en Allemagne.
Par ailleurs, la question de savoir si un volume de ventes ou un chiffre d’affaires donné est substantiel ou non dépend du type de produit concerné. Par exemple, il est beaucoup plus facile d’atteindre un volume de ventes important pour des produits courants de grande consommation que pour des produits de luxe ou des produits durables pour lesquels les achats sont rares, ce qui ne veut pas dire pour autant que le nombre de consommateurs mis en présence de la marque est supérieur dans le premier cas, puisqu’il est probable que la même personne aura acheté plusieurs fois le même produit. Il s’ensuit que la nature, la valeur et la durabilité des produits ou des services en cause doivent être prises en considération pour déterminer l’importance d’un volume de ventes ou d’un chiffre d’affaires donné.
Le volume des ventes et le chiffre d’affaires sont plus utiles en tant qu’indications indirectes à apprécier conjointement avec le reste des preuves, qu’en tant que preuve directe de la renommée. En particulier, ces indications peuvent être particulièrement utiles pour compléter les informations données par les pourcentages concernant la part de marché et la connaissance de la marque, en donnant une impression plus réaliste du marché. Par exemple, elles peuvent mettre en évidence un très gros montant de ventes pour une part de marché qui n’est guère impressionnante, ce qui peut être utile pour apprécier la renommée dans le cas de marchés concurrentiels, sur lesquels il est en général plus difficile pour une marque isolée de représenter une fraction substantielle du total des ventes. En revanche, lorsque la part de marché des produits pour lesquels la marque est utilisée n’est pas fournie séparément, il n’est pas possible de déterminer si un chiffre d’affaires donné correspond ou non à une forte présence sur le marché, à moins que l’opposant ne produise également des pièces indiquant la taille globale du marché concerné en termes financiers, de façon à permettre de déduire sa part de marché.
N° de l’affaire Commentaire
R 1054/2007-4 «mandarino» (fig.)
La renommée n’était pas suffisamment prouvée, en particulier parce qu’aucun des documents ne faisait référence à la connaissance de la marque antérieure par les consommateurs finaux concernés. En outre, aucun document relatif à la part de marché des produits de l’opposant n’a été soumis. Les informations relatives à la part de marché revêtent une très grande importance dans le secteur de l’activité principale de l’opposant (sacs à main, objets pour le transport, accessoires et vêtements), qui est un «secteur très fragmenté et soumis à une rude concurrence» et dans lequel cette gamme de produits est prisée par de nombreux concurrents et concepteurs (points 59 à 61).
Il ne faut pas pour autant sous-estimer l’importance du chiffre d’affaires ou du volume des ventes, car ces deux éléments sont des indications significatives du nombre de consommateurs qui sont censés avoir été en contact avec la marque. Dès lors, il n’est pas exclu qu’un chiffre d’affaires ou un volume de ventes substantiel puisse, dans certains cas, être décisif pour la constatation d’une renommée, soit à lui seul, soit conjointement avec d’autres éléments de preuve limités.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 26
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
R 0445/2010-1 «FLATZ»
Même si, pour des raisons de force majeure, la marque antérieure n’a pas réussi à se faire notoirement connaître par des méthodes traditionnelles, à savoir par la vente du produit, elle est toutefois devenue notoirement connue à la suite d’activités promotionnelles, notamment une publicité intensive pour la marque, en continu et de façon ininterrompue dans la presse spécialisée et lors de salons spécialisés, atteignant ainsi virtuellement les trois secteurs concernés du public. La présence limitée du produit sur le marché n’a aucunement empêché le public concerné de savoir que, à la date en question, FLATZ était la marque par laquelle l’opposant identifiait ses machines de bingo électroniques (points 41, 42, 50 et 51).
R 1466/2008-2 et R 1565/2008-2, «COMMERZBANK ARENA»
L’absence de chiffres relatifs à la part de marché détenue par la marque «ARENA» dans les pays concernés ne suffisait pas en soi pour remettre en question l’identification de la renommée. Premièrement, la liste de facteurs à prendre en considération pour déterminer la renommée d’une marque antérieure ne sert qu’à titre d’exemple, étant donné qu’il convient de tenir compte de toutes les preuves pertinentes dans le cas d’espèce et, deuxièmement, les autres preuves détaillées et vérifiables soumises par l’opposant suffisent à elles seules à prouver un important degré de connaissance de la marque «ARENA» parmi le public concerné (point 59).
Toutefois, étant donné que cette démarche dérogerait à la règle selon laquelle la renommée doit être évaluée sur la base d’une appréciation globale de tous les facteurs pertinents du cas d’espèce, il convient d’éviter, en règle générale, de conclure à l’existence d’une renommée en se fondant de manière quasi-exclusive sur ces chiffres, ou du moins de limiter cette approche aux cas exceptionnels justifiant réellement une présomption de ce type.
3.1.3.4 L’étendue géographique de l’usage
Les indications concernant l’étendue territoriale de l’usage servent principalement à déterminer si la renommée invoquée est suffisamment étendue pour couvrir une partie substantielle du territoire concerné, au sens indiqué au point 3.1 ci-dessus. À cet égard, il convient de tenir compte de la densité de population des régions concernées, car le critère à appliquer en dernière analyse est celui de la proportion de consommateurs connaissant la marque, plutôt que celui de la taille de la zone géographique en tant que telle. De même, il importe de considérer la connaissance de la marque par le public et non la disponibilité des produits ou services. Dès lors, une marque peut jouir d’une renommée étendue en termes de territoire sur la base de publicités, d’opérations de promotion, d’informations parues dans les médias, etc.
En règle générale, plus l’usage est répandu, plus il est aisé de conclure que la marque a franchi le seuil exigé, tandis que toute indication attestant d’un usage excédant une partie substantielle du territoire concerné constitue un signe positif en faveur de la renommée. À l’inverse, un usage très limité dans le territoire concerné constitue un argument de poids à l’encontre de la renommée, par exemple lorsque la grande majorité des produits est exportée vers un pays tiers dans des conteneurs fermés, directement à partir du site de production.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 27
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
R 0966/2010-1 «ERT (fig.)»
Si la marque antérieure avait été notoirement connue pour les émissions de télévision et les magazines dans les 27 États membres de l’Union européenne, l’opposant n’aurait eu aucun mal à fournir des informations sur la «portée de la marque» juste avant 2008, lors du dépôt de la demande de marque communautaire. Les chiffres de vente du magazine ne concernaient toutefois pas la période correcte. Les documents soumis ne donnaient aucune indication quant à l’étendue de la connaissance par le public de l’existence de ladite marque (points 16 et 18).
Toutefois, la preuve de l’usage réel dans le territoire concerné ne doit pas être considérée comme une condition nécessaire de l’acquisition d’une renommée, car ce qui importe le plus, c’est la connaissance de la marque en tant que telle, et non la façon dont elle a été acquise.
Cette connaissance peut découler, par exemple, d’une campagne de publicité intensive antérieure au lancement d’un nouveau produit, ou d’achats transfrontaliers importants générés par un écart de prix significatif sur les marchés concernés, phénomène souvent décrit comme une «retombée territoriale» de la renommée (retombée d’un territoire à un autre). Toutefois, lorsque des circonstances de ce type sont invoquées, elles doivent être démontrées preuves à l’appui. Par exemple, l’on ne peut présumer, du seul principe de libre échange en vigueur dans l’Union européenne, que les produits mis en vente dans l’État membre X ont également pénétré le marché de l’État membre Y en grandes quantités.
3.1.3.5 La durée de l’usage
Les indications concernant la durée de l’usage sont particulièrement utiles pour déterminer la longévité de la marque. Plus la durée de l’usage de la marque sur le marché est longue, plus le nombre de consommateurs susceptibles d’avoir été en contact avec la marque est élevé, et plus il est probable que ces consommateurs aient été exposés plus d’une fois à la marque. Par exemple, une présence de 45, 50 ou plus de 100 ans sur le marché est considérée comme un argument de poids en faveur de la renommée.
N° de l’affaire Commentaire
R 1466/2008-2 et R 1565/2008-2, «COMMERZBANK ARENA»
Les preuves soumises démontraient une durée d’usage (plus de trente ans) et une étendue géographique de l’usage (plus de 75 pays dans le monde entier, y compris les États membres concernés) très impressionnantes de la marque «ARENA» (point 55).
T-369/10 «BEATLE» (pourvoi rejeté dans l’affaire C-294/12 P)
Le groupe The Beatles était considéré comme ayant une renommée exceptionnelle, qui s’étend sur une période de plus de 40 ans (point 36).
La durée de l’usage de la marque ne doit pas être déduite simplement de la durée de son enregistrement. L’enregistrement et l’usage ne coïncident pas nécessairement, car l’usage effectif de la marque a pu commencer avant ou après son dépôt. Ainsi, lorsque l’opposant invoque un usage effectif d’une durée supérieure à celle de
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 28
FINAL VERSION 1.0 01/08/2015
l’enregistrement, il lui appartient de prouver que cet usage a bien commencé avant la date de demande de marque.
Cependant, un enregistrement de longue date peut parfois laisser supposer, indirectement, une longue présence sur le marché, car il serait inhabituel que l’opposant maintienne une marque enregistrée pendant de nombreuses décennies sans intérêt économique sous-jacent.
L’élément décisif, en définitive, est la question de savoir si la marque antérieure avait acquis une renommée à la date du dépôt de la demande contestée. La question de savoir si cette renommée existait également à une date antérieure est sans intérêt sur le plan juridique. Ainsi, la preuve d’un usage continu jusqu’à la date du dépôt de la demande constitue un argument positif en faveur de la renommée.
En revanche, si l’usage de la marque a été suspendu pendant une longue période, ou si le délai écoulé entre la preuve la plus récente de l’usage et le dépôt de la demande de marque communautaire est très long, il sera plus difficile de conclure que la renommée de la marque a survécu à l’interruption de l’usage, ou qu’elle a subsisté jusqu’à la date de dépôt de la demande (voir également le point 3.1.2.5 ci-dessus).
3.1.3.6 Les opérations publicitaires
La nature et l’ampleur des opérations publicitaires réalisées par l’opposant constituent des indications utiles pour apprécier la renommée de la marque, dans la mesure où ces opérations ont été entreprises pour créer une image de marque et renforcer la connaissance de la marque parmi le public. Ainsi, une campagne publicitaire longue, intensive et élargie peut inciter fortement à penser que la marque a acquis une renommée parmi les acquéreurs effectifs ou potentiels de ces produits, et qu’elle a pu en fait devenir notoire au-delà du cercle des acquéreurs effectifs de ces produits.
N° de l’affaire Commentaire
C-100/11 P «BOTOLIST / BOTOCYL»
Les preuves de la promotion de la marque «BOTOX» en langue anglaise dans la presse scientifique et de vulgarisation étaient suffisantes pour établir la renommée de la marque parmi le grand public et les professionnels de la santé (points 65 et 66).
R 0445/2010-1 «FLATZ»
Même si, pour des raisons de force majeure, la marque antérieure n’a pas réussi à se faire notoirement connaître par des méthodes traditionnelles, à savoir par la vente du produit, elle est toutefois devenue notoirement connue à la suite d’activités promotionnelles, notamment une publicité intensive pour la marque, en continu et de façon ininterrompue dans la presse spécialisée et lors de salons spécialisés, atteignant ainsi virtuellement les trois secteurs concernés du public. La présence limitée du produit sur le marché n’a aucunement empêché le public concerné de savoir que, à la date en question, FLATZ était la marque par laquelle l’opposant identifiait ses machines de bingo électroniques (points 41, 42, 50 et 51).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 29
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
R 1659/2011-2 «KENZO» et R 1364/2012-2 «KENZO»
Les produits de l’opposant ont fait l’objet de publicité et d’articles dans bon nombre des principaux magazines de mode dans le monde, ainsi que dans certains périodiques généralistes européens. Conformément à la jurisprudence, la renommée de «KENZO» pour les produits en question est confirmée. Les produits pour lesquels la marque antérieure jouit d’une renommée sont les produits cosmétiques, les parfums et les vêtements. En raison de son importante renommée, la marque antérieure «KENZO» présente un «attrait incontestable» qui peut être transmis à quasiment tout produit de luxe (point 33). L’affaire ultérieure a permis de confirmer la renommée (point 33).
Même si l’on ne peut exclure la possibilité qu’une marque acquière une renommée avant tout usage effectif, les opérations publicitaires sont généralement insuffisantes, à elles seules, pour démontrer que la marque antérieure a effectivement acquis une renommée (voir également le point 3.1.3.4 ci-dessus). Par exemple, il est difficile de prouver qu’une partie significative du public connaît la marque en faisant exclusivement référence à la promotion ou à la publicité réalisée dans le cadre des préparatifs du lancement d’un nouveau produit, car l’impact réel de la publicité sur la perception du public est difficile à mesurer sans référence aux ventes. Dans ce cas, le seul moyen de preuve dont dispose l’opposant consiste en des sondages d’opinion et des instruments similaires, dont la valeur probante peut varier en fonction de la fiabilité de la méthode utilisée, de la taille de l’échantillon statistique, etc. (pour la force probante des sondages d’opinion, voir également le point 3.1.4 ci-dessous).
L’impact des opérations publicitaires de l’opposant peut être démontré soit directement, par référence à l’importance des dépenses publicitaires, ou indirectement, par déduction à partir de la nature de la stratégie publicitaire adoptée par l’opposant et du type de support utilisé pour la publicité de la marque.
Par exemple, il convient d’accorder plus de poids à la publicité réalisée sur une chaîne de télévision nationale ou dans une publication périodique prestigieuse qu’aux campagnes de portée régionale ou locale, en particulier si elle s’accompagne d’un audimat ou de tirages élevés. De même, le parrainage d’événements sportifs ou culturels prestigieux peut être un autre signe de promotion intensive, car ce type de programmes implique souvent des investissements considérables.
N° de l’affaire Commentaire
R 1673/2008-2 «FIESTA»
À la suite des différentes campagnes publicitaires de Ferrero à la télévision italienne (y compris sur la Rai), il est manifeste que la marque antérieure a fait l’objet d’une vaste exposition auprès des téléspectateurs en 2005 et en 2006. Bon nombre de ces spots publicitaires ont fait l’objet d’une diffusion à des heures de grande audience (par ex., pendant la retransmission du grand prix de Formule 1) (point 41).
Par ailleurs, le contenu de la stratégie publicitaire choisie par l’opposant peut être utile et mettre en évidence le type d’image que l’opposant s’efforce de créer pour sa marque. Cette information peut revêtir une importance particulière pour apprécier le risque qu’un préjudice soit porté à une image particulière dont la marque serait porteuse ou le risque qu’un profit en soit tiré indûment, car l’existence et le contenu de
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 30
FINAL VERSION 1.0 01/08/2015
cette image doivent ressortir très nettement des preuves produites par l’opposant (voir également le point 3.4 ci-dessous).
N° de l’affaire Commentaire
T-332/10 «VIAGUARA» («VIAGRA»)
Le Tribunal a estimé que, s’agissant de la nature des produits concernés, la chambre de recours a considéré, à bon droit, que les propriétés aphrodisiaques et stimulantes revendiquées à des fins commerciales par les boissons non alcooliques relevant de la classe 32 coïncidaient avec les indications thérapeutiques du produit de la marque antérieure ou, à tout le moins, avec les images projetée par celle-ci, à savoir une image de plaisir, de vitalité, de force et de jeunesse (point 66).
R 0306/2010-4 «CARRERA» (recours T-0173/11)
La marque de l’opposant n’est pas seulement connue en tant que telle. En effet, en raison du prix élevé des voitures de sport, des dépenses élevées consenties par l’opposant en publicités et de ses victoires lors de courses, le public l’associe à une image de luxe, de haute technologie et de hautes performances (point 31).
3.1.3.7 Les autres facteurs
La Cour a précisé que la liste des facteurs présentée ci-dessus n’est fournie qu’à titre indicatif, et a souligné que tous les éléments pertinents de la cause doivent être pris en considération pour apprécier la renommée de la marque antérieure (arrêt du 14/09/1999, «General Motors», C-375/97, point 27). D’autres facteurs sont mentionnés dans la jurisprudence de la Cour relative au caractère distinctif accru acquis par l’usage, ou dans les recommandations de l’OMPI relatives à la protection des marques notoires. Ainsi, les éléments suivants peuvent être ajoutés aux facteurs exposés ci- dessus en fonction de leur pertinence dans chaque cas d’espèce: mesures d’exécution suivies d’effet; nombre d’enregistrements; certificats et prix; et valeur associée à la marque.
Mesures d’exécution suivies d’effet
Le fait qu’une marque ait donné lieu à des mesures d’exécution suivies d’effet pour des produits ou des services non similaires revêt de l’importance parce qu’il peut montrer que la protection est admise pour des produits ou services non similaires, du moins par rapport à d’autres commerçants.
Ces mesures peuvent consister en des poursuites extrajudiciaires suivies d’effet, telles que l’acceptation de demandes de ne pas faire, en la conclusion d’accords de délimitation dans les affaires de marques ou en d’autres opérations similaires.
En outre, les pièces attestant que la renommée de la marque de l’opposant a été reconnue et protégée, à plusieurs reprises, contre des actes délictueux par des décisions d’autorités judiciaires ou administratives constituent une indication importante: elles montrent que la marque jouit effectivement d’une renommée dans le territoire pertinent, en particulier lorsque ces décisions sont récentes. Leur impact peut être renforcé lorsque les décisions de ce type sont nombreuses (sur la force probante des décisions, voir le point 3.1.4.4 ci-dessous). Ce facteur est mentionné à l’article 2, paragraphe 1, point b), aliéna 5), des Recommandations de l’OMPI.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 31
FINAL VERSION 1.0 01/08/2015
Nombre d’enregistrements
Le nombre et la durée des enregistrements et des demandes dont la marque a fait l’objet en Europe ou dans le monde constituent également des facteurs pertinents, mais donnent, en tant que tel, une faible indication du degré de connaissance du signe par le public pertinent. Le fait que l’opposant possède de nombreux enregistrements de marques et dans de nombreuses classes peut attester indirectement d’une diffusion internationale de la marque, mais ne peut prouver de manière décisive en soi l’existence d’une renommée. Ce facteur est mentionné à l’article 2, paragraphe 1, point b), alinéa 4), des Recommandations de l’OMPI, qui précise clairement la nécessité d’un usage effectif: la durée et l’aire géographique de tout enregistrement, ou demande d’enregistrement, de la marque sont pertinentes «dans la mesure où elles reflètent l’utilisation ou la connaissance de la marque».
Certificats et prix
Les certificats, les prix et les autres formes similaires de connaissance publique fournissent généralement des informations sur l’historique de la marque, ou mettent en évidence certains aspects qualitatifs des produits de l’opposant, mais, en règle générale, ils ne sont pas suffisants à eux seuls pour établir la renommée et sont plus utiles en tant qu’indications indirectes. Par exemple, le fait que l’opposant détient un titre de fournisseur royal depuis de nombreuses années peut indiquer que la marque invoquée est une marque traditionnelle, mais ne saurait donner des informations directes sur la connaissance de la marque. Toutefois, le certificat est bien plus pertinent s’il concerne des faits liés à la performance de la marque. Ce facteur a été mentionné par la Cour dans les arrêts «Lloyd Schuhfabrik Meyer» et «Windsurfing Chiemsee» à propos de l’appréciation du caractère distinctif accru acquis par l’usage.
N° de l’affaire Commentaire
R 1637/2011-5 «APART»
Les nouvelles preuves soumises par la partie requérante et acceptées par la chambre de recours montrent que la marque antérieure avait systématiquement obtenu un classement élevé ainsi que des prix lors de sondages effectués par des sociétés spécialisées en Pologne entre 2005 et 2009 (point 30). Par conséquent, il a été considéré que la partie requérante avait prouvé avec succès une renommée en Pologne pour des bijoux, mais qu’elle n’était pas parvenue à prouver la renommée pour les produits et services couverts par ses signes antérieurs.
La valeur associée à la marque
Le fait qu’une marque soit sollicitée par d’autres sociétés à des fins de reproduction sur leurs produits, soit en tant que marque, soit à titre purement décoratif, incite fortement à penser que la marque possède un caractère attractif élevé ainsi qu’une importante valeur économique. Ainsi, la mesure dans laquelle la marque est exploitée par le biais de licences ou d’opérations de marchandisage et de parrainage, ainsi que l’importance des programmes correspondants, sont des indications utiles pour apprécier la renommée. Ce facteur est mentionné à l’article 2, paragraphe 1, point b), aliéna 6), des Recommandations de l’OMPI.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 32
FINAL VERSION 1.0 01/08/2015
3.1.4 La preuve de la renommée
3.1.4.1 La qualité de la preuve
Les preuves produites par l’opposant doivent permettre à l’Office de parvenir à la conclusion positive que la marque antérieure a acquis une renommée dans le territoire concerné. Le libellé de l’article 8, paragraphe 5, du RMC et de la règle 19, paragraphe 2, point c), du REMC est très clair sur ce point: la marque antérieure ne mérite une protection élargie que si elle «jouit d’une renommée».
Il en découle que les preuves doivent être claires et convaincantes, en ce sens que l’opposant doit établir clairement tous les faits nécessaires pour conclure avec sécurité que la marque est connue d’une partie significative du public. La renommée de la marque antérieure doit être suffisamment démontrée pour convaincre l’Office, et non pas simplement présumée.
3.1.4.2 La charge de la preuve
Aux termes de la deuxième partie de l’article 76, paragraphe 1, du RMC, dans les procédures inter partes, l’examen de l’Office est «limité aux moyens invoqués et aux demandes présentées par les parties». Il s’ensuit que, pour apprécier si la marque antérieure jouit d’une renommée, l’Office ne peut pas tenir compte de faits dont il est informé de par sa connaissance personnelle du marché ni procéder à un examen d’office du dossier, mais que ses conclusions doivent être exclusivement fondées sur les informations et les pièces produites par l’opposant.
Des exceptions à cette règle sont possibles lorsque certains faits particuliers sont si bien établis qu’ils peuvent être considérés comme étant universellement connus et que, partant, l’Office est également censé les connaître (par exemple, le fait qu’un pays donné possède un certain nombre de consommateurs, ou que les produits alimentaires sont destinés au grand public). Toutefois, la question de savoir si une marque a ou non franchi le seuil de renommée fixé par la Cour dans l’affaire General Motors n’est pas, en soi, une pure question de fait, puisqu’elle suppose l’évaluation juridique de plusieurs indications factuelles et que l’on ne saurait simplement présumer que la renommée de la marque antérieure constitue, en tant que telle, un fait universellement connu.
N° de l’affaire Commentaire
T-185/02 «PICARO» (confirmé par C-361/04 P)
Outre les faits avancés explicitement par les parties, la chambre de recours peut prendre en considération des faits notoires, c’est-à-dire des faits qui sont susceptibles d’être connus par toute personne ou qui peuvent être connus par des sources généralement accessibles. «En effet, il convient de tenir compte, tout d’abord, de ce que la règle de droit énoncée à l’article 74, paragraphe 1, in fine, du règlement nº 40/94 constitue une exception par rapport au principe de l’examen d’office des faits, consacré in limine par la même disposition. Dès lors, cette exception doit faire l’objet d’une interprétation stricte qui définisse sa portée de manière à ne pas excéder ce qui est nécessaire pour atteindre sa finalité» (points 29 à 32).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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N° de l’affaire Commentaire
R 1472/2007-2 «El Polo»
Il est de notoriété publique que le marque antérieure est effectivement une marque très connue, non seulement en France, mais également dans la plupart des pays européens, en grande partie grâce à l’exposition au public de produits dans les aéroports et dans les boutiques hors taxe ainsi que grâce à de nombreuses années de publicités dans des magazines à grand tirage. Le poids des preuves requises pour étayer des affirmations universellement connues pour être vraies ne doit pas être très important (point 32).
La règle 19, paragraphe 2, point c), du REMC prévoit qu’il incombe à l’opposant de faire valoir et de prouver les faits pertinents, en exigeant expressément qu’il fournisse «la preuve que la marque est renommée». Selon la règle 19, paragraphe 1, et la règle 19, paragraphe 2, point c), du REMC, et conformément à la pratique de l’Office, ces preuves peuvent être produites soit avec l’acte d’opposition, soit dans un délai de quatre mois à compter de la date de notification de l’opposition au demandeur. L’opposant peut également faire référence aux faits et pièces présentés au cours d’une autre procédure d’opposition, à condition que les pièces concernées soient indiquées de façon claire et non ambiguë, et que la langue de la procédure soit la même dans les deux cas.
Si les preuves de la renommée ne sont pas rédigées dans la langue correcte, elles doivent être traduites dans la langue de la procédure au cours du même délai de quatre mois, comme l’exigent les règles 16, paragraphe 1, et 17, paragraphe 3, du REMC. Toutefois, compte tenu du volume de documents souvent nécessaire pour prouver la renommée, il suffit de traduire uniquement les parties importantes des publications ou des documents longs. De même, il n’est pas nécessaire de traduire intégralement les documents ou parties de documents qui contiennent principalement des chiffres ou des statistiques dont la signification est évidente, comme c’est souvent le cas pour les factures, les bons de commande, les diagrammes, brochures, catalogues, etc.
N° de l’affaire Commentaire
R 1472/2007-2 «El Polo»
Même s’il existe une obligation de produire des preuves en vue d’étayer l’existence d’un droit antérieur dans la langue de la procédure d’opposition, le format dans lequel la traduction doit se faire n’est pas spécifié. De nombreux opposants se contentent de fournir leur propre traduction, souvent manuscrite, des détails de l’enregistrement. Il incombe en premier lieu à l’Office et, dans une moindre mesure, au demandeur de s’assurer de l’exactitude de ces traductions. En cas de traduction incorrecte, on ne pourra pas s’appuyer sur le document (point 17).
3.1.4.3 L’évaluation des preuves
Les règles de base concernant l’évaluation des preuves sont également applicables: les preuves doivent être appréciées globalement. Autrement dit, chaque indication doit être mise en balance avec les autres, étant précisé que les informations confirmées par plusieurs sources sont généralement plus fiables que les faits provenant de sources isolées. En outre, les pièces ont d’autant plus de force probante que la source d’informations est indépendante, fiable et bien informée.
Ainsi, il est très peu probable que les informations provenant directement de l’opposant suffisent à elles seules, en particulier si elles consistent uniquement en des
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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avis et en des estimations et non en des faits, ou si elles n’ont aucun caractère officiel et ne sont pas validées de façon objective, par exemple lorsque l’opposant présente des notes d’information internes ou des tableaux contenant des données et des chiffres dont l’origine est inconnue.
N° de l’affaire Commentaire
R 0295/2009-4 «PG PROINGEC CONSULTORIA (fig.)»
Le contenu de la documentation soumise ne démontre pas clairement que la marque antérieure jouit d’une renommée. Cette documentation émane en grande partie directement de la partie défenderesse et contient des informations extraites de ses catalogues de vente ainsi que ses propres publicités et documents téléchargés de son site internet. Il n’y a pas assez de documentation/d’informations émanant de tiers pour refléter la position de la partie défenderesse sur le marché de manière claire et objective. Renommée non prouvée (point 26).
T-500/10 «doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS» (fig.)
S’agissant de documents versés au dossier émanant de l’entreprise elle-même, le Tribunal a jugé que, pour apprécier leur valeur probante, il fallait en premier lieu vérifier la vraisemblance de l’information qui y est contenue. Le Tribunal a ajouté qu’il fallait alors tenir compte, notamment, de l’origine du document, des circonstances de son élaboration, de son destinataire, et se demander si, d’après son contenu, il semblait sensé et fiable (point 49).
Toutefois, si ces informations ont été diffusées dans le public ou recueillies à des fins officielles et si elles contiennent des données ayant fait l’objet d’une vérification objective, ou si elles reproduisent des déclarations faites en public, leur force probante est généralement accrue.
Pour ce qui est de leur contenu, les pièces sont d’autant plus pertinentes et probantes qu’elles contiennent des indications sur les divers facteurs sur la base desquels la renommée peut être déduite. En particulier, les pièces dans lesquelles les informations quantitatives sont globalement peu nombreuses, voire inexistantes, ne peuvent pas fournir d’indications sur des facteurs essentiels, tels que la connaissance de la marque, la part de marché et l’intensité de l’usage et, partant, ne sont pas suffisantes pour conclure à l’existence d’une renommée.
3.1.4.4 Les moyens de preuve
La réglementation ne contient aucune mention directe du type de preuve le plus approprié pour démontrer la renommée, comme celui mentionné à la règle 22, paragraphe 4, du REMC à propos des preuves de l’usage. L’opposant peut recourir à tous les moyens de preuve de l’article 78, paragraphe 1, du RMC, dès lors qu’ils permettent de démontrer que la marque possède effectivement la renommée requise.
Les moyens de preuve les plus souvent utilisés par l’opposant dans les procédures d’opposition devant l’Office sont les suivants (l’ordre de la liste ne reflète pas leur importance relative ni leur force probante):
1. déclarations faites sous serment ou solennellement; 2. décisions des tribunaux ou des autorités administratives; 3. décisions de l’Office; 4. sondages d’opinion et études de marché;
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 35
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5. audits et contrôles; 6. certificats et prix; 7. articles parus dans la presse ou dans des publications spécialisées; 8. rapports annuels sur les résultats économiques et descriptifs de sociétés; 9. factures et autres documents commerciaux; 10. publicités et supports publicitaires.
Des preuves de ce type peuvent également être présentées au titre de l’article 8, paragraphe 1, point b), du RMC, afin de prouver que la marque antérieure a acquis un caractère distinctif accru, ou au titre de l’article 8, paragraphe 2, point c), du RMC, pour les marques notoirement connues.
Déclarations faites sous serment ou solennellement
L’importance relative et la valeur probante qu’il convient d’attribuer aux déclarations solennelles sont déterminées par les règles générales appliquées par l’Office pour l’appréciation de ces preuves. En particulier, il faut tenir compte tant de la capacité de la personne qui fournit les pièces que de la pertinence de celles-ci dans le cas d’espèce. Pour plus de précisions sur l’importance relative et la valeur probante des déclarations écrites sous serment, voir les Directives, Partie C, Opposition, Section 6, La preuve de l’usage.
N° de l’affaire Commentaire
R 0729/2009-1 «SKYBLOG»
La déclaration soumise par une société de consultants experts dans le domaine de la stratégie des médias numériques au Royaume-Uni atteste que l’opposant «est le premier fournisseur de télévision numérique au Royaume-Uni» et que «Sky» jouit d’une renommée importante et impressionnante (point 37).
Décisions des tribunaux ou des autorités administratives
Les opposants invoquent souvent les décisions d’autorités ou de juridictions nationales qui ont admis la renommée de la marque antérieure. Bien que les décisions nationales constituent des preuves recevables et puissent avoir une valeur probante, en particulier si elles proviennent d’un État membre dont le territoire est également concerné par l’opposition en cours, elles ne lient pas l’Office, en ce sens que celui-ci n’est pas tenu de suivre leur conclusion.
N° de l’affaire Commentaire
T-192/09 «SEVE TROPHY»
En ce qui concerne les arrêts des tribunaux espagnols, le régime communautaire des marques est un système autonome, constitué d’un ensemble de règles et poursuivant des objectifs qui lui sont spécifiques, son application étant indépendante de tout système national (point 79).
Dans la mesure où ces décisions peuvent contenir des indications sur l’existence de la renommée et un historique des mesures d’exécution suivies d’effet auxquelles la marque a donné lieu, il convient d’examiner leur pertinence. Les critères à appliquer à cet égard sont le type de procédure concerné, la question de savoir si le problème
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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posé était bien celui de la renommée au sens de l’article 8, paragraphe 5, du RMC, le niveau de la juridiction, ainsi que le nombre de décisions de ce type.
N° de l’affaire Commentaire
C-100/11 P «BOTOLIST / BOTOCYL»
Les décisions de l’office national du Royaume-Uni concernant la renommée de «BOTOX» sont des faits qui, s’ils s’avèrent pertinents, peuvent être pris en considération par le Tribunal, malgré le fait que les propriétaires de la marque communautaire ne soient pas parties à ces décisions (point 78).
Il peut exister des différences entre les conditions de fond et les conditions de forme applicables dans les procédures nationales et celles appliquées dans les procédures d’opposition devant l’Office. Premièrement, il peut y avoir des différences dans la façon de définir ou d’interpréter la condition liée à la renommée. Deuxièmement, l’importance que l’Office attache aux preuves n’est pas nécessairement identique à celle qui leur est accordée dans les procédures nationales. Par ailleurs, il est possible que les instances nationales puissent tenir compte d’office de faits dont elles ont directement connaissance, tandis que l’Office ne le peut pas, en vertu de l’article 76 du RMC.
C’est pourquoi la valeur probante des décisions nationales se trouve considérablement renforcée si les conditions de droit et de fait sur la base desquelles elles ont été rendues sont clairement précisées. En effet, à défaut de ces éléments, il est plus difficile pour le demandeur d’exercer son droit de défense, et pour l’Office d’en apprécier le bien-fondé avec un degré raisonnable de certitude. De même, si la décision n’est pas encore devenue définitive ou si elle n’est plus d’actualité en raison du délai écoulé entre les deux affaires, sa force probante sera réduite d’autant.
La force probante des décisions nationales doit donc s’apprécier sur la base de leur contenu et peut varier en fonction du cas d’espèce.
Décisions de l’Office
L’opposant peut également se référer aux décisions antérieures de l’Office, à condition que cette référence soit claire et sans ambiguïté, et que la langue de la procédure soit la même. Dans le cas contraire, l’opposant doit en outre déposer une traduction de la décision dans le délai de quatre mois imparti pour présenter de nouveaux faits, preuves et observations, de façon à permettre au demandeur d’exercer son droit de défense.
Pour ce qui est de la pertinence et de la force probante des décisions antérieures de l’Office, les règles applicables sont les mêmes que pour les décisions nationales. Même lorsque la référence est recevable et la décision pertinente, l’Office n’est pas tenu de parvenir à la même conclusion et doit examiner chaque affaire sur le fond.
Il s’ensuit que les décisions antérieures de l’Office n’ont qu’une force probante relative et doivent être évaluées conjointement avec le reste des preuves, en particulier lorsque la référence faite par l’opposant ne s’étend pas aux pièces déposées dans la première affaire, autrement dit lorsque leur demandeur n’a jamais eu la possibilité de présenter ses observations à leur sujet, ou lorsque le délai écoulé entre les deux affaires est très long.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 37
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N° de l’affaire Commentaire
R 0141/2011-1 «GUSSACI GUSSACI GUSSACI GUSSACI» (fig.)
La constatation d’une renommée est confirmée par la décision précédente de la chambre de recours, qui stipule que «GUCCI» était considérée comme une des principales marques mondiales dans le domaine des produits de luxe, et que la renommée de la marque «GUCCI» ainsi que de la lettre «G» dans ses différentes configurations en tant qu’abréviation de «GUCCI» était établie. Plus spécifiquement, une renommée a été établie pour les produits suivants: montres et bijoux (décision du 14/04/2011, R 143/2010-1, «GUDDY / GUCCI»), vêtements, sacs à main, maroquinerie, bagages, chaussures, cadeaux, bijoux, parfums et lunettes (décision du 11/02/2010, R 1281/2008-1 «G» (fig.) / «G» (fig.) et al.), vêtements, sacs à main, maroquinerie, bagages et chaussures (décision du 17/03/2011, R 543/2010-1, «G» (fig.) / «G» (fig.) et al.) (point 18).
Sondages d’opinion et études de marché
Les sondages d’opinion et les études de marché constituent le moyen de preuve le mieux adapté pour fournir des informations sur le degré de connaissance de la marque, sa part de marché ou la position qu’elle occupe sur le marché par rapport aux produits concurrents.
La force probante des sondages d’opinion et des études de marché est fonction du statut et du degré d’indépendance de l’entité qui les réalise, de la pertinence et de l’exactitude des informations qu’elle fournit, et de la fiabilité de la méthode appliquée.
Plus précisément, l’Office a besoin, pour évaluer la crédibilité d’un sondage d’opinion ou d’une étude de marché, des informations suivantes.
1. Le sondage, ou l’étude, a-t-il été réalisé par une société ou un institut de recherche indépendant et reconnu? (afin de déterminer la fiabilité de la source des preuves)
2. Nombre et profil (sexe, âge, profession et formation) des personnes interrogées, afin d’évaluer si les résultats de l’étude sont représentatifs des différents types de consommateurs potentiels des produits en cause. En principe, un sondage réalisé auprès de 1 000 à 2 000 personnes sera suffisant, à condition que ces personnes soient représentatives de la catégorie de consommateurs concernée.
3. Méthode retenue et circonstances dans lesquelles l’étude a été réalisée, et liste complète des questions figurant dans le questionnaire. Il est également important de savoir comment et dans quel ordre les questions ont été formulées, afin de déterminer si les personnes interrogées ont répondu à des questions tendancieuses.
4. Le pourcentage indiqué dans l’étude correspond-il au nombre total de personnes interrogées ou seulement à celles qui ont réellement répondu?
À défaut des indications ci-dessus, il convient de considérer que les résultats d’une étude de marché ou d’un sondage d’opinion n’ont pas de grande valeur probante, et ne sont en principe pas suffisants, à eux seuls, pour conclure à l’existence d’une renommée.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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N° de l’affaire Commentaire
R 0925/2010-2 «1 CLEAN! 2 FRESH! 3 STRONG!» (fig.)
La partie demanderesse de l’annulation n’a pas soumis de preuves suffisantes de la renommée de sa marque. Selon les extraits du sondage mené en 2001 en Italie, même si le niveau de «notoriété assistée» est de 86 %, le taux de «notoriété spontanée» ne s’élève qu’à 56 %. En outre, aucune indication n’est donnée quant aux questions posées aux personnes interrogées. Il est par conséquent impossible de déterminer si les questions étaient ou non réellement ouvertes et non assistées. Enfin, le sondage ne précise pas pour quels produits la marque est connue (point 27).
De plus, lorsque les indications ci-dessus sont fournies, mais que la fiabilité de la source et de la méthode est contestable, que les questions étaient tendancieuses ou que l’échantillon statistique est trop restreint, la crédibilité des preuves est réduite d’autant.
N° de l’affaire Commentaire
R 1191/2010-4 «MÁS KOLOMBIANA …Y QUÉ MÁS!! (fig.)»
Le sondage soumis par l’opposant ne fournit pas d’informations permettant de conclure à la notoriété du signe antérieur auprès du public espagnol pour des eaux gazeuses car les personnes sondées ont été soigneusement sélectionnées sur la base de leur origine, à savoir, des Colombiens résidant en Espagne. Ceux-ci ne représentent qu’une faible proportion de la population habitant en Espagne. De même, les chiffres de vente, les investissements publicitaires et la présence dans des publications ciblant le public des immigrants figurant dans la déclaration authentique ne sont pas suffisamment importants pour prouver la notoriété du signe antérieur. En outre, les déclarations en question ne sont pas corroborées par des données probantes en ce qui concerne la quantité de produits ou le chiffre d’affaires généré par ceux-ci (point 23).
R 1345/2010-1 «Fukato Fukato (fig.)»
Pour soutenir sa réclamation au titre de l’article 8, paragraphe 5, du RMC, l’opposant s’appuie exclusivement sur un sondage d’opinion réalisé en 2007. Ce sondage d’opinion a été effectué par une société indépendante. En principe, un sondage réalisé auprès de 1 000à 2 000 personnes est suffisant, à condition que ces personnes soient représentatives de la catégorie de consommateurs concernée. Le sondage de l’opposant se basait sur un échantillon de 500 personnes interrogées, ce qui ne suffit pas au regard des services pour lesquels la renommée est revendiquée. Selon ce sondage d’opinion, le logo de la marque antérieure est spécifiquement associé à des services dans les secteurs de la finance et des assurances. Étant donné que l’opposition s’appuie uniquement sur la classe 42 pour ce qui concerne la marque communautaire antérieure, elle ne couvre pas les services financiers et d’assurance. Par conséquent, le sondage soumis ne constitue pas une preuve pertinente de la renommée de la marque communautaire de l’opposant (point 58).
À l’inverse, les sondages d’opinion et les études de marché remplissant les conditions ci-dessus (indépendance et fiabilité de la source, échantillon suffisamment large et important et méthode fiable) constituent un argument de poids en faveur de la renommée, en particulier s’ils font ressortir un degré élevé de connaissance de la marque.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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Audits et contrôles
Les audits et les contrôles réalisés dans l’entreprise de l’opposant peuvent fournir des informations utiles sur l’intensité de l’usage de la marque, car ils concernent généralement des données relatives aux résultats financiers, aux volumes de vente, au chiffre d’affaires, aux bénéfices, etc. Toutefois, les preuves de ce type ne sont pertinentes que si elles font expressément référence aux produits vendus sous la marque en cause, et non aux activités de l’opposant en général.
Les audits et les contrôles peuvent être effectués à l’initiative de l’opposant, ou être obligatoires en vertu du droit des sociétés et/ou de la réglementation financière. Dans le premier cas, les règles applicables sont les mêmes que pour les sondages d’opinion et les études de marché, autrement dit le statut de l’entité qui réalise l’audit et la fiabilité de la méthode appliquée sont essentiels pour déterminer sa crédibilité. En règle générale, la valeur probante des audits et des contrôles officiels est bien plus grande, car ceux-ci sont généralement conduits par une instance publique ou par un organisme d’audit attitré, sur la base des normes et des règles généralement admises.
Certificats et prix
Ce type de preuve comprend les certificats délivrés et les prix attribués par les autorités publiques ou les organismes officiels, comme les chambres de commerce et d’industrie, les associations et groupements professionnels, les associations de consommateurs, etc.
La fiabilité des certificats délivrés par les autorités est généralement élevée, car ces documents émanent de sources indépendantes et spécialisées, qui attestent de faits dans le cadre de leurs fonctions officielles. Par exemple, les chiffres relatifs aux tirages moyens des publications périodiques publiés par les associations compétentes de distribution de la presse constituent des données probantes de la performance d’une marque au sein du secteur.
N° de l’affaire Commentaire
R 0907/2009-2 «O2PLS»
Les nombreuses récompenses remportées par cette marque ont été considérées comme un élément important des preuves visant à établir la renommée, au même titre que les investissements publicitaires importants et le nombre d’articles parus dans différentes publications (point 9(iii) et point 27).
Cette observation vaut également pour les certificats de qualité et les prix délivrés par ces autorités, car l’opposant doit généralement satisfaire à des normes objectives pour recevoir le prix. En revanche, il convient d’attribuer très peu d’importance aux prix et récompenses offerts par des entités inconnues, ou sur la base de critères subjectifs ou non précisés.
La pertinence d’un certificat ou d’un prix dans chaque cas d’espèce varie considérablement selon son contenu. Par exemple, le fait que l’opposant détienne un certificat de qualité ISO 9001 ou un titre de fournisseur royal ne signifie pas nécessairement que le signe est connu du public. Il signifie seulement que les produits de l’opposant répondent à certaines normes techniques ou de qualité ou qu’il est fournisseur d’une famille royale. Toutefois, si ces preuves sont accompagnées d’autres
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
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signes de qualité et de réussite commerciale, elles peuvent permettre de conclure que la marque antérieure jouit d’une renommée.
Articles parus dans la presse ou dans des publications spécialisées
La force probante des articles de presse et des autres publications concernant la marque de l’opposant dépend principalement de la question de savoir si ces publications correspondent à des actions publicitaires indirectes ou si, au contraire, elles sont le fruit de recherches indépendantes et objectives.
N° de l’affaire Commentaire
Affaires conjointes T-345/08 et T-357/08 «BOTOLIST / BOTOCYL», confirmées par C-100/11 P
L’existence même d’articles dans une publication scientifique ou dans la presse généraliste constitue un facteur pertinent pour établir la renommée des produits commercialisés sous la marque BOTOX auprès du grand public indépendamment du contenu positif ou négatif de ces articles (point 54).
R 0555/2009-2 «BACI MILANO» (fig.)
La renommée de la marque antérieure en Italie a été prouvée par le biais des nombreux documents soumis par l’opposant, qui comprenaient, entre autres, un article d’Economy, qui révèle qu’en 2005 la marque «BACI & ABBRACCI» était une des marques de mode les plus contrefaites au monde; un article publié dans Il Tempo le 05/08/2005, dans lequel la marque «BACI & ABBRACCI» est mentionnée parmi d’autres, dont Dolce & Gabbana, Armani, Lacoste et Puma, comme étant la cible de contrefaçons; un article publié dans Fashion le 15/06/2006, dans lequel la marque est qualifiée de «véritable phénomène de marché»; des campagnes promotionnelles entre 2004 et 2007, avec des témoignages de célébrités du monde du divertissement et des sports; et une étude de marché menée par l’agence indépendante et réputée Doxa en septembre 2007, dans laquelle il apparaît que la marque est la première à venir à l’esprit de 0,6 % du public italien lorsqu’il est question du secteur de la mode (point 35).
Ainsi, ces articles ont une très grande valeur lorsqu’ils paraissent dans des publications de haut niveau ou s’ils sont rédigés par des professionnels indépendants, comme c’est le cas par exemple lorsque le succès d’une marque donnée fait l’objet d’une étude de cas dans des journaux spécialisés ou dans des publications scientifiques. La présence d’une marque dans un dictionnaire (qui ne constitue pas un article de presse, mais n’en demeure pas moins une publication) constitue un élément de preuve de grande valeur.
N° de l’affaire Commentaire
Affaires conjointes T-345/08 et T-357/08 «BOTOLIST / BOTOCYL», confirmées par C-100/11 P
L’inclusion d’un mot dans un dictionnaire signifie qu’il jouit d’une importante connaissance auprès du public. Les références faites dans les éditions 2002 et 2003 de plusieurs dictionnaires publiés au Royaume-Uni constituent un des éléments de preuve à même d’établir la renommée de la marque BOTOX dans ce pays ou auprès du public anglophone de l’Union européenne (points 55 et 56).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 41
FINAL VERSION 1.0 01/08/2015
Rapports annuels sur les résultats économiques et descriptifs de sociétés
Ce type de preuve comprend toutes sortes de publications internes contenant diverses informations sur l’historique, les activités et les perspectives de l’entreprise de l’opposant, ou des chiffres plus détaillés concernant le chiffre d’affaires, les ventes, la publicité, etc.
Dans la mesure où ces preuves émanent de l’opposant et sont surtout destinées à promouvoir son image, leur force probante dépend pour l’essentiel de leur contenu et les informations qui y sont mentionnées doivent être traitées avec prudence, en particulier lorsqu’elles comprennent principalement des estimations et des évaluations subjectives.
Toutefois, lorsque ces publications sont diffusées auprès des clients et d’autres parties intéressées et qu’elles contiennent des informations vérifiables de façon objective, et éventuellement recueillies ou révisées par des auditeurs indépendants (comme c’est souvent le cas pour les rapports annuels), leur force probante est considérablement accrue.
Factures et autres documents commerciaux
Toutes sortes de documents commerciaux peuvent figurer sous cette rubrique, notamment les factures, les bons de commande, les contrats de distribution et de parrainage, les extraits de correspondance avec les clients, les fournisseurs ou les associés, etc. Les documents de ce type peuvent fournir un large éventail d’informations concernant l’intensité de l’usage, l’étendue géographique et la durée de l’usage de la marque.
Même si la pertinence et la crédibilité des documents commerciaux n’est pas contestée, il est généralement difficile de démontrer la renommée sur la base de ces seuls documents, étant donné la variété des facteurs en cause et le volume de documents requis. Par ailleurs, les preuves telles que les contrats de distribution ou de parrainage et la correspondance commerciale sont plus appropriées pour fournir des indications sur l’étendue géographique ou l’aspect publicitaire des activités de l’opposant que pour mesurer le succès de la marque sur le marché et, par conséquent, elles ne peuvent servir qu’à titre de signe indirect de renommée.
N° de l’affaire Commentaire
R 1272/2010-1 «GRUPO BIMBO» (fig.) (T-357/11)
Les preuves soumises montrent un niveau important de connaissance sur le marché espagnol. En 2004, le montant total des factures sur le marché espagnol du pain de mie s’élevait à 346,7 millions d’euros, et la part des factures de l’opposant dans ce montant était de 204,9 millions d’euros. Les factures soumises concernaient également des publicités à la télévision ainsi que dans des journaux et des magazines. Par conséquent, la renommée de la marque «BIMBO» en Espagne pour du pain produit de manière industrielle a été dûment justifiée (point 64). La Cour ne s’est pas penchée sur ce point.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 42
FINAL VERSION 1.0 01/08/2015
Publicités et supports publicitaires
Ce type de preuve peut revêtir diverses formes, telles que coupures de presse, spots publicitaires, articles publicitaires, offres, brochures, catalogues, prospectus, etc. En règle générale, ces preuves ne permettent pas, à elles seules, de conclure à l’existence d’une renommée, car elles ne peuvent pas fournir beaucoup d’informations sur la connaissance effective de la marque.
Toutefois, l’on peut tirer certaines conclusions quant au degré d’exposition du public aux messages publicitaires concernant la marque, à partir du type de support utilisé (national, régional, local) et des taux d’audience ou du nombre de tirages des spots ou des publications, à condition bien sûr que ce type d’information soit disponible.
N° de l’affaire Commentaire
R 0043/2010-4 «FFR» (fig.) (T-143/11)
Les documents soumis prouvent que la marque figurative d’un coq noir a acquis une renommée et est associée aux vins de la région de Chianti Classico. L’opposant a fourni plusieurs copies de publicités parues dans des journaux et des magazines attestant de son activité publicitaire, ainsi que des articles indépendants associant l’image du coq noir à la région vinicole Chianti Classico. Toutefois, compte tenu du fait que la renommée ne découle que de l’image d’un coq noir et que celle-ci ne représente qu’une partie des marques antérieures, des doutes sérieux sont émis quant à savoir si la renommée peut être attribuée à l’ensemble des marques. En outre, pour les mêmes motifs, des doutes sont émis quant aux marques auxquelles la renommée pourrait être attribuée, étant donné que l’opposant détient plusieurs marques. (points 26 et 27). La Cour ne s’est pas penchée sur les preuves relatives à la renommée.
En outre, ces preuves peuvent donner des indications utiles concernant le type de produits couverts, la forme sous laquelle la marque est effectivement utilisée et le type d’image que l’opposant s’efforce de créer pour sa marque. Par exemple, si les preuves mettent en évidence que l’enregistrement antérieur pour lequel la renommée est revendiquée concerne une marque figurative, mais qu’en réalité cette marque est utilisée en combinaison avec un élément verbal, il n’est pas cohérent d’admettre que le dessin possède, à lui seul, une renommée.
N° de l’affaire Commentaire
R 1308/2010-4 «WM GRAND PRIX»
Dans tous les exemples d’utilisation effective sur les podiums, dans les kits de presse, sur les posters, les cartes de course, les en-têtes, les couvertures des programmes, les billets, les laissez-passer, etc., soumis par l’opposant, les mots GRAND PRIX sont toujours utilisés en association avec d’autres éléments. Aucune preuve d’usage n’a été soumise pour l’utilisation de la marque GRAND PRIX de manière indépendante (points 53 et 54).
T-10/09, «F1-LIVE» (C-196/11 P)
La preuve de la renommée fait référence à la marque figurative antérieure «F1 Formula 1» et non aux marques verbales antérieures. Sans son logotype particulier, le texte «Formula 1» et son abréviation «F1» sont perçus comme des éléments descriptifs d’une catégorie de voitures de course ou de courses impliquant ces véhicules. La renommée n’a pas été prouvée pour les marques verbales qui ne sont pas identiques ou similaires (points 53, 54 et 67). La Cour ne s’est pas penchée sur ce point.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 43
FINAL VERSION 1.0 01/08/2015
3.2 La similitude des signes
Il faut trouver un «certain degré de similitude entre les signes» pour qu’une opposition fondée sur l’article 8, paragraphe 5, du RMC aboutisse (arrêt du 24/03/2011, «TiMi KINDERJOGHURT», C-552/09 P, point 53). Si l’on estime que les signes ne sont pas similaires de manière générale, l’examen visant à déterminer si les autres conditions de l’article 8, paragraphe 5, du RMC sont remplies ne doit pas être effectué, étant donné que l’opposition n’a aucune chance d’aboutir.
Un sujet qui soulève une certaine incertitude est celui de la relation entre la «similitude» telle que visée à l’article 8, paragraphe 5, du RMC et la signification du même terme tel qu’il est utilisé à l’article 8, paragraphe 1, point b), du RMC. Selon le libellé clair de ces deux dispositions, l’existence d’une similitude (ou identité) entre les signes est une condition préalable pour l’application de l’article 8, paragraphe 1, point b), et de l’article 8, paragraphe 5, du RMC. L’utilisation du même terme dans les deux dispositions plaide en faveur de la nécessité d’interpréter ce terme de la même façon, ce qu’a confirmé la jurisprudence.
En conséquent, l’appréciation de la similitude doit se faire selon les mêmes critères que ceux qui s’appliquent dans le cadre de l’article 8, paragraphe 1, point b) du RMC, ce qui signifie qu’il convient donc de tenir compte d’éléments de similitude visuelle, auditive ou conceptuelle (arrêt du 23/10/2003, «Adidas», C-408/01, point 28, relatif à l’interprétation de l’article 5, paragraphe 2, de la directive sur les marques, et arrêt du 24/03/2011, «TiMi KINDERJOGHURT», C-552/09P, point 52). Voir les Directives, Partie C, Opposition, Section 2, Identité et risque de confusion, Chapitre 3, Comparaison des signes.
Il convient d’appliquer les règles générales pour l’appréciation des signes établies pour l’examen de ce critère au titre de l’article 8, paragraphe 1, point b), du RMC, telles que la règle selon laquelle les consommateurs perçoivent le signe comme un tout et n’ont que rarement l’occasion de procéder à une comparaison directe des différentes marques et doivent donc se fier à l’image imparfaite qu’ils ont gardée en mémoire (arrêt du 25/01/2012, «Viagura», T-332/1, points 33 et 34) (voir les Directives, Partie C, Opposition, Section 2, Identité et risque de confusion, Chapitre 8, Appréciation globbale, Point 4, Souvenir imparfait).
3.2.1 Notion de «similitude» telle que visée à l’article 8, paragraphe 5, du RMC et à l’article 8, paragraphe 1, point b), du RMC
Les objectifs visés par l’article 8, paragraphe 1, point b), et l’article 8, paragraphe 5, du RMC ne sont pas les mêmes. Dans le cas de l’article 8, paragraphe 1, point b), du RMC, le but est d’éviter l’enregistrement d’une marque postérieure qui, si elle est utilisée, pourrait susciter la confusion parmi le public concerné en ce qui concerne l’origine commerciale des produits ou services concernés. L’article 8, paragraphe 5, du RMC vise quant à lui à éviter l’enregistrement d’une marque postérieure qui, en cas d’utilisation, pourrait tirer indûment profit de la renommée ou du caractère distinctif de la marque antérieure ou leur porter préjudice.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 44
FINAL VERSION 1.0 01/08/2015
Le lien entre les notions de «similitude» au titre des deux dispositions a été abordé par la Cour dans l’affaire TiMi KINDERJOGHURT: «À titre liminaire, il convient de noter dès le départ que […] l’existence d’une similitude entre la marque antérieure et la marque contestée constitue une condition d’application commune aux paragraphes 1, sous b), et 5 de l’article 8 [du RMC]» (point 51).
Dans le contexte tant de l’article 8, paragraphe 1, point b) que de l’article 8, paragraphe 5, du RMC, la conclusion d’une similitude entre les marques en question suppose l’existence, en particulier, d’éléments de ressemblance visuelle, auditive ou conceptuelle (arrêt du 23/10/2003, «Adidas-Salomon et Adidas Benelux», C-408/01, point 28).
Toutefois, ces deux dispositions diffèrent quant au degré de similitude requis. Alors que la protection conférée par l’article 8, paragraphe 1, point b), du RMC dépend de l’établissement d’un degré de similitude tel entre les marques en cause qu’il existe un risque de confusion entre celles-ci dans le chef du public concerné, l’existence d’un tel risque n’est pas nécessaire pour l’obtention de la protection conférée par l’article 8, paragraphe 5, du RMC. Par conséquent, les types de préjudice visés à l’article 8, paragraphe 5, du RMC peuvent résulter d’un degré de similitude moindre entre les marques en question, à condition qu’il suffise que le public concerné effectue un rapprochement entre ces marques, autrement dit établisse un lien entre elles (arrêt du 23/10/2003, «Adidas-Salomon et Adidas Benelux», C-408/01, points 27, 29 et 31, et arrêt du 27/11/2008, «Intel Corporation», C-252/07, points 57, 58 et 66).
Cependant, ni les libellés de ces deux dispositions, ni la jurisprudence ne permettent d’établir clairement si la similitude entre les marques en question doit être appréciée de manière différente selon que l’appréciation est réalisée en vertu de l’article 8, paragraphe 1, point b), ou de l’article 8, paragraphe 5, du RMC.
En résumé, pour pouvoir appliquer l’article 8, paragraphe 1, point b), et l’article 8, paragraphe 5, du RMC, il convient d’établir une similitude entre les signes. Par conséquent, si, lors de l’examen de l’article 8, paragraphe 1, point b) du RMC, les signes se sont avérés non similaires, l’opposition au titre de l’article 8, paragraphe 5, du RMC échouera également.
Toutefois, une fois qu’il a été établi que les signes sont similaires, selon que l’article 8, paragraphe 1, point b), ou l’article 8, paragraphe 5, du RMC est concerné, l’examinateur appréciera de façon indépendante si le degré de similitude est suffisant pour justifier l’application de la disposition concernée (et en tenant compte des autres facteurs pertinents).
Par conséquent, un degré de similitude entre les marques qui, après appréciation globale des facteurs, a entraîné l’établissement partiel d’un risque de confusion au titre de l’article 8, paragraphe 1, point b), du RMC n’indique pas nécessairement l’existence d’un lien entre les signes au titre de l’article 8, paragraphe 5, du RMC, par exemple, parce que les marchés concernés diffèrent totalement. Il convient de réaliser une analyse complète. En effet, la similitude entre les signes ne constitue qu’un des facteurs à prendre en considération lors de l’appréciation d’un tel lien (voir les critères pertinents figurant au point 3.3 ci-dessous relatif au «lien»).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 45
FINAL VERSION 1.0 01/08/2015
En fonction de l’affaire, les scénarios suivants sont possibles.
L’article 8, paragraphe 1, point b), du RMC ne s’applique pas car les signes ne sont pas similaires – l’article 8, paragraphe 5, du RMC ne s’applique pas non plus, étant donné que la même conclusion s’impose.
Le risque de confusion au titre de l’article 8, paragraphe 1, point b), du RMC est exclu (par exemple, parce que les produits ou services ne sont pas similaires ou très peu similaires), mais les signes sont similaires – l’examen de l’article 8, paragraphe 5, du RMC doit avoir lieu (voir «CHIANTI CLASSICO», T-143/11, points 66 à 71).
La similitude des signes, combinée aux autres facteurs pertinents, justifie l’exclusion d’un risque de confusion au titre de l’article 8, paragraphe 1, point b), du RMC, mais la similitude entre les signes pourrait être suffisante pour établir un lien entre eux au titre de l’article 8, paragraphe 5, du RMC, compte tenu des autres facteurs pertinents à prendre en considération.
3.3 Le lien entre les signes
La Cour a fait clairement savoir que, pour déterminer si l’utilisation de la marque contestée risque de porter préjudice au caractère distinctif ou à la renommée de la marque antérieure, ou d’en tirer un profit indu, il est nécessaire de déterminer – une fois qu’il a été établi que les signes sont similaires – si, compte tenu de tous les facteurs pertinents, un lien (ou une association) entre les signes sera établi dans l’esprit du public concerné. La jurisprudence ultérieure a établi clairement qu’une telle analyse devait précéder l’appréciation finale de l’existence d’un risque de préjudice.
La notion d’un lien entre les signes a été abordée par la Cour dans son arrêt du 27/11/2008, «Intel Corporation», C-252/07, point 30 (et la jurisprudence qui y est citée), qui, bien qu’elle fasse référence à l’article 4, paragraphe 4, point a) de la directive sur les marques, s’applique à l’article 8, paragraphe 5, du RMC, qui est la disposition équivalente du RMC. Dans le cadre de l’affaire Intel, la Cour a déclaré ce qui suit (point 30):
Les atteintes visées à l’article 4, paragraphe 4, sous a), de la directive, lorsqu’elles se produisent, sont la conséquence d’un certain degré de similitude entre les marques antérieure et postérieure, en raison duquel le public concerné effectue un rapprochement entre ces deux marques, c’est- à-dire établit un lien entre celles-ci, alors même qu’il ne les confond pas (voir, s’agissant de l’article 5, paragraphe 2, de la directive, les arrêts General Motors, point 23; Adidas-Salomon et Adidas Benelux, point 29, ainsi que adidas et adidas Benelux, point 41).
Outre le terme «lien», le terme «association» est également utilisé dans d’autres paragraphes des directives ainsi que dans la jurisprudence. Ces termes sont parfois utilisés indifféremment.
La Cour a clairement établi que le simple fait que les marques en question sont similaires ne suffit pas pour conclure qu’il existe un lien entre elles. Il convient
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 46
FINAL VERSION 1.0 01/08/2015
d’apprécier globalement l’existence d’un lien éventuel entre les marques en question, en tenant compte de tous les facteurs pertinents pour le cas d’espèce.
D’après l’affaire Intel, (point 42), les points suivants peuvent être des facteurs pertinents pour l’appréciation de l’existence d’un tel lien:
le degré de similitude entre les marques en conflit. Plus celles-ci sont similaires, plus il est vraisemblable que la marque postérieure évoquera, dans l’esprit du public pertinent, la marque antérieure renommée (arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, point 26 et, par analogie, décision préjudicielle du 27/11/2008, Intel, C-252/07, point 44);
la nature des produits ou des services pour lesquels la marque antérieure est renommée et pour lesquels la marque postérieure a été déposée, y compris le degré de similitude ou de dissemblance de ces produits ou services et le public concerné. Lesdits produits ou services peuvent être si dissemblables que la marque postérieure sera insusceptible d’évoquer la marque antérieure dans l’esprit du public pertinent (Intel, point 49).
l’intensité de la renommée de la marque antérieure;
le degré de caractère distinctif, intrinsèque ou acquis par l’usage, de la marque antérieure. Le plus intrinsèquement distinctive la marque antérieure est, le plus probable est qu’elle reviendra à l’esprit du consommateur quand il est confronté à une marque similaire (ou identique);
l’existence d’un risque de confusion dans l’esprit du public.
Cette liste n’est pas exhaustive. Il est possible qu’un lien entre les marques en conflit soit établi ou exclu sur la base d’une partie de ces critères uniquement.
La question de savoir si le public pertinent va établir un lien entre les marques en conflit est une question de fait, qui doit recevoir une réponse eu égard aux faits et aux circonstances de chaque cas d’espèce.
L’appréciation du risque d’établissement d’un «lien» doit tenir compte de tous les facteurs pertinents, qu’il conviendra ensuite de pondérer. Par conséquent, un degré de similitude même faible ou éloigné entre les signes (qui pourrait ne pas être suffisant pour conclure à un risque de confusion au titre de l’article 8, paragraphe 1, point b), du RMC) justifie tout de même l’appréciation de tous les facteurs pertinents afin de déterminer s’il existe un risque de voir le public pertinent établir un rapprochement entre les signes. À cet égard, dans son arrêt du 24/03/2011, «TiMi Kinderjoghurt», C-552/09 P, points 65 et 66, la Cour a déclaré ce qui suit:
Si cette appréciation globale implique une certaine interdépendance entre les facteurs pris en compte, un faible degré de similitude entre les marques pouvant ainsi être compensé par un fort caractère distinctif de la marque antérieure […] il n’en demeure pas moins que, en l’absence de toute similitude entre la marque antérieure et la marque contestée, la notoriété ou la renommée de la marque antérieure de même que l’identité ou la similitude des produits ou des services concernés ne suffisent pas pour constater l’existence [...] d’un lien entre [les marques] dans l’esprit du public concerné...
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 47
FINAL VERSION 1.0 01/08/2015
C’est uniquement dans l’hypothèse où les marques en conflit présentent une certaine similitude, même faible, qu’il incombe [au Tribunal] de procéder à une appréciation globale afin de déterminer si, nonobstant le faible degré de similitude entre celles-ci, il existe, en raison de la présence d’autres facteurs pertinents, tels que la notoriété ou la renommée de la marque antérieure, un risque de confusion ou un lien entre ces marques dans l’esprit du public concerné.
La jurisprudence a établi clairement qu’un lien ne suffit pas, à lui seul, à établir qu’il pourrait y avoir une des formes de préjudice visées à l’article 8, paragraphe 5, du RMC (arrêt du 26/09/2012, «CITIGATE», T-301/09, point 96, et la jurisprudence qui y est citée). Toutefois, comme il sera démontré au point 3.4 «Le risque de préjudice» ci- dessous, l’existence d’un lien (ou une association) entre les signes est nécessaire avant de déterminer si un préjudice ou un profit indu peut être invoqué.
3.3.1 Exemples dans lesquels un lien a été établi entre les signes
Dans les exemples d’affaires suivants, il a été établi que le degré de similitude entre les signes (en combinaison avec d’autres facteurs) était suffisant pour conclure que les consommateurs établiraient un lien entre elles.
Signe réputé antérieur Demande de marque communautaire
N° de l’affaire
BOTOX BOTOLIST et BOTOCYL Affaires conjointes
T-345/08 et T-357/08 Confirmé dans l’arrêt C-100/11P
La marque BOTOX jouissait d’une renommée pour des produits pharmaceutiques pour le traitement des rides au Royaume Uni à la date de dépôt des marques contestées, qui couvrent un large éventail de produits de la classe 3. Le Tribunal a confirmé la conclusion de la chambre de recours selon laquelle il existe un certain chevauchement entre les produits, à savoir un faible degré de similitude entre les produits pharmaceutiques pour le traitement de rides de l’opposant et les produits cosmétiques, notamment des crèmes, contestés, alors que les autres produits contestés, à savoir des parfums, des laits de bronzage, des shampoings, des sels de bain, etc., ne sont pas similaires. Cependant, les produits en question relèvent de segments de marché voisins. Le Tribunal a confirmé la conclusion de la chambre de recours selon laquelle le public concerné – aussi bien les praticiens que le grand public – ne manquera pas de remarquer que les deux marques faisant l’objet de la demande, BOTOLIST et BOTOCYL, commencent par «BOTO-», ce qui représente la quasi-totalité de la marque BOTOX, qui jouit d’une grande notoriété auprès du public. Le Tribunal a indiqué que BOTO- n’est pas un préfixe courant, ni dans le domaine pharmaceutique ni cosmétique, et n’a pas de signification descriptive. À supposer que le signe BOTOX puisse être décomposé en «bo» pour «botulinum» et «tox» pour «toxine» en référence au principe actif qu’il utilise, il conviendrait alors de considérer que ce terme a acquis un caractère distinctif, intrinsèque ou par l’usage, à tout le moins au Royaume-Uni. Compte tenu de tous les facteurs pertinents, le public serait tout naturellement amené à établir un lien entre les marques BOTOLIST et BOTOCYL et la marque renommée BOTOX (points 65 à 79).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 48
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
RED BULL R 0070/2009-1
La chambre de recours a estimé qu’un lien serait établi entre RED DOG et RED BULL car (i) les marques présentent certaines caractéristiques communes pertinentes, (ii) les produits en conflit relevant des cl 32-33 sont identiques, (3) la marque RED BULL est renommée, (iv) la marque RED BULL a acquis un caractère distinctif fort par l’usage et (v) il peut y avoir un risque de confusion (point 19). Il est raisonnable de penser que le consommateur moyen de boissons, qui connaît la marque renommée RED BULL et voit la marque RED DOG sur le même type de boissons, se rappellerait immédiatement la marque antérieure. Selon l’arrêt Intel, cela «équivaut à l’existence d’un tel lien» entre les marques (point 24).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
VIAGRA VIAGUARA T-332/10
Il existe, de manière globale, une forte similitude entre les marques (point 42). Sur le plan visuel, l’ensemble des lettres qui composent la marque antérieure sont contenues dans la marque contestée, les quatre premières et les deux dernières étant dans le même ordre. Il existe une similitude visuelle, en particulier dans la mesure où le public prête généralement plus d’attention au début des mots (points 35 et 36). L’identité de la première et de la dernière syllabe, ainsi que le fait que les syllabes du milieu ont le son [g], en commun entraîne une forte similitude phonétique (points 38 et 39). Aucun des deux signes n’a une signification et, par conséquent, le public n’établira pas de différences entre eux sur le plan conceptuel (point 40).
La marque antérieure couvre des produits pharmaceutiques pour le traitement de la dysfonction érectile relevant de la classe 5, alors que la marque contestée concerne des boissons alcoolisés et non alcoolisées relevant des classes 32 et 33. La renommée de la marque antérieure pour les produits cités n’est pas contestée. Le Tribunal a estimé que même s’il n’y a pas de lien direct qui puisse être établi entre les produits couverts par les marques en conflit, lesquels sont dissemblables, l’association avec la marque antérieure demeure néanmoins possible, eu égard à la similitude élevée des signes et à l’immense renommée acquise par la marque antérieure. Par conséquent, le Tribunal conclut qu’un lien est susceptible d’être établi entre les marques (point 52).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
RSC-ROYAL SHAKESPEARE COMPANY ROYAL SHAKESPEARE T-60/10
La marque contestée étant exclusivement constituée de l’élément central et distinctif de la marque antérieure, à savoir l’expression «royal shakespeare», les signes en conflit sont visuellement, phonétiquement et conceptuellement similaires. Partant, le consommateur moyen établira un lien entre les signes en conflit (point 29). La marque antérieure couvre des services relevant de la classe 41, qui comprend les représentations théâtrales, alors que la marque contestée couvre les boissons non alcooliques et alcooliques relevant des classes 32 et 33 et les services de restauration (alimentation); restaurants, bars, pubs, hôtels; hébergement temporaire relevant de la classe 42. Le Tribunal a confirmé la conclusion de la chambre de recours concernant la renommée «exceptionnelle» de la marque antérieure au Royaume-Uni pour les représentations théâtrales. Le public concerné pour la marque contestée est le même que celui concerné pour la marque antérieure, à savoir le grand public (point 58). Même si les produits contestés relevant des classes 32-33 ne semblent pas directement et immédiatement liés aux services de représentations de théâtre de l’opposant, il existe une certaine proximité et un certain lien entre eux. Le Tribunal renvoie à l’arrêt du 04/11/2008, «Ugly (COYOTE UGLY)», T-161/07, points 31 à 37, dans lequel une certaine similitude a été établie entre les services de divertissement et la bière en raison de leur complémentarité. Le Tribunal a ajouté qu’il est courant que soient offerts, dans des salles de théâtre, des services de bar et de restauration avant le spectacle, à l’entracte et aussi après le spectacle. En outre, indépendamment de cela, au vu de la renommée établie de la marque antérieure, le public pertinent, à savoir le grand public au Royaume-Uni, pourrait faire un lien avec l’intervenante en voyant une bière avec la marque contestée, soit dans un supermarché, soit dans un bar (point 60).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 49
FINAL VERSION 1.0 01/08/2015
3.3.2 Exemples dans lesquels aucun lien n’a été trouvé entre les signes
Voici quelques exemples d’affaires dans lesquels une appréciation globale de tous les facteurs a permis de démontrer qu’il était improbable qu’un lien puisse être établi entre les signes.
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
R 0724/2009-4
Les signes ne présentent qu’un certain degré de similitude visuelle et auditive. La chambre de recours confirme que la renommée des marques antérieures a uniquement été prouvée pour la distribution de services énergétiques. Ces services n’ont rien à voir avec les produits faisant l’objet d’une demande de protection relevant des classes 18, 20, 24 et 27. Le public concerné est le même, étant donné que les services pour lesquels une renommée a été prouvée, à savoir la distribution de services liés à l’énergie, visent le grand public et que les produits contestés s’adressent également au consommateur moyen raisonnablement observateur et prudent. Toutefois, même si le public concerné pour les produits ou services pour lesquels les marques en conflit sont enregistrées est le même ou se chevauche dans une certaine mesure, ces produits ou services peuvent présenter une dissemblance telle qu’il est peu probable que la marque postérieure rappelle la marque antérieure au public concerné. Les usages très différents faits des produits et services en conflit pour lesquels une renommée a été prouvée font qu’il est peu probable que le public établisse un lien entre les signes en conflit, point essentiel pour l’application de l’article 8, paragraphe 5, du RMC, et qu’un profit indu soit tiré du caractère distinctif ou de la renommée de la marque antérieure. Il est encore plus improbable que, au moment d’acheter un sac ou un meuble, le public concerné fasse un rapprochement entre ces produits et une marque notoirement connue, mais pour la fourniture de services dans le secteur énergétique (points 69 à 9).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
G-STAR et T-309/08
Sur le plan visuel, les signes donnent une impression d’ensemble différente, en raison de l’élément figuratif d’une tête de dragon chinois placé au début de la marque faisant l’objet de la demande. Sur le plan auditif, il existe une similitude auditive entre les marques en cause. Sur le plan conceptuel, les signes sont différents, étant donné que l’élément «star» des marques antérieures est un mot qui appartient au vocabulaire de base de la langue anglaise, et dont le sens est largement connu dans l’ensemble de la Communauté. Par conséquent, les marques antérieures seront perçues comme une référence à un astre ou à une personne célèbre. En ce qui concerne l’élément «stor», il est possible qu’une partie du public pertinent lui attribue le sens que revêt le mot danois et suédois «stor» signifiant «grand, vaste» ou voit en lui une référence au mot anglais «store», signifiant «magasin, boutique, entreposage». Il est cependant plus probable que la majeure partie du public pertinent n’attribue aucun sens particulier à cet élément. Par conséquent, le public pertinent percevra les marques en conflit comme étant conceptuellement différentes en ce que les marques antérieures ont une signification claire dans l’ensemble de la Communauté, alors que la marque demandée dispose soit d’une signification différente pour une partie du public pertinent, soit est dénuée de toute signification. Or, en vertu d’une jurisprudence constante, lorsque la signification de l’un au moins des deux signes en cause est claire et déterminée, de sorte qu’elle peut être saisie directement par le public pertinent, les différences conceptuelles relevées entre ces signes peuvent neutraliser les similitudes visuelles et phonétiques qui existent entre eux. La chambre de recours a eu raison d’estimer que les différences visuelles et conceptuelles entre les marques empêchaient toute possibilité de lien entre elles (points 25 à 36).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 50
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
ONLY R 1556/2009-2(confirmé par T-586/10)
Les produits relevant de la classe 3 sont identiques et ciblent le même public. Il existe un léger degré de similitude visuelle et conceptuelle entre les signes en cause ainsi qu’un degré modéré de similitude auditive. Même si les marques antérieures avaient une renommée, les différences entre les signes, en particulier en raison de l’unité conceptuelle créée par l’association de l’élément «only» et de l’élément dominant distinctif «givenchy», sont suffisamment importantes pour que le public n’établisse pas de lien entre eux. Par conséquent, la chambre de recours a eu raison de conclure qu’une des conditions pour l’application de l’article 8, paragraphe 5, du RMC, à savoir l’existence d’une similitude suffisante entre les signes pour que le public fasse un rapprochement entre eux, n’était pas remplie (points 65 et 66).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
KARUNA R 696/2009-4(confirmé par T-357/10)
Les produits concernés, du chocolat relevant de la classe 30, sont identiques. Les signes présentent une différence visuelle, non seulement en raison des éléments figuratifs dans le signe faisant l’objet de la demande, mais également en raison de leurs éléments verbaux. En dépit du fait que les éléments verbaux des marques en conflit ont trois lettres sur six en commun, la différence résulte du fait que les marques antérieures commencent par la suite de lettres «ka» et la marque demandée par la suite de lettres «co» et que le consommateur attache normalement plus d’attention à la partie initiale des mots. Dans l’ensemble, il existe une faible similitude phonétique entre les signes. Sur le plan conceptuel, le mot «corona», qui signifie «couronne» en espagnol, n’a aucune signification en estonien, en letton ou en lituanien. Aucune comparaison conceptuelle n’est donc possible entre les signes en cause dans les trois États Baltes. Le simple fait que le terme lituanien «karūna» signifie «couronne» ne suffit pas pour établir que le public concerné associe les termes «karuna» ou «karūna» au mot «corona», qui demeure un mot étranger. Pour conclure, le Tribunal a rappelé que lorsque la condition de similitude des signes n’est pas remplie au titre de l’article 8, paragraphe 1, point b), du RMC, il convient également de considérer, sur la base de la même analyse, que cette condition n’est pas non plus satisfaite au regard de l’article 8, paragraphe 5, du RMC (points 30 à 34 et 49).
3.4 Le risque de préjudice2
3.4.1 Objets protégés
L’article 8, paragraphe 5, du RMC ne protège pas la renommée de la marque antérieure en tant que telle, en ce sens qu’il ne vise pas à empêcher l’enregistrement de toutes les marques identiques ou similaires à une marque jouissant d’une renommée. En outre, il faut qu’il soit probable que l’usage sans juste motif de la marque contestée tire indûment profit du caractère distinctif ou de la renommée de la marque antérieure, ou leur porte préjudice. La Cour a confirmé ce principe en indiquant que «lorsque, […], le juge national considère que la condition tirée de la renommée est
2 Aux fins des présentes Directives, le terme «préjudice» couvre la notion de «tirer indûment profit» même si dans de tels cas, il ne s’agit pas nécessairement d’un «préjudice» au sens d’une atteinte portée au caractère distinctif ou à la renommée d’une marque ou, plus généralement, à son titulaire.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 51
FINAL VERSION 1.0 01/08/2015
remplie, […], il doit procéder à l’examen de la seconde condition […], à savoir l’existence d’une atteinte sans juste motif à la marque antérieure» (voir arrêt du 14/09/1999, «General Motors», C-375/97, point 30).
La Cour n’a pas précisé de façon plus détaillée ce qu’il faut entendre par «préjudice» ou «profit tiré indûment», mais elle a toutefois indiqué dans l’arrêt SABEL que l’article 8, paragraphe 5, du RMC permet au titulaire d’interdire l’usage de signes «sans exiger que soit établi un risque de confusion». Autrement dit, elle a affirmé une évidence, à savoir que la protection élargie accordée aux marques jouissant d’une renommée est indépendante de leur fonction d’origine (voir l’arrêt du 11/11/1997, «SABEL», C-251/95, point 20).
Toutefois, dans une série de décisions antérieures, la Cour a affirmé qu’outre sa fonction d’indicateur d’origine, une marque peut aussi remplir d’autres fonctions justifiant une protection. En particulier, elle a confirmé qu’une marque peut offrir la garantie que tous les produits provenant d’une même entreprise ont la même qualité (fonction de garantie) et servir d’instrument publicitaire en reflétant le goodwill et le prestige qu’elle a acquis sur le marché (fonction publicitaire) (arrêt du 17/10/1990, CNL-SUCAL v HAG, C-10/89, arrêt du 11/07/1993, affaires conjointes C-427/93, C-429/93 et C-436/93, «Bristol-Myers Squibb et autres v Paranova», arrêt du 11/11/1997, «Loendersloot v Ballantine & Son et autres», C-349/95, arrêt du 04/11/1997, «Parfums Christian Dior v Evora», C-337/95, et arrêt du 23/02/1999, «BMW», C-63/97).
Il s’ensuit que les marques ne servent pas seulement à indiquer l’origine d’un produit, mais également à transmettre au consommateur un message ou une image, qui est incorporé dans le signe principalement à travers l’usage et qui, une fois acquis, fait partie de son caractère distinctif et de sa renommée. Dans la plupart des cas de renommée, ces caractéristiques de la marque sont particulièrement évidentes, car le succès commercial d’une marque repose généralement sur la qualité des produits ou sur une promotion efficace, voire sur les deux, de sorte qu’elles sont particulièrement précieuses pour le titulaire de la marque. C’est précisément cette valeur ajoutée de la marque jouissant d’une renommée que l’article 8, paragraphe 5, vise à protéger contre le préjudice ou le profit indu.
Dès lors, la protection en vertu de l’article 8, paragraphe 5, du RMC s’étend à tous les cas dans lesquels l’utilisation de la marque demandée qui est contestée risque d’avoir une incidence défavorable sur la marque antérieure, en ce sens qu’elle en réduirait l’attrait (préjudice porté au caractère distinctif), ou qu’elle déprécierait l’image acquise auprès du public (préjudice porté à la renommée), ou encore que l’usage de la marque contestée pourrait entraîner un détournement de son attractivité ou une exploitation de son image et de son prestige (profit tiré indûment du caractère distinctif ou de la renommée).
Par ailleurs, étant donné qu’il est à la fois plus facile de porter préjudice à une très forte renommée et plus tentant d’en tirer profit, en raison de sa grande valeur, la Cour a souligné que «plus le caractère distinctif et la renommée [de la marque antérieure] seront importants, plus l’existence d’une atteinte sera aisément admise» (arrêt du 27/11/2008, «Intel», C-252/07, points 67 et 74, arrêt du 25/05/2005, «SPA-FINDERS», T-67/04, point 41). Même si la Cour ne l’a pas expressément indiqué, le même principe doit être admis en ce qui concerne le profit que le demandeur pourrait tirer indûment au détriment de la marque antérieure.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 52
FINAL VERSION 1.0 01/08/2015
3.4.2 Évaluation du risque de préjudice
Dans l’affaire General Motors, la Cour n’a pas évalué le préjudice et le profit indu de façon très détaillée, car cette évaluation ne faisait pas partie de la question qui lui était soumise. Elle a seulement affirmé que «ce n’est que dans l’hypothèse d’un degré suffisant de connaissance de cette marque que le public mis en présence de la marque postérieure peut, le cas échéant, […] effectuer un rapprochement entre les deux marques, et que, par voie de conséquence, il peut être porté atteinte à la marque antérieure» (arrêt du 14/09/1999, «General Motors», C-375/97, point 23).
Bien que cette déclaration soit trop limitée pour servir de base à une analyse complète de l’existence d’un risque de préjudice, elle donne au moins une indication importante, à savoir que le préjudice ou le profit indu doit être la conséquence d’une association entre les marques en cause dans l’esprit du public, cette association étant rendue possible par les similitudes existant entre les marques, leur caractère distinctif, la renommée et d’autres facteurs (voir point 3.3 ci-dessus).
La nécessité d’une association susceptible de causer un préjudice a une double conséquence pour l’appréciation du préjudice ou du profit indu.
Premièrement, si le préjudice ou le profit invoqué ne résulte pas d’une association entre les marques, mais découle d’autres raisons, il ne peut donner lieu à une action au titre de l’article 8, paragraphe 5, du RMC.
Deuxièmement, si, compte tenu de l’ensemble des circonstances de l’espèce, une association entre les marques est improbable, le lien qui doit exister entre l’usage de la marque postérieure et le préjudice causé fait défaut. Dès lors, les similitudes entre les signes et la renommée de la marque antérieure doivent être d’une nature et d’un degré tels qu’elles permettent une association entre les deux marques dans l’esprit du consommateur, en ce sens que la perception de l’une rappellera l’autre.
Par ailleurs, comme l’a observé la Cour, une association entre les marques suppose que la partie du public qui connaît déjà la marque antérieure soit également exposée à la marque postérieure. Cette condition est plus facile à démontrer lorsque la marque antérieure est connue du grand public, ou en cas de chevauchement important entre les acquéreurs des produits ou services respectifs. Toutefois, lorsque les produits ou services sont très différents les uns des autres et qu’un tel lien entre les publics concernés n’est pas évident, l’opposant doit expliquer pourquoi les marques seront associées en invoquant un autre lien entre ses activités et celles du demandeur, comme le fait que la marque antérieure est exploitée en marge de son secteur naturel du marché, notamment grâce à des licences ou au marchandisage (voir point 3.3 ci- dessus).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 53
FINAL VERSION 1.0 01/08/2015
Signe réputé antérieur Demande de marque communautaire
N° de l’affaire
R 1074/2011-5
Renommée pour des services relevant des classes 38, 42 et 45, notamment un site internet de réseau social
Classes 14, 18 et 25
La chambre de recours a défini le public concerné comme étant le consommateur européen moyen des produits faisant l’objet de la demande, à savoir des produits ordinaires destinés au grand public.
La chambre de recours a estimé probable que les produits du demandeur puissent être considérés comme des produits de marchandisage provenant de l’opposant. Des objets tels que des t-shirts, des porte-clés, des montres, des sacs à main, des bijoux, des casquettes, etc. sont fréquemment utilisés comme produits de marketing portant des marques liées à des produits et services totalement différents. En voyant la marque TWITTER sur une montre, une écharpe ou un t-shirt, le consommateur concerné établirait inévitablement un lien avec le signe de l’opposant et avec les services qu’il propose en raison de la renommée de la marque de l’opposant. Par conséquent, le demandeur bénéficierait d’un avantage concurrentiel dans la mesure où ses produits profiteraient de l’attrait supplémentaire retiré de l’association avec la marque antérieure de l’opposant. Par exemple, l’achat d’une montre TWITTER afin de l’offrir à une personne qui dispose d’un compte TWITTER représente une action motivée par l’appréciation de la marque antérieure (point 40).
Plus l’évocation de la marque antérieure par la marque postérieure est immédiate et forte, plus le risque est important que l’utilisation actuelle ou future du signe tire indûment profit du caractère distinctif ou de la renommée de la marque antérieure, ou leur porte préjudice (arrêts du 27/11/2008, «Intel», C-252/07 points 67 à 69; arrêt du 18/06/2009, C-487/07 «L’Oréal», points 41 et 43).
Il ressort des observations qui précèdent que l’évaluation du préjudice ou du profit indu doit être fondée sur une appréciation globale de tous les facteurs pertinents pour le cas d’espèce (lesquels comprennent notamment la similitude des signes, la renommée de la marque antérieure, les groupes de consommateurs respectifs et les segments de marché concernés), afin de déterminer si les marques risquent d’être associées de façon à porter atteinte à la marque antérieure.
3.4.3 Types de préjudice
L’article 8, point 5, du RMC fait référence aux types de préjudice suivants: «tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou qu’il leur porterait préjudice». Par conséquent, l’article 8, paragraphe 5, du RMC s’applique si l’une des trois conditions alternatives suivantes est remplie, à savoir si l’utilisation de la marque contestée:
tire indûment profit du caractère distinctif ou de la renommée de la marque antérieure;
porte préjudice au caractère distinctif; porte préjudice à la renommée.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 54
FINAL VERSION 1.0 01/08/2015
En ce qui concerne le premier type de préjudice, le libellé de l’article 8, paragraphe 5, du RMC suggère l’existence de deux types de profit indu. La jurisprudence constante les traite toutefois comme une seule atteinte au titre de l’article 8, paragraphe 5, du RMC (voir, par exemple, l’arrêt du 06/07/2012, «RSC-Royal Shakespeare Company», T-60/10, point 47). Par souci d’exhaustivité, les deux aspects de cette même atteinte seront traités au point 3.4.3.1 ci-dessous.
Comme démontré dans les Directives, Partie C, Opposition, Section 2, Identité et risque de confusion, le risque de confusion est uniquement lié à la confusion quant à l’origine commerciale des produits et services. En revanche, l’article 8, paragraphe 5, du RMC protège les marques antérieures renommées en cas d’association ou de confusion qui n’est pas nécessairement liée à l’origine commerciale des produits et/ou services. L’article 8, paragraphe 5, du RMC protège les efforts soutenus et les investissements financiers consentis pour la création et la promotion de marques pour autant qu’elles acquièrent une renommée, en protégeant ces marques contre des marques postérieures similaires portant préjudice au caractère distinctif ou à la renommée de la marque antérieure, ou en tirant indument profit. Un vocabulaire particulièrement riche est utilisé dans ce domaine du droit des marques. Les termes les plus courants sont présentés ci-dessous.
Termes de l’article 8, paragraphe 5, du RMC Équivalents couramment utilisés
Profit indu Parasitisme, free-riding, placement dans le sillage
Préjudice porté au caractère distinctif Dilution par brouillage, dilution, brouillage, débilitant, grignotage
Préjudice à la renommée Dilution par ternissement, ternissement, dégradation
3.4.3.1 Le profit tiré indûment du caractère distinctif ou de la renommée
Nature du préjudice
La notion de profit tiré indûment du caractère distinctif ou de la renommée vise les cas dans lesquels le demandeur tire profit du caractère attractif du droit antérieur en apposant sur ses produits et/ou services un signe qui est similaire (ou identique) à un signe qui jouit d’une grande notoriété sur le marché, et en détournant ainsi son pouvoir d’attraction et sa valeur publicitaire ou en exploitant sa renommée, son image et son prestige. Ce cas de figure peut aboutir à des situations inacceptables de parasitisme commercial dans lesquelles le demandeur est autorisé à tirer gratuitement profit des investissements consentis par l’opposant pour promouvoir sa marque et lui donner une renommée, ce qui peut avoir pour effet de stimuler les ventes des produits du demandeur dans des proportions excessives eu égard à l’importance de son investissement promotionnel.
Dans son arrêt du 18/06/2009, C-487/09, «L’Oréal et autres», le Tribunal a fait savoir qu’il y a profit indu lorsqu’il y a un transfert de l’image de la marque ou des caractéristiques projetées par celle-ci vers les produits désignés par le signe identique ou similaire. En se plaçant dans le sillage de la marque renommée, le demandeur bénéficie de son pouvoir d’attraction, de sa réputation et de son prestige. Il exploite également, sans aucune compensation financière, l’effort commercial déployé par le titulaire de la marque pour créer et entretenir l’image de cette marque (points 41 et 49).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 55
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
SPA
LES THERMES DE SPA SPA-FINDERS T-67/04
La notion de profit indûment tiré du caractère distinctif ou de la renommée de la marque antérieure doit être entendue comme englobant «les cas où il y a exploitation et parasitisme manifestes d’une marque célèbre ou une tentative de tirer profit de sa réputation» (voir, en ce sens, les conclusions de l’avocat général Jacobs dans l’affaire Adidas, point 39) (point 51).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
Le profit indu tiré du caractère distinctif ou de la renommée de la marque antérieure réside dans le fait que l’image de la marque renommée ou les caractéristiques projetées par cette dernière soient transférées aux produits désignés par la marque demandée, de sorte que leur commercialisation puisse être facilitée par cette association avec la marque antérieure renommée (point 48).
Le consommateur pertinent
Le concept de «profit indu» se concentre sur le profit obtenu par la marque postérieure plutôt que sur le préjudice subi par la marque antérieure; l’interdiction porte sur l’exploitation de la marque antérieure par le titulaire de la marque postérieure. En conséquence, l’existence de l’atteinte constituée par le profit indûment tiré du caractère distinctif ou de la renommée de la marque antérieure doit être appréciée par référence aux consommateurs moyens des produits ou services pour lesquels la marque postérieure est déposée (arrêt du 27/11/2008, «Intel», C-252/07, points 35 et 36; arrêt du 12/03/2009, «NASDAQ», C-320/07P, points 46 à 48; arrêt du 07/12/2010, T-59/08, «NIMEI LA PERLA MODERN CLASSIC», point 35).
L’appréciation du profit indu
Pour déterminer si l’utilisation d’un signe tire indûment profit du caractère distinctif ou de la renommée d’une marque, il est nécessaire de procéder à une appréciation globale, qui tienne compte de tous les facteurs pertinents du cas d’espèce (arrêt du 10/05/2007, T-47/06, «NASDAQ», point 53, confirmé, en appel, par l’arrêt du 12/03/2009, C-320/07P, «NASDAQ»; voir également l’arrêt du 23/10/2003, «Adidas», C-408/01, points 29, 30 et 38; l’arrêt du 27/11/2008, «Intel», C-252/07, points 57, 58 et 66; et l’arrêt du 24/03/2011, «Kinder», C-552/09P, point 53).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 56
FINAL VERSION 1.0 01/08/2015
Un tel détournement du caractère distinctif et de la renommée de la marque antérieure présuppose une association entre les marques concernées, grâce à laquelle le pouvoir d’attraction de la marque antérieure et son prestige peuvent être transférés au signe faisant l’objet de la demande. Une association de ce type est plus probable dans les circonstances suivantes:
1. lorsque la marque antérieure possède une forte renommée ou un caractère distinctif (inhérent) très marqué, parce que dans ce cas, il est à la fois plus tentant pour le demandeur d’essayer de tirer profit de sa valeur et plus facile de l’associer au signe de la demande. Les marques de ce type seront reconnues quasiment dans tous les contextes, précisément en raison de leur caractère distinctif exceptionnel ou de leur renommée «bonne» ou «spéciale», en ce sens qu’elle reflète une image d’excellence, de fiabilité ou de qualité, ou tout autre message positif, susceptible d’influencer positivement le choix des consommateurs quant aux produits d’autres producteurs (arrêt du 12/07/2011, «L’Oréal et autres», C-324/09, point 44). Plus la marque antérieure présente un caractère distinctif fort, plus il est vraisemblable que, confronté à une marque postérieure identique ou similaire, le public pertinent l’associera avec ladite marque antérieure (arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, point 27);
2. lorsque le degré de similitude entre les signes en question est élevé. Plus les marques sont similaires, plus il est vraisemblable que la marque postérieure évoquera, dans l’esprit du public pertinent, la marque antérieure renommée (arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, point 26; voir, par analogie, l’arrêt du 27/11/2008, «Intel», C-252/07, point 44);
3. lorsqu’il existe entre les produits ou services un lien particulier qui permet d’attribuer aux produits ou services du demandeur certaines qualités des produits ou des services de l’opposant. Tel sera le cas, en particulier, dans l’hypothèse de marchés voisins, sur lesquels une «extension de marque» paraîtrait plus naturelle, notamment pour des produits pharmaceutiques dont les propriétés curatives peuvent être imputées, par exemple, aux cosmétiques portant la même marque. De même, le Tribunal a considéré que certaines boissons (classes 32 et 33) commercialisées en étant présentées comme favorisant la performance sexuelle étaient associées aux propriétés des produits de la classe 5 (produits et substances pharmaceutiques et vétérinaires) pour lesquels la marque antérieure, «Viagra», a été enregistrée (arrêt du 25/01/2012, T-332/10, «VIAGUARA», point 74). À l’inverse, il a été jugé qu’il n’existait pas de lien de ce type entre les services liés aux cartes de crédit et les cosmétiques, car l’on a estimé que l’image de ces services ne pouvait être transférée à ces produits, même si leurs utilisateurs respectifs coïncident pour une large part;
4. lorsque, compte tenu de son pouvoir d’attraction particulier et de son prestige, la marque antérieure peut être exploitée même en dehors de son segment de marché naturel, par exemple grâce à des licences ou au marchandisage. Dans ce cas, si le demandeur utilise un signe identique ou similaire à la marque antérieure, pour des produits pour lesquels cette marque est déjà exploitée, il tirera manifestement profit de sa valeur de facto sur ce segment (voir la décision du 16/03/2012, R 1074/2011-5, «Twitter»).
L’intention du demandeur ne constitue pas un facteur matériel. Tirer indûment profit du caractère distinctif ou de la renommée d’une marque peut être une décision délibérée,
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 57
FINAL VERSION 1.0 01/08/2015
par exemple, lorsqu’il y a une exploitation manifeste et un parasitisme d’une marque renommée, ou une tentative de tirer profit de sa renommée. Toutefois, le fait de tirer indument profit ne requiert pas nécessairement une intention délibérée d’exploiter la renommée dont bénéficie la marque d’un tiers. La notion de profit indu «consiste dans le risque que l’image de la marque renommée ou les caractéristiques projetées par cette dernière soient transférées aux produits désignés par la marque demandée, de sorte que leur commercialisation serait facilitée par cette association avec la marque antérieure renommée» (arrêt du 19/06/2008, «MINERAL SPA», T-93/06, point 40, arrêt du 22/03/2007, «VIPS», T-215/03, point 40, arrêt du 30/01/2008, «CAMELO», T-128/06, point 46).
Par conséquent, la mauvaise foi ne constitue pas en elle-même une condition pour l’application de l’article 8, paragraphe 5, du RMC, qui ne requiert qu’un profit «indu», dans le sens où le profit retiré par le demandeur n’est pas justifié. Toutefois, lorsque les pièces indiquent que le demandeur agit à l’évidence de mauvaise foi, tout porte à croire qu’il tire indûment profit de la marque. La mauvaise foi peut être déduite de divers facteurs, notamment d’un effort évident du demandeur pour imiter aussi fidèlement que possible un signe antérieur au caractère distinctif très marqué, ou lorsqu’il a choisi pour ses produits, sans raison apparente, une marque comprenant ce signe.
Enfin, la notion de profit indu visée à l’article 8, paragraphe 5, du RMC n’est pas liée au préjudice causé à la marque renommée. En conséquence, un profit tiré par un tiers du caractère distinctif ou de la renommée de la marque peut être indu, même si l’utilisation du signe identique ou similaire ne porte pas préjudice au caractère distinctif ou à la renommée de la marque ou, de façon plus générale, à son titulaire. Par conséquent, il n’est pas nécessaire que l’opposant démontre que le profit tiré par le demandeur nuit à ses intérêts économiques ou à l’image de sa marque (contrairement au ternissement, voir ci-dessous), car, dans la plupart des cas, le caractère distinctif/prestige «emprunté» du signe nuira principalement aux concurrents directs du demandeur, c’est-à-dire aux commerçants opérant sur des marchés identiques/similaires/voisins, en leur imposant un handicap concurrentiel. Toutefois, le risque que ce profit nuise simultanément aux intérêts de l’opposant ne doit pas être entièrement écarté, en particulier lorsque l’utilisation du signe de la demande risque d’affecter les programmes de marchandisage de l’opposant ou d’entraver ses projets de pénétration d’un nouveau segment du marché.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 58
FINAL VERSION 1.0 01/08/2015
Cas de profit tiré indûment
Risque de profit indu établi
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
INTEL INTELMARK C-252/07
(Conclusions de l’avocat général)
Dans ses conclusions dans le cadre de la décision préjudicielle Intel, l’avocate générale Sharpston évoque le profit indu de la façon suivante: «Les notions de profit indûment tiré du caractère distinctif ou de la renommée de la marque doivent par contre être entendues comme englobant "les cas où il y a exploitation et parasitisme manifestes dans le sillage d’une marque célèbre ou une tentative de tirer profit de sa réputation". Ainsi, à titre d’exemple, Rolls Royce serait en droit d’empêcher un producteur de whisky d’exploiter la réputation de la marque Rolls Royce pour promouvoir la sienne. Il n’est pas évident qu’il existe une réelle différence entre tirer profit du caractère distinctif d’une marque et tirer profit de sa renommée; toutefois, étant donné que cette différence est sans incidence en l’espèce, nous nous référerons aux deux sous le terme de parasitisme.» (point 33).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
CITIBANK et al T-181/05
«la renommée dans la Communauté européenne de la marque CITIBANK dans le secteur des services bancaires n’est pas contestée. À ce titre, cette renommée est associée aux caractéristiques du secteur bancaire, à savoir la solvabilité, la probité et un soutien financier des clients privés et commerciaux dans leurs activités professionnelles et d’investissement.»
«il existe une relation évidente […] entre les services d’agences en douane et les services financiers offerts par des banques telles que les requérantes, en ce que les clients qui s’occupent des activités dans le commerce international et de l’importation et de l’exportation de marchandises utilisent également les services financiers et bancaires que de telles transactions requièrent. Il en résulte qu’il existe une probabilité que de tels clients connaissent la banque des requérantes eu égard à sa renommée importante au niveau international.»
«Dans ces conditions, le Tribunal considère qu’il existe une grande probabilité pour que l’usage de la marque demandée CITI par les agences en douane, et, partant, pour les activités de mandataire financier dans la gestion de sommes d’argent et de biens immobiliers pour des clients, conduise à un parasitisme, c’est-à-dire tire indûment profit de la renommée bien établie de la marque CITIBANK et des investissements importants réalisés par les requérantes pour atteindre cette renommée. Cet usage de la marque demandée CITI pourrait également entraîner la perception de ce que l’intervenante est associée ou fait partie des requérantes et, partant, pourrait faciliter la commercialisation des services visés par la marque demandée. Les requérantes étant titulaires de plusieurs marques comportant l’élément "citi", ce risque est en outre aggravé.» (points 81 à 83).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
SPA MINERAL SPA T-93/06
MINERAL SPA (pour savons, parfumerie, huiles essentielles, cosmétiques, lotions pour les cheveux, dentifrices relevant de la classe 3) pourrait tirer un profit indu de l’image de la marque antérieure SPA et du message véhiculé par celle-ci en ce que les produits visés par la marque demandée seraient perçus par le public pertinent comme porteurs de santé, de beauté et de pureté. Il ne s’agit pas de savoir si le dentifrice et le parfum contiennent de l’eau minérale, mais de savoir si le public peut penser que les produits en cause sont fabriqués à partir de ou avec de l’eau minérale (points 43 et 44).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 59
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé N° de l’affaire
L’Oréal et al. C-324/09 (décision préjudicielle)
Selon L’Oréal et al., les défenderesses produisaient et importaient des parfums dont «l’odeur ressemblait» à celles des parfums L’Oréal, mais vendus à un prix considérablement moins élevé, au moyen d’un conditionnement qui «se rapprochait» de ceux utilisés par les marques de L’Oréal. Les listes comparatives utilisées par les défenderesses présentent les parfums commercialisés par celles-ci comme une imitation ou une reproduction de produits portant une marque renommée. Une publicité comparative qui présente les produits de l’annonceur comme une imitation d’un produit portant une marque est qualifiée par la directive 84/450 de contraire à une concurrence loyale et donc d’illicite. Par conséquent, le profit réalisé par l’annonceur grâce à une telle publicité est le fruit d’une concurrence déloyale et doit, par conséquent, être considéré comme indûment tiré de la notoriété attachée à cette marque (point 79).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
NASDAQ T-47/06
«Compte tenu du fait que les services financiers et de cotation boursière fournis par l’intervenante sous sa marque NASDAQ et, par conséquent, la marque NASDAQ elle-même présentent incontestablement une certaine image de modernité, ce lien permettrait le transfert de cette image aux articles de sport, et notamment aux matériaux composites de pointe, qui seraient commercialisés par la requérante sous la marque dont elle demande l’enregistrement, ce que la requérante semble implicitement reconnaître en affirmant que le terme "nasdaq" est descriptif de ses principales activités.
Partant, au vu de ces éléments, et compte tenu de la similitude des marques en conflit, de l’importance de la renommée et du caractère distinctif très élevé de la marque NASDAQ, il y a lieu de constater que l’intervenante a établi prima facie l’existence d’un risque futur non hypothétique de profit indu que la requérante tirerait, par l’usage de la marque dont elle demande l’enregistrement, de la renommée de la marque NASDAQ. Il n’y a donc pas lieu d’infirmer la décision attaquée sur ce point» (points 60 et 61).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
RSC-ROYAL SHAKESPEARE COMPANY
ROYAL SHAKESPEARE T-60/10
Il existe une certaine proximité et un certain lien entre les services de divertissement et la bière, voire une certaine similitude en raison de leur complémentarité. Le grand public au Royaume-Uni pourrait faire un lien avec la Royal Shakespeare Company (RSC) en voyant une bière avec la marque contestée ROYAL SHAKESPEARE, soit dans un supermarché, soit dans un bar. La marque contestée bénéficierait du pouvoir d’attraction, de la réputation et du prestige de la marque antérieure pour ses propres produits et services. En effet, les produits et services attireraient l’attention du consommateur par l’association à RSC, ce qui lui procurerait un avantage commercial par rapport aux produits de concurrents. Cet avantage économique consisterait dans l’exploitation de l’effort déployé par RSC pour établir la renommée et l’image de sa marque antérieure, sans aucune compensation en échange. Or, cela correspond à un profit indûment tiré de la renommée de la marque antérieure (point 61).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 60
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
VIAGRA VIAGURA T-332/10
Tout en reconnaissant que la fonction première d’une marque consiste à renseigner sur son origine, le Tribunal a considéré qu’une marque pouvait également servir à transmettre d’autres messages concernant les qualités ou les caractéristiques particulières des produits ou des services qu’elle désigne, ou les images et les sensations qu’elle projette, tels que le luxe, le style de vie, l’exclusivité, l’aventure ou la jeunesse. En ce sens, la marque possède une valeur économique intrinsèque autonome et distincte par rapport à celle des produits ou des services pour lesquels elle est enregistrée (point 57).
Le risque d’un avantage indu englobe notamment les cas où il y a exploitation et parasitisme manifestes d’une marque réputée, à savoir le risque que l’image de la marque renommée ou les caractéristiques projetées par cette dernière soient transférées aux produits désignés par la marque demandée, de sorte que leur commercialisation serait facilitée par cette association avec la marque antérieure renommée (point 59).
Le Tribunal a conclu que, même si les produits revendiqués par la marque demandée ne sauraient procurer réellement le même bénéfice que le médicament jouissant d’une «immense renommée» pour le traitement de la dysfonction érectile, ce qui importe est que le consommateur sera enclin à les acheter en pensant retrouver des qualités semblables, telles que l’augmentation de la libido, du fait du transfert des associations positives projetées par l’image de la marque antérieure. (points 52 et 67).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
EMILIO PUCCI T-373/09 (pourvoi en cours C-582/12 P)
(affaires R 770/2008-2 et R 826/2008-2)
Même si les produits cosmétiques de la partie demanderesse ne présentent pas de similitudes avec les vêtements de l’opposant, ils relèvent de la gamme de produits souvent vendus en tant qu’objets de luxe sous des marques renommées de concepteurs et de producteurs réputés. Compte tenu du fait que la marque antérieure est notoirement connue et que les contextes commerciaux dans lesquels les produits sont vendus sont relativement proches, la chambre de recours a conclu que les acquéreurs de vêtements de luxe établiront un lien entre la marque de la requérante pour des savons, des articles de parfumerie, des huiles essentielles, des cosmétiques et des lotions capillaires relevant de la classe 3 et la célèbre marque «EMILIO PUCCI» une association qui, d’après les conclusions, de la chambre de recours entraînera un bénéfice commercial (chambre de recours, point 129).
La chambre de recours a conclu qu’il y avait un risque important que la requérante puisse exploiter la renommée de la marque de l’opposant pour son propre profit. L’utilisation de la marque faisant l’objet de la demande en relation avec les produits et services précités va sans aucun doute attirer l’attention du consommateur concerné sur la marque de l’opposant, très similaire et renommée. La requérante se retrouvera associée à l’aura de luxe qui entoure la marque «EMILIO PUCCI». De nombreux consommateurs vont penser qu’il existe un lien direct entre les produits de la requérante d’une part, et la célèbre maison de mode italienne, d’autre part, éventuellement sous la forme d’un accord de licence. La requérante pourrait tirer indûment profit du fait que le public connaît la marque «EMILIO PUCCI» pour lancer sa propre marque très similaire sans courir de grands risques ni les coûts liés au lancement d’une marque totalement inconnue sur le marché (chambre de recours, point 130).
Le Tribunal a confirmé les conclusions de la chambre de recours.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 61
FINAL VERSION 1.0 01/08/2015
Risque de profit indu refusé
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
O2
R 2304/2010-2
La chambre de recours a constaté que (1) les marques présentaient très peu de similitudes et ne sont, dans l’ensemble, pas similaires; (2) l’utilisation du terme courant «O2» est descriptive dans le cas de la marque qui fait l’objet de la demande; et (3) compte tenu des domaines d’utilisation totalement différents – et de l’utilisation à des fins descriptives de l’élément courant –, il n’y a aucune possibilité que la requérante profite du caractère distinctif de la marque antérieure, et ce même s’il pouvait y avoir chevauchement du public pertinent (point 55).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
VIPS VIPS T-215/03
La marque antérieure VIPS est renommée pour des restaurants, en particulier des chaînes de restauration rapide. Toutefois, il n’a pas été prouvé que la marque jouisse également d’un certain prestige. Le terme VIPS en lui-même est élogieux et très souvent utilisé dans ce sens. Par conséquent, il est impossible de le «diluer». Aucune explication n’est donnée quant à la manière dont des logiciels de la marque VIPS pourraient tirer profit de leur association avec une chaîne de restauration rapide, même si un lien était établi.
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
SPA SPA-FINDERS T-67/04
SPA est renommée pour l’eau minérale dans le Benelux. La marque contestée, SPA-FINDERS, couvre des publications imprimées, y compris catalogues, magazines et bulletins, et des services d’agence de voyages. Le Tribunal a déclaré qu’il n’existait pas de lien préjudiciel entre les deux signes. Le signe SPA est également utilisé pour faire référence à la ville de SPA et au circuit automobile du même nom. Il n’y a aucune preuve d’un quelconque profit indu ou d’une exploitation de la renommée de la marque antérieure. Le terme SPA dans la marque faisant l’objet de la demande fait uniquement référence au type de publication en question.
3.4.3.2 Le préjudice porté au caractère distinctif
Nature du préjudice
Le préjudice porté au caractère distinctif de la marque antérieure, également désigné sous les termes de «dilution», de «grignotage» ou de «brouillage», est constitué dès lors que se trouve affaiblie l’aptitude de cette marque à identifier les produits ou les services pour lesquels elle est enregistrée et utilisée comme provenant du titulaire de ladite marque, l’usage de la marque postérieure entraînant une dispersion de l’identité de la marque antérieure et de son emprise sur l’esprit du public (arrêt du 27/11/2008, «Intel», C-252/07, point 29).
L’article 8, paragraphe 5, du RMC dispose que le titulaire d’une marque renommée peut s’opposer aux demandes de marque communautaire qui, sans juste motif, «porteraient préjudice au caractère distinctif de marques antérieures renommées»
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 62
FINAL VERSION 1.0 01/08/2015
(italique ajouté). Par conséquent, à l’évidence, l’objet de la protection concerne le caractère distinctif de la marque antérieure renommée. Comme démontré dans les Directives, Partie C, Opposition, Section 2, Identité et risque de confusion, Chapitre 4, Caractère distinctif, le «caractère distinctif» renvoie à l’aptitude plus ou moins grande d’une marque à identifier les produits ou services pour lesquels elle a été enregistrée comme provenant d’une entreprise déterminée. Par conséquent, l’article 8, paragraphe 5, du RMC protège les marques renommées contre une réduction de leur caractère distinctif par une marque postérieure, même lorsque celle-ci renvoie à des produits ou services non similaires.
Même si l’article 8, paragraphe 5, du RMC fait uniquement référence aux conflits entre des produits ou services non similaires, dans son arrêt du 09/01/2003 «DAVIDOFF», C-292/00, et son arrêt du 23/10/2003, «Adidas», C-408/01, le Tribunal a fait valoir que cet article vise également les produits ou services similaires ou identiques.
En conséquence, la protection conférée par l’article 8, paragraphe 5, du RMC reconnaît que l’utilisation illimitée d’une marque renommée par des tiers, même pour des produits non similaires, finira par réduire le caractère distinctif ou unique de cette marque renommée. Par exemple, si la marque Rolls Royce était utilisée pour désigner des restaurants, des pantalons, des bonbons, des stylos en plastique, des râteaux, etc., son caractère distinctif finirait par être dilué et son emprise spécifique sur le public diminuerait également – même par rapport aux véhicules pour lesquels elle est renommée. Par conséquent, la capacité de la marque Rolls Royce à identifier les produits/services pour lesquelles elle est enregistrée et utilisée pour indiquer qu’elle émane de son titulaire serait affaiblie en ce sens que les consommateurs des produits pour lesquels la marque renommée est protégée et renommée seront moins enclins à l’associer immédiatement avec le titulaire qui a construit la réputation de la marque. Cette situation est due au fait que, pour ces consommateurs, la marque revêt désormais plusieurs ou de nombreuses «autres» associations, alors qu’auparavant, elle n’en revêtait qu’une.
Le Consommateur pertinent
Le préjudice porté au caractère distinctif de la marque antérieure doit être apprécié dans le chef du consommateur moyen des produits ou des services pour lesquels cette marque est enregistrée, normalement informé et raisonnablement attentif et avisé (arrêt du 27/11/2008, «Intel», C-252/07, point 35).
L’appréciation du préjudice porté au caractère distinctif
Il est porté préjudice au caractère distinctif de la marque antérieure renommée lorsque l’utilisation d’une marque postérieure similaire réduit la qualité distinctive de la marque antérieure renommée. Toutefois, on ne peut conclure à ce préjudice uniquement parce que la marque antérieure jouit d’une renommée et est identique ou similaire à la marque faisant l’objet de la demande. Une telle approche entraînerait l’application automatique et univoque d’une constatation de risque de dilution à l’encontre de toutes les marques similaires à des marques renommées et irait à l’encontre de l’obligation de prouver le préjudice.
Dans le cadre de l’affaire «Intel», la Cour a soutenu que l’article 4, paragraphe 4, point a), de la directive sur les marques (l’équivalent de l’article 8, paragraphe 5, du RMC) doit être interprété comme signifiant que, pour prouver que l’utilisation de la
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 63
FINAL VERSION 1.0 01/08/2015
marque postérieure porterait préjudice au caractère distinctif de la marque antérieure, il convient de démontrer une «modification du comportement économique» du consommateur moyen des produits ou des services pour lesquels la marque antérieure a été enregistrée, ou un risque sérieux qu’une telle modification se produise dans le futur.
La Cour a développé la notion de «modification du comportement économique» des consommateurs moyens dans son arrêt du 14/11/2013 «Représentation d'une tête de loup» C-383/12P. La Cour a indiqué que cette notion pose une condition de nature objective qui ne saurait être déduite uniquement des éléments subjectifs tels que la seule perception des consommateurs. Elle exige un standard de preuve plus élevé. Par conséquent, afin d’établir l’existence d’un préjudice ou d’un risque de préjudice porté au caractère distinctif de la marque antérieure, le seul fait que ces derniers remarquent la présence d’un nouveau signe similaire à un signe antérieur ne suffit pas à lui seul (points 35-40).
Pour autant l’opposant n’a pas besoin de fournir la preuve actuelle d’un préjudice, il doit convaincre l’Office en produisant des preuves d’un risque futur sérieux qui n’est pas simplement hypothétique – de préjudice. L’opposant peut le faire en soumettant des preuves du risque de préjudice sur la base de déductions logiques résultant d’une analyse des probabilités (et non sur de simples suppositions) et en prenant en compte les pratiques habituelles dans le secteur commercial pertinent ainsi que toutes autres circonstances de l’espèce (voir l’arrêt du 16/04/2008, «CITI», T-181/05, point 78, tel que cité dans l’arrêt du 22/05/2012, «Représentation d'une tête de loup», T-570/10, point 52 et confirmé en recours par l’arrêt du 14/11/2013 «Représentation d'une tête de loup» C-383/12P).
Première utilisation
Le préjudice porté au caractère distinctif se caractérise par un «effet boule de neige», ce qui signifie que la première utilisation d’une marque similaire dans un segment de marché distinct peut ne pas, en elle-même, diluer l’identité ou le «caractère unique» de la marque renommée. La dilution pourrait toutefois devenir effective après un certain temps dans la mesure où cette première utilisation peut déclencher des actes d’utilisation par d’autres opérateurs, entraînant ainsi sa dilution ou un préjudice à son caractère distinctif.
La Cour a soutenu qu’un premier usage d’une marque identique ou similaire postérieure peut suffire, le cas échéant, à causer un préjudice effectif et actuel au caractère distinctif de la marque antérieure ou à faire naître un risque sérieux qu’un tel préjudice se produise dans le futur (arrêt du 27/11/2008, «Intel», C-252/07, point 75). Dans les procédures d’opposition devant l’Office, l’usage du signe contesté peut ne pas avoir eu lieu du tout. À cet égard, l’analyse effectuée par l’Office part du principe que l’usage futur du signe contesté, même s’il s’agissait d’un premier usage, peut déclencher des actes d’utilisation par différents opérateurs, entraînant ainsi une dilution par brouillage. Comme expliqué ci-dessus, le libellé de l’article 8, paragraphe 5, du RMC prévoit cette possibilité en stipulant que l’usage de la marque faisant l’objet de la demande sans juste motif «porterait» préjudice au caractère distinctif ou à la renommée de la marque antérieure.
Cependant, comme exposé ci-dessus, l’opposant a la charge de prouver que l’usage actuel ou futur a porté, ou risque de porter, préjudice au caractère distinctif de la marque antérieure renommée.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 64
FINAL VERSION 1.0 01/08/2015
Caractère distinctif inhérent de la marque antérieure
La Cour a déclaré que «plus la marque antérieure présente un caractère unique, plus l’usage d’une marque postérieure identique ou similaire sera susceptible de porter préjudice à son caractère distinctif» (arrêt du 27/11/2008, «Intel», C-252/07, point 74 et arrêt du 28/10/2008, «BOTUMAX», T-131/09). En effet, la marque antérieure doit posséder un caractère exclusif en ce sens que les consommateurs doivent pouvoir l’associer à une seule source d’origine – car ce n’est que dans ce cas-là que le risque de préjudice au caractère distinctif peut être envisagé. Si le même signe, ou une variante de celui-ci, est déjà utilisé pour une gamme de produits différents, il ne peut pas y avoir de lien avec un des produits qu’il représente et, donc, il y aura peu, voire aucune possibilité de dilution plus avant.
En conséquence, «le risque de dilution paraît, en principe, moins élevé si la marque antérieure consiste en un terme qui, de par une signification qui lui est propre, est très répandu et fréquemment utilisé, indépendamment de la marque antérieure composée du terme en cause. Dans un tel cas, la reprise du terme en question par la marque demandée est moins susceptible de conduire à une dilution de la marque antérieure.» (arrêt du 22/03/2007, «VIPS», T-215/03, point 38).
Si, par conséquent, la marque suggère une caractéristique partagée par une large gamme de produits, le consommateur sera plus enclin à l’associer à la propriété spécifique du produit auquel elle renvoie plutôt qu’à une autre marque. Dans son arrêt du 25/05/2005, «SPA-FINDERS», T-67/04, le Tribunal a confirmé la conclusion que l’utilisation de la marque SPA-FINDERS pour des publications et des services d’agence de voyages n’entraînerait ni brouillage du caractère distinctif, ni ternissement de la renommée de la marque SPA pour de l’eau minérale. Le terme «spa» dans la marque SPA-FINDERS peut être utilisé dans un contexte autre que celui d’une marque puisqu’il est «fréquemment utilisé pour désigner, par exemple, la ville belge de Spa et le circuit automobile belge de Spa-Francorchamps ou, de manière générale, des espaces dédiés à l’hydrothérapie tels que des hammams ou des saunas, [et par conséquent] le risque de préjudice au caractère distinctif de la marque SPA apparaît limité» (point 44).
Ainsi, si la requérante démontre que le signe antérieur ou l’élément qui a donné lieu à la similitude est courant et déjà utilisé par différentes entreprises dans divers segments du marché, il lui serait possible de réfuter l’existence d’un risque de dilution dans la mesure où il sera difficile d’accepter que l’attrait de la marque antérieure risque d’être dilué si elle n’est pas particulièrement unique.
Affaires relatives à la dilution par brouillage
Dilution établie
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 65
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
BOTOX BOTUMAX
T-131/09Renommée pour produits pharmaceutiques pour le traitement des rides
Produits cosmétiques, pharmaceutiques et autres produits sanitaires, et produits de l’imprimerie
«Toutefois, en l’espèce, l’élément verbal "botox" n’a aucune signification propre, mais constitue un terme fantaisiste auquel le public ne sera confronté qu’en relation avec les produits visés par la marque antérieure renommée. Par conséquent, l’utilisation de cet élément verbal ou d’un élément verbal similaire par une autre marque enregistrée pour des produits susceptibles de concerner le grand public conduira incontestablement à la dilution du caractère distinctif de la marque antérieure renommée.» (point 99).
«Cela est le cas, d’une part, des cosmétiques et des produits pharmaceutiques compris dans les classes 3 et 5 et, d’autre part, de ceux relevant de la classe 16 visés par les marques antérieures, lesquels comprennent des magazines ou revues dont la diffusion pourrait être répandue. En effet, le risque de préjudice porté au caractère distinctif d’une marque antérieure renommée par l’usage d’une autre marque identique ou similaire est plus important lorsque cette autre marque sera utilisée pour des produits destinés à un public large.» (point 100).
Dilution refusée
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
VIPS VIPS
T-215/03Renommée pour chaîne de restauration rapide relevant de la classe 42
Programmation d’ordinateurs pour services hôteliers relevant de la classe 42
«Pour ce qui est, d’abord, du préjudice que l’usage sans juste motif de la marque demandée porterait au caractère distinctif de la marque antérieure, ce préjudice peut se produire lorsque la marque antérieure n’est plus en mesure de susciter une association immédiate avec les produits pour lesquels elle est enregistrée et employée (arrêt SPA-FINDERS, point 34 supra, point 43). Ce risque vise, ainsi, la "dilution" ou le "grignotage progressif" de la marque antérieure à travers la dispersion de son identité et de son emprise sur l’esprit du public (conclusions de l’avocat général M. Jacobs dans l’arrêt Adidas-Salomon et Adidas Benelux, point 36 supra, point 37).» (point 37).
«S’agissant, premièrement, du risque que l’usage de la marque demandée porte préjudice au caractère distinctif de la marque antérieure, en d’autres termes du risque de "dilution" et de "grignotage progressif" de cette marque, tel qu’explicité aux points 37 et 38 ci-dessus, il y a lieu de relever que le terme "VIPS" est la forme que revêt au pluriel, en langue anglaise, le sigle VIP (en anglais "Very Important Person", c’est-à-dire "Personne très importante"), qui est d’utilisation large et fréquente tant sur le plan international que sur le plan national pour désigner des personnalités célèbres. Dans ces circonstances, le risque de préjudice porté au caractère distinctif de la marque antérieure par l’usage de la marque demandée apparaît limité.» (point 62).
«Ce même risque apparaît également d’autant moins probable en l’espèce que la marque demandée vise des services de "programmation d’ordinateurs destinés aux services hôteliers, restauration (repas), cafés- restaurants", qui sont destinés à un public spécial et, nécessairement, plus restreint, à savoir les propriétaires desdits établissements. Cela a pour effet que la marque demandée, si elle est admise à l’enregistrement, ne sera probablement connue, par son usage, que de ce public relativement restreint, ce qui diminue certainement le risque de dilution ou de grignotage progressif de la marque antérieure à travers la dispersion de son identité et de son emprise sur l’esprit du public.» (point 63).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 66
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
SPA SPA-FINDERS
T-67/04Renommée pour les eaux minérales relevant de la classe 32
Publications imprimées, y compris catalogues, magazines et bulletins relevant de la classe 16, services d’agences de voyages relevant de la classe 39
«En l’espèce, le Tribunal constate que la requérante n’avance aucun élément permettant de conclure à l’existence d’un risque de préjudice porté au caractère distinctif de la marque SPA par l’usage de la marque SPA-FINDERS. En effet, la requérante insiste sur le prétendu lien immédiat que le public établira entre la marque SPA et la marque SPA-FINDERS. Elle déduit de ce lien l’existence d’une atteinte au caractère distinctif. Or, comme la requérante l’a reconnu lors de l’audience, l’existence d’un tel lien ne suffit pas à démontrer le risque d’atteinte au caractère distinctif. Le Tribunal relève, par ailleurs, que le terme "spa" étant fréquemment utilisé pour désigner, par exemple, la ville belge de Spa et le circuit automobile belge de Spa-Francorchamps ou, de manière générale, des espaces dédiés à l’hydrothérapie tels que des hammams ou des saunas, le risque de préjudice au caractère distinctif de la marque SPA apparaît limité.» (point 44).
3.4.3.3 Le préjudice porté à la renommée
Nature du préjudice
Le dernier type d’atteinte visé par l’article 8, paragraphe 5, du RMC concerne les dommages subis par la marque antérieure par suite d’un préjudice porté à sa renommée. On peut le considérer comme une étape au-dessus du brouillage dans la mesure où la marque n’est pas seulement affaiblie, mais est effectivement dépréciée en raison du lien établi par le public avec la marque postérieure. Le préjudice porté à la renommée, également souvent qualifié de «dilution par ternissement» ou simplement de «ternissement», concerne les cas dans lesquels l’usage de la marque contestée sans juste motif risque de dévaloriser l’image ou le prestige acquis par une marque auprès du public.
La renommée de la marque antérieure peut ainsi être ternie ou dépréciée, lorsqu’elle est reproduite dans un contexte obscène, dégradant ou inapproprié, ou dans un contexte qui n’est pas intrinsèquement désagréable mais qui s’avère incompatible avec une image particulière acquise par la marque antérieure aux yeux du public, grâce aux efforts publicitaires de son titulaire. Le risque d’un tel préjudice peut résulter notamment du fait que les produits ou les services offerts par le tiers possèdent une caractéristique ou une qualité susceptibles d’exercer une influence négative sur l’image de la marque (arrêt du 18/06/2009, «L’Oréal», C-487/07, point 40). Par exemple, si une marque renommée de gin était utilisée par un tiers sur un détergent liquide, cela aurait des répercussions négatives sur la marque renommée, dans la mesure où cela réduirait son attrait.
En résumé, il y a ternissement en cas d’association entre la marque antérieure renommée et une autre, soit au niveau des signes ou au niveau des produits, qui nuit à la renommée de la marque antérieure.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 67
FINAL VERSION 1.0 01/08/2015
Le consommateur pertinent
À l’instar de la dilution par brouillage, le préjudice porté à la renommée de la marque antérieure doit être apprécié dans le chef du consommateur moyen des produits ou des services pour lesquels cette marque est enregistrée, normalement informé et raisonnablement attentif et avisé (arrêt du 27/11/2008, «Intel», C-252/07, point 35, et arrêt du 07/12/2010, «Nimei La Perla Modern Classic», T-59/08, point 35).
L’appréciation du ternissement
Pour établir le préjudice à la renommée d’une marque antérieure, la simple existence d’un rapprochement entre les marques dans l’esprit des consommateurs n’est ni suffisante, ni déterminante. Un tel lien doit certes exister, mais, en plus, les produits ou services visés par la marque postérieure doivent provoquer le type d’impact négatif ou préjudiciable visé ci-dessous lorsqu’ils sont associés à la marque renommée.
Le ternissement survient le plus fréquemment lorsque la marque renommée est liée à des produits qui évoquent des associations mentales non souhaitées ou tendancieuses en contradiction avec celles suscitées par l’usage légitime de la marque renommée par son titulaire (décision du 12/03/2012, «KAPPA», R 297/2011-5, point 36).
Par conséquent, pour prouver le ternissement, l’opposant doit démontrer que l’utilisation de la marque de la requérante engendrerait des associations mentales inappropriées ou négatives avec la marque antérieure, ou des associations en conflit avec l’image qu’elle a acquise sur le marché (décision du 23/11/2010, «WATERFORD», R 240/2004-2, point 89).
Par exemple, si une marque est associée dans l’esprit du public à une image de santé, de dynamisme et de jeunesse et qu’elle est utilisée pour des produits de tabac, la connotation négative véhiculée par cette dernière représenterait un contraste flagrant avec l’image de la première marque (voir autres exemples ci-dessous). Par conséquent, pour qu’il y ait ternissement, il faut que certaines caractéristiques ou qualités des produits ou services pour lesquels la marque contestée est utilisée soient susceptibles de porter préjudice à la renommée de la marque antérieure (arrêt du 22/03/2007, «VIPS», T-215/03, point 67).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 68
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
WATERFORD
R 0240/2004-2
Renommée pour les produits en cristal, y compris la verrerie de la
Class 21
Boissons alcoolisées, nommément vins produits dans la région de Stellenbosch, Afrique
du Sud dans la Classe 33
«Le ternissement ou la dégradation de l’image d’une marque en raison de son association avec un produit inapproprié peut survenir lorsque la marque est utilisée, d’une part, dans un contexte malsain, obscène ou dégradant ou, d’autre part, dans un contexte qui n’est pas intrinsèquement désagréable, mais qui s’avère totalement incompatible avec l’image de la marque. Cette situation peut survenir lorsque la marque renommée est associée à des produits de mauvaise qualité ou qui évoquent des associations mentales non souhaitées ou douteuses en contradiction avec celles générées par l’usage légitime de la marque renommée par son titulaire, ou lorsque la marque renommée est liée à des produits qui sont incompatibles avec la qualité et le prestige qui lui sont associés, même s’il n’est pas question d’usage inapproprié de la marque en elle-même, ou, enfin, lorsque l’élément verbal ou figuratif de la marque renommée est modifié ou altéré de façon négative.» (point 88).
Souvent, les opposants invoquent le fait que les produits ou services de la requérante sont de qualité inférieure ou qu’ils ne peuvent pas contrôler la qualité de tels produits/services. L’Office n’accepte pas de tels arguments en tant que moyen de preuve d’un préjudice. Les procédures devant l’Office ne prévoient pas l’appréciation de la qualité des produits et des services qui, en plus d’être hautement subjective, ne serait pas réalisable dans les cas où les produits ou services ne sont pas identiques ou lorsque le signe contesté n’a pas encore été utilisé.
Par conséquent, dans son appréciation du risque que l’usage de la marque contestée porte préjudice à la renommée de la marque antérieure, l’Office peut uniquement tenir compte des produits et services indiqués dans la spécification de chaque marque. Par conséquent, aux fins de l’analyse par l’Office, les effets nuisibles de l’utilisation du signe contesté en rapport avec les produits et services faisant l’objet de la demande doivent découler de la nature et des caractéristiques usuelles des produits en cause en général, et non de leur qualité dans certaines situations. Cette approche ne laisse pas l’opposant sans protection car, dans tous les cas, lorsqu’une marque postérieure est utilisée pour des produits ou services de faible qualité d’une façon qui rappelle une marque renommée antérieure, ladite marque postérieure porterait préjudice au caractère distinctif ou à la renommée de la marque antérieure ou en tirerait un profit indu.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 69
FINAL VERSION 1.0 01/08/2015
Affaires relatives à la dilution par ternissement
Ternissement établi
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
KAPPA
KAPPA R 0297/2011-5
Renommée pour vêtements et chaussures de sport
Produits du tabac, cigarettes, cigares, entre autres
La demande contestée a été déposée pour des produits du tabac et produits apparentés relevant de la classe 34. Le tabagisme est universellement considéré comme étant très mauvais pour la santé. Pour cette raison, l’usage du signe «KAPPA» pour des produits du tabac et apparentés risque de faire naître des associations mentales négatives avec les marques antérieures de la partie défenderesse ou des associations en contradiction avec et portant préjudice à l’image d’un mode de vie sain que ces marques véhiculent (point 38).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
R 0417/2008-1
Renommée pour des eaux minérales
Préparations et substances pour abraser et polir, pot-pourri; encens, bâtons d’encens; parfums de maison et articles pour parfumer les pièces
Les notions agréables généralement véhiculées par l’eau minérale ne s’associent pas bien avec des détergents ou des produits abrasifs. L’usage de marques qui contiennent le terme SPA pour des produits qui véhiculent des connotations aussi différentes risque d’endommager, ou de ternir, le caractère distinctif de la marque antérieure (point 101).
«La plupart des consommateurs n’associent pas avec plaisir de l’eau minérale avec de l’encens ou des pots-pourris. Par conséquent, l’usage, dans l’optique de distinguer des parfums et de l’encens, d’une marque contenant un mot (SPA) que les consommateurs belges associent fortement à une eau minérale en bouteille risque de nuire à la force d’attraction et au pouvoir de suggestion dont jouit actuellement la marque d’après les preuves.» (point 103).
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 70
FINAL VERSION 1.0 01/08/2015
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
R 2124/2010-1
Renommée pour des produits relevant des classes 18 et 25
Appareils et instruments scientifiques, nautiques, de pesage, de mesurage, de signalisation, de contrôle (inspection), de secours (sauvetage) et d’enseignement, entre autres
L’opposant a démontré que l’image prestigieuse de ses marques est liée aux méthodes traditionnelles de production de ses articles de maroquinerie, fabriqués à la main par des maîtres artisans qui ne travaillent qu’avec des matières premières de haute qualité. C’est cette image de luxe, de glamour et d’exclusivité, associée à la qualité exceptionnelle du produit que l’opposant a toujours voulu véhiculer au public, ainsi que démontré par les preuves produites. En fait, cette image serait totalement incompatible avec des produits de nature fortement industrielle et technologique, comme des compteurs électriques, des microscopes scientifiques, des batteries, des caisses enregistreuses de supermarché, des extincteurs ou tout autre instrument pour lequel la requérante a l’intention d’utiliser sa marque (point 28).
L’image de ses marques, que l’opposant soigne depuis des dizaines d’années, pourrait subir un préjudice du fait de l’usage d’une marque qui rappelle sa propre marque et qui s’applique à des produits caractérisés, aux yeux du public, par un contenu technologique significatif (alors qu’un article de maroquinerie est rarement associé à de la technologie) ou une origine industrielle (alors que les articles de maroquinerie sont traditionnellement associés à de l’artisanat) (point 29).
L’usage d’une marque qui est pratiquement identique à une marque que le public a fini par percevoir comme synonyme d’article en cuir d’excellente manufacture pour désigner des appareils techniques ou des outils électriques de tout genre va diminuer l’attrait de la marque antérieure, autrement dit sa renommée parmi le public qui connaît et apprécie les marques antérieures (point 30).
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Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
EMILIO PUCCI
T-373/09 (affaires R 770/2008-2 et
R 826/2008-2) Renommée pour des vêtements et des chaussures pour dames
Classe 3: Préparations pour blanchir et autres substances pour
lessiver; préparations pour nettoyer, polir, dégraisser et
abraser; savons; parfumerie, huiles essentielles, cosmétiques, lotions
pour les cheveux; dentifrices. Classe 21: Matériel de nettoyage et
paille de fer
Les décisions R 0770/2008-2 et R 0826/2008-2 soutiennent que le risque de préjudice porté à la renommée peut survenir lorsque les produits et services visés par la marque faisant l’objet d’une demande présentent une caractéristique ou une qualité qui pourrait avoir une influence négative sur l’image d’une marque antérieure jouissant d’une renommée pour le motif qu’ils sont identiques ou similaires à la marque faisant l’objet d’une demande. Le Tribunal a confirmé les conclusions de la chambre de recours, ajoutant que, étant donné la forte similitude existant entre les signes en conflit, le fort caractère distinctif de la marque italienne de 1966 et sa renommée sur le marché italien, il y a lieu de considérer qu’il existe un lien entre les signes en conflit, lien qui pourrait porter atteinte à l’image d’exclusivité, de luxe et de haute qualité et, donc, porter préjudice à la renommée de la marque italienne (point 68).
Ternissement refusé
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
T-192/09
Renommée pour l’organisation de compétitions sportives Classe 9
Le Tribunal a constaté que la requérante n’a pas établi le risque qu’un préjudice soit porté à la renommée des marques antérieures, car elle n’a pas indiqué en quoi la force d’attraction des marques antérieures serait diminuée en raison de l’utilisation de la marque demandée pour les produits en cause. Elle n’a notamment pas fait valoir que les produits en cause possédaient une caractéristique ou une qualité susceptibles d’exercer une influence négative sur l’image des marques antérieures (point 68).
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Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
SPA SPA-FINDERS
T-67/04Renommée pour les eaux minérales relevant de la classe 32
Publications imprimées, y compris catalogues, magazines et bulletins relevant de la classe 16, services d’agences de voyages relevant de la classe 39
«Ce préjudice est constitué lorsque les produits pour lesquels la marque demandée est utilisée sont ressentis par le public d’une manière telle que la force d’attraction de la marque antérieure en est diminuée» (point 46).
«En l’espèce, les marques SPA et SPA-FINDERS désignent des produits très différents consistant, d’une part, en des eaux minérales et, d’autre part, en des publications et des services d’agence de voyages. Le Tribunal considère qu’il est dès lors peu probable que les produits et services couverts par la marque SPA-FINDERS, même s’ils s’avèrent être de moindre qualité, diminuent la force d’attraction de la marque SPA» (point 49).
Signe antérieur renommé Demande de marque communautaire
N° de l’affaire
VIPS VIPS
T-215/03Renommée pour chaîne de restauration rapide relevant de la classe 42
Programmation d’ordinateurs pour services hôteliers relevant de la classe 42
«Le risque de ce préjudice peut, notamment, se produire lorsque lesdits produits ou services possèdent une caractéristique ou une qualité susceptibles d’exercer une influence négative sur l’image d’une marque antérieure renommée, en raison de son identité ou de sa similitude avec la marque demandée» (point 39).
«Il convient de relever à cet égard que, si certaines marques de chaînes de restauration rapide bénéficient d’une renommée incontestable, elles ne projettent pas, en principe et à défaut d’éléments de preuve en sens contraire, l’image d’un prestige particulier ou d’une qualité élevée, le secteur de la restauration rapide étant plutôt associé à d’autres qualités, telles que la rapidité ou la disponibilité et, à un certain degré, la jeunesse, dès lors que beaucoup de jeunes fréquentent ce type d’établissements» (point 57).
«il convient d’examiner le risque de préjudice que l’usage de la marque demandée porterait à la renommée de la marque antérieure. Ainsi qu’il a été exposé au point 39 ci-dessus, il s’agit du risque que l’association de la marque antérieure renommée avec des produits ou des services visés par la marque demandée identique ou similaire conduise à une dégradation ou à un ternissement de la marque antérieure, du fait que les produits ou services visés par la marque demandée possèdent une caractéristique ou une qualité particulière susceptible d’exercer une influence négative sur l’image de la marque antérieure» (point 66).
«À cet égard, il convient de constater que les services visés par la marque demandée ne présentent aucune caractéristique ou qualité susceptible d’établir la probabilité qu’un préjudice de ce type soit causé à la marque antérieure. La requérante n’a invoqué, ni a fortiori prouvé, aucune caractéristique ou qualité de cette nature. La seule existence d’un lien entre les services désignés par les marques en conflit n’est ni suffisante ni déterminante. Certes, l’existence d’un tel lien renforce la probabilité que le public, confronté avec la marque demandée, pense également à la marque antérieure. Toutefois, cette circonstance n’est pas, en elle-même, suffisante pour diminuer la force d’attraction de la marque antérieure. Un tel résultat ne peut se produire que s’il est démontré que les services visés par la marque demandée présentent des caractéristiques ou des qualités potentiellement préjudiciables à la renommée de la marque antérieure. Or, une telle preuve n’a pas été apportée en l’espèce» (point 67).
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3.4.4 Preuve du risque de préjudice
3.4.4.1 Qualité et charge de la preuve
Dans les procédures d’opposition, le préjudice ou le profit indu peut n’être que potentiel, comme le confirme la rédaction au conditionnel de l’article 8, paragraphe 5, du RMC, qui exige un usage sans juste motif de la marque demandée qui «tirerait indûment profit du caractère distinctif ou de la renommée de la marque antérieure ou [qui] leur porterait préjudice».
Dans les procédures d’opposition, le préjudice réel ou le profit indu ne se produisent qu’à titre exceptionnel puisque, dans la plupart des cas, le demandeur n’a pas encore utilisé sa marque de manière effective au moment où le litige survient. Cependant, cette possibilité ne doit pas être entièrement exclue, et en cas de preuve d’un usage ou d’un préjudice réel, il convient d’examiner cette preuve et de lui accorder l’importance qui lui revient.
En revanche, le fait que le préjudice ou le profit indu puisse n’être que potentiel ne signifie pas qu’une simple possibilité suffit aux fins de l’article 8, paragraphe 5, du RMC. Le risque de préjudice ou de profit indu doit être sérieux, en ce sens qu’il est prévisible (à savoir, pas uniquement hypothétique) en temps ordinaire. Dès lors, il ne suffit pas de démontrer simplement que le préjudice ou le profit indu ne saurait être exclu d’une façon générale, ou qu’il constitue un risque éloigné. Le titulaire de la marque antérieure doit produire des preuves prima facie d’un risque futur non hypothétique de profit indu ou de préjudice (arrêt du 06/06/2012, T-60/10 «ROYAL SHAKESPEARE», point 53). Comme expliqué ci-dessous, il ne suffit pas pour l’opposant de faire référence en des termes généraux à un profit indu ou à un préjudice porté au caractère distinctif ou à la renommée de ses marques antérieures sans soumettre de preuves convaincantes d’un préjudice réel ou d’arguments pertinents établissant un risque potentiel sérieux, pas seulement hypothétique, de préjudice.
En règle générale, des allégations d’ordre général (comme le simple fait de citer le libellé correspondant du RMC) de préjudice ou de profit indu ne suffiront pas en elles- mêmes pour prouver le préjudice ou le profit indu potentiels: l’opposant doit produire des preuves et/ou développer une ligne d’argumentation convaincante afin de démontrer de manière spécifique comment, en tenant compte des deux marques, des produits et services en question et de toutes les circonstances pertinentes, le préjudice allégué pourrait exister. Le simple fait de démontrer la renommée et la bonne image des marques antérieures, sans étayer davantage cette affirmation au moyen de preuves et/ou d’un argumentaire, ne suffit pas (décision du 15/02/2012, «GALLO», R 2559/2010-1, points 38 et 39, et jurisprudence de la Cour qui y est citée), comme le montrent les paragraphes suivants.
Le seuil précis de preuve à atteindre pour démontrer que le risque de préjudice ou de profit indu potentiel est sérieux et pas uniquement hypothétique sera examiné au cas par cas, en fonction des critères indiqués ci-dessous.
Comme mentionné au point 3.1.4.2 ci-dessus, en ce qui concerne la charge de la preuve visant à la renommée, l’article 76, paragraphe 1, du RMC exige de l’opposant qu’il soumette et prouve tous les faits sur lesquels son opposition repose. De surcroît, la règle 19, paragraphe 2, point c), du REMC exige que l’opposant soumette des preuves ou des arguments démontrant que l’usage sans juste motif de la marque
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demandée tirerait un profit indu du caractère distinctif ou de la renommée de la marque antérieure ou lui porterait préjudice.
Par conséquent, pendant la période de fondement de l’opposition, l’opposant a la charge de démontrer que l’usage effectif ou futur de la marque demandée a porté ou est susceptible de porter préjudice au caractère distinctif ou à la renommée de la marque antérieure, ou qu’elle en a tiré indûment profit ou est susceptible de le faire.
En déchargeant la charge de preuve, l’opposant ne peut se borner à prétendre que le préjudice ou le profit indu est une conséquence nécessaire découlant automatiquement de l’usage du signe demandé, en raison de la forte renommée de la marque antérieure. Même lorsque la marque antérieure jouit d’une grande renommée, le profit indu ou le préjudice doit être correctement prouvé et/ou argumenté en tenant compte des deux marques et des produits et services pertinents, car, dans le cas contraire, les marques renommées bénéficieraient d’une protection contre les signes identiques et similaires pour pratiquement tout type de produit. Cette situation serait clairement contraire à la lettre et à l’esprit de l’article 8, paragraphe 5, du RMC, car la renommée deviendrait alors la seule condition, au lieu de n’être qu’une condition parmi les autres prévues dans cet article.
Par conséquent, lorsque l’opposant invoque un préjudice ou un profit indu réel, il doit fournir des indications et des preuves concernant le type de préjudice subi, ou la nature du profit tiré indûment par le demandeur. L’opposant doit également prouver que le préjudice ou le profit indu résulte de l’utilisation du signe demandé. À cet effet, l’opposant peut s’appuyer sur diverses indications, en fonction du type de préjudice ou de profit indu invoqué, comme une baisse considérable de la vente des produits portant la marque, une perte de clientèle ou une diminution du degré de connaissance de la marque antérieure parmi le public.
En revanche, dans le cas d’un préjudice ou d’un profit indu potentiel, la démarche sera nécessairement plus abstraite, dans la mesure où le préjudice ou le profit indu en question doit être évalué ex ante.
À cette fin, le titulaire de la marque antérieure n’est pas tenu de démontrer l’existence d’une atteinte effective et actuelle à sa marque. Lorsqu’il est prévisible qu’une telle atteinte découlera de l’utilisation faite de la demande de marque communautaire, le titulaire de la marque antérieure ne doit pas attendre que cette atteinte survienne effectivement pour pouvoir interdire l’enregistrement de ladite demande. Toutefois, le titulaire de la marque antérieure doit prouver qu’il existe un risque sérieux qu’une telle atteinte se produise dans le futur (arrêt du 27/11/2008, «Intel», C-252/07, point 38, arrêt du 07/12/2010, «NIMEI LA PERLA MODERN CLASSIC», T-59/08, point 33, arrêt du 29/03/2012, «BEATLE», T-369/10, point 61, arrêt du 06/07/2012 (pourvoi rejeté dans l’affaire C-294/12 P) «ROYAL SHAKESPEARE», T-60/10, point 53, et arrêt du 25/01/2012, «VIAGURA», T-332/10, point 25).
Une telle conclusion peut être établie notamment sur la base de déductions logiques résultant d’une analyse des probabilités et en prenant en compte les pratiques habituelles dans le secteur commercial pertinent ainsi que toutes autres circonstances de l’espèce [arrêt du 10/05/2007, «NASDAQ», T-47/06, point 54, confirmé en pourvoi (C-320/07 P), arrêt du 16/04/2008, «CITI», T-181/05, point 78, et arrêt du 04/11/2013 «Représentation d'une tête de loup» C-383/12P].
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Toutefois, étant donné que dans de tels cas, il convient de prouver la probabilité d’un événement futur et que, par définition, les arguments de l’opposant ne peuvent constituer une preuve en soi, il sera souvent nécessaire de fonder certaines conclusions sur des présomptions légales, autrement dit sur des hypothèses ou des déductions logiques résultant de l’application des règles de probabilité aux faits du cas d’espèce. Cette présomption a été mentionnée par la Cour lorsque celle-ci a déclaré que: «plus le caractère distinctif et la renommée de [la marque antérieure] seront importants, plus l’existence d’une atteinte sera aisément admise» (arrêt du 14/09/1999, C-375/97, «General Motors», point 30). Il résulte également de la jurisprudence que, plus l’évocation de la marque par le signe est immédiate et forte, plus est important le risque que l’utilisation actuelle ou future du signe tire indûment profit du caractère distinctif ou de la renommée de la marque (arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, point 54, arrêt du 18/06/2009,«L’Oréal et al.», C-487/07, point 44, et arrêt du 27/11/2008, «Intel», C-252/07, points 67 à 69).
Ce sont des présomptions simples que le demandeur peut réfuter en soumettant des preuves du contraire, et non des présomptions irréfragables.
Par ailleurs, si le type de préjudice ou de profit indu invoqué dans le cas d’espèce est de nature telle qu’il présuppose le respect de certaines conditions de fait particulières (par exemple, le caractère exclusif de la marque antérieure, les aspects qualitatifs de la renommée, une image donnée, etc.), ces faits devront également être prouvés par l’opposant au moyen de preuves appropriées.
Enfin, comme souligné par le Tribunal dans son arrêt du 07/12/2010, T-59/08, «NIMEI LA PERLA MODERN CLASSIC» (points 57et 58), même si un risque de confusion entre les deux marques n’est pas requis pour démontrer que la marque postérieure tirerait indûment profit de la renommée de la marque antérieure, lorsqu’un tel risque est établi sur la base de faits, il sera utilisé comme preuve qu’un profit indu a été tiré ou que, à tout le moins, il existe un risque sérieux d’une telle atteinte dans le futur.
3.4.4.2 Les moyens de preuve
Lorsque l’opposant revendique un préjudice ou un profit indu éventuel, il doit démontrer toutes les conditions de fait nécessaires, le cas échéant, pour donner naissance à un risque sérieux non hypothétique de préjudice ou de profit indu, en produisant les preuves décrites dans le paragraphe ci-dessous pour prouver le préjudice ou le profit indu réel.
Des conclusions concernant le risque de préjudice futur peuvent également être établies sur la base de déductions logiques résultant d’une analyse des probabilités et en prenant en compte les pratiques habituelles dans le secteur commercial pertinent ainsi que toute autre circonstance de l’espèce (arrêt du 16/12/2010, affaires conjointes «BOTOLIST / BOTOCYL», T-345/08 et T-357/08, point 82, et arrêt du 06/07//2012, «ROYAL SHAKESPEARE», T-60/10, point 53 et l’arrêt du 14/11/2013 «Représentation d'une tête de loup», C-383/12P).
L’opposant qui invoque un préjudice ou un profit indu réel peut utiliser, pour le démontrer, tous les moyens de preuve prévus à l’article 78 du RMC. Il peut, par exemple, prouver une diminution réelle de la connaissance de la marque par référence à des sondages d’opinion et à d’autres preuves écrites. Les règles régissant l’évaluation et la valeur probante de ces pièces sont identiques à celles mentionnées
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aux points 3.1.4.3 et 3.1.4.4 ci-dessus, à propos des preuves exigées pour démontrer la renommée.
3.5 L’usage sans juste motif
La dernière condition à l’application de l’article 8, paragraphe 5, du RMC est que l’usage du signe demandé doit être sans juste motif.
Toutefois, s’il s’avère qu’aucun de ces trois types de préjudice n’existe, l’enregistrement et l’usage de la marque demandée ne peuvent être empêchés, l’existence ou l’absence de justes motifs pour l’usage de la marque demandée étant, dans ce cas, dépourvue de pertinence (arrêt du 22/03/2007, «VIPS», T-215/03, point 60, et arrêt du 07/07/2010, «CARLO RONCATO», T-124/09, point 51).
L’existence d’un motif justifiant l’usage de la marque demandée est une défense que peut faire valoir le demandeur. Par conséquent, il incombe au demandeur de démontrer l’existence d’un juste motif à l’usage de la marque demandée. Il s’agit de l’application de la règle générale selon laquelle «celui ou celle qui affirme doit prouver», qui est l’expression de l’ancienne règle ei qui affirmat incumbit probatio (décision du 01/03/2004, «T CARD OLYMPICS (MARQUE FIG.) / OLYMPIC», R 145/2003-2, point 23). La jurisprudence stipule clairement que lorsque le titulaire de la marque antérieure est parvenu à démontrer l’existence soit d’une atteinte effective et actuelle à sa marque, soit, à défaut, d’un risque sérieux qu’une telle atteinte se produise dans le futur, il appartient au titulaire de la marque postérieure d’établir que l’usage de cette marque a un juste motif (arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, point 67 et, par analogie, arrêt du 27/11/2008, «Intel», C-252/07, point 39).
En l’absence d’indications dans les preuves justifiant l’usage de la marque contestée par le demandeur, l’absence de juste motif doit généralement être présumée (à cet égard, voir l’arrêt du 29/03/2012, T-369/10, «BEATLE», point 76, et la jurisprudence qui y est citée, pourvoi C-294/12 P rejeté). Toutefois, le demandeur peut se prévaloir de la possibilité de réfuter une telle présomption en démontrant qu’il existe une justification légitime à son usage de la marque.
Par exemple, ce type de situation peut survenir lorsque le demandeur a utilisé le signe pour des produits non similaires dans le territoire concerné avant que l’opposant ne soumette une demande pour sa marque, ou que celle-ci n’acquière une renommée, en particulier si cette coexistence n’a en aucune manière porté atteinte au caractère distinctif et à la renommée de la marque antérieure.
Interprétant l’article 5, paragraphe 2, de la directive 89/104 (dont le contenu législatif est pour l’essentiel identique à celui de l’article 8, paragraphe 5, du RMC), la Cour a jugé que le titulaire d’une marque renommée peut se voir contraint, en vertu d’un «juste motif» au sens de cette disposition, de tolérer l’usage par un tiers d’un signe similaire à cette marque pour un produit identique à celui pour lequel ladite marque a été enregistrée, dès lors qu’il est avéré que ce signe a été utilisé antérieurement au dépôt de la même marque et que l’usage de ce signe pour le produit identique l’est de bonne foi (arrêt du 06/02/2014, C-65/12, «The Bulldog», point 60). La Cour a fourni d’autres éléments détaillés à prendre en compte dans l’appréciation du juste motif pour le compte d’un usage antérieur.
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La jurisprudence détaillée ci-dessous montre que le juste motif peut être constaté lorsque le demandeur établit qu’il ne peut raisonnablement être intimé de s’abstenir d’utiliser la marque (par exemple, parce que son usage du signe est un usage générique servant à indiquer le type de produits et de services – que ce soit au moyen de termes génériques ou d’une marque figurative générique), ou lorsqu’il détient certains droits spécifiques pour l’usage de la marque pour des produits ou des services (par exemple, s’il démontre qu’un accord de coexistence pertinent l’autorise à utiliser le signe en question).
La condition de juste motif n’est pas remplie par le simple fait que (a) ce signe est particulièrement adapté pour l’identification des produits pour lesquels il est utilisé, (b) le demandeur a déjà utilisé ce signe pour ces produits ou des produits similaires à l’intérieur et/ou à l’extérieur du territoire concerné de l’Union européenne, ou (c) le demandeur invoque un droit découlant du dépôt d’une demande sur lequel le dépôt de la marque de l’opposant a préséance (voir, notamment, la décision du 23/11/2010, «WATERFORD (fig.)», R 0240/2004-2, et la décision du 15/06/2009, «MARIE CLAIRE (fig.)», R 1142/2005-2). Le simple usage du signe ne suffit pas, il faut pouvoir avancer une raison valable pour justifier cet usage.
3.5.1 Exemples de juste motif
3.5.1.1 Le juste motif a été accepté
N° de l’affaire Commentaire
Décision du 02/06/2010, «FLEX (fig.)», R 1000/2009-1, point 72
La chambre de recours a confirmé que la requérante avait un juste motif au sens de l’article 8, paragraphe 5, du RMC pour insérer le terme «FLEX» dans la marque demandée, invoquant que ce terme n’avait pas de monopole, puisque personne ne détient des droits exclusifs dessus et qu’il s’agit d’une abréviation appropriée, dans de nombreuses langues de la Communauté, pour indiquer que les lits et matelas sont flexibles.
Décision du 26/02/2008, «paquet de biscuits (3D)/OREO(3D)», R 320/2007-2
La chambre de recours a estimé que la requérante avait un juste motif pour représenter une série de biscuits fourrés dans la marque tridimensionnelle faisant l’objet de la demande, à savoir, indiquer aux consommateurs le type de biscuits en question, ainsi que prévu par la législation espagnole d’application.
Décision du 30/07/2007, «M FRATELLI MARTINI (fig.)», R 1244/2006-1
La chambre de recours a confirmé que la requérante avait deux bonnes raisons d’utiliser le nom MARTINI dans la marque demandée: (i) «MARTINI» est le nom de famille du fondateur de la société de la requérante, et (ii) l’existence d’un accord de coexistence datant de 1990.
Décision du 20/04/2007, «CAL SPAS», R 710/2006-2
La chambre de recours a confirmé que la requérante avait un juste motif pour utiliser le terme «SPAS», puisqu’il correspond à un des usages génériques du terme «spa» tel qu’indiqué par le Tribunal de première instance dans l’arrêt «MINERAL SPA», affaire T-93/06.
Décision du 23/01/2009, «CARLO RONCATO», R 237/2008 et R 263/2008-1
Les affaires commerciales de la famille Roncato, qui démontrent que les deux parties avaient le droit d’utiliser le nom «RONCATO» comme marque dans le secteur des valises et des coffres, ont été retenues comme constituant un «juste motif» pour l’utilisation du nom «RONCATO» dans la marque contestée.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 78
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
Décision du 25/08/2011, «Posten AB v Ceská pošta s.p.», décision d’opposition B 1 708 398
Il a été estimé que la requérante avait un juste motif pour utiliser l’élément figuratif d’un cor de poste dans la mesure où il s’agit d’un instrument utilisé de longue date à titre de symbole historique pour les services postaux (des enregistrements de marques et des preuves tirées d’internet ont été soumises afin de démontrer que 29 pays européens utilisent le cor de poste comme symbole pour leurs services postaux).
3.5.1.2 Le juste motif n’a pas été accepté
N° de l’affaire Commentaire
Arrêt du 06/07/2012, «ROYAL SHAKESPEARE», T-60/10, points 65 à 69
Le Tribunal a soutenu que, pour établir le juste motif, ce n’est pas l’usage en tant que tel de la marque contestée qu’il faut prouver, mais une raison qui justifie l’usage de cette marque. En l’espèce, la requérante a simplement allégué avoir «démontré comment et pour quel produit la marque contestée avait été utilisée dans le passé», sans fournir aucune indication ou explication supplémentaire, à supposer même que cet aspect soit pertinent. En conséquence, le Tribunal a considéré que la requérante n’avait pas établi de juste motif pour un tel usage.
Arrêt du 25/03/2009, «L’Oréal SA», T-21/07, point 43
Le Tribunal a considéré qu’il n’y avait pas de juste motif, étant donné qu’il n’avait pas été démontré que le mot «spa» était devenu si nécessaire à la commercialisation de produits cosmétiques qu’il ne saurait être raisonnablement exigé de la requérante qu’elle s’abstienne de l’usage de la marque demandée. L’argument selon lequel «spa» avait un caractère descriptif et générique pour les produits cosmétiques a été rejeté, dès lors que ce caractère ne s’étend pas aux produits cosmétiques, mais seulement à l’égard de l’une de leurs utilisations ou destinations.
Arrêt du 16 /04/ 2008, «CITI», T-181/05, point 85
Le Tribunal a considéré que l’usage de la marque CITI dans un seul État membre de l’UE (l’Espagne) ne saurait constituer une justification valable en ce que, d’une part, l’étendue de la protection géographique de la marque espagnole ne correspond pas au territoire couvert par la marque demandée et, d’autre part, le bien-fondé en droit de l’enregistrement de cette marque nationale a été contesté devant les tribunaux nationaux. Dans le même contexte, le fait que l’intervenante soit titulaire du nom de domaine «citi.es» a été jugé dénué de pertinence.
Arrêt du 10/05/2007, «NASDAQ», T-47/06, point 63, confirmé par CJ, C-327/07 P
Le Tribunal a considéré que le seul argument invoqué devant la chambre de recours pour ce qui concerne le juste motif (à savoir, que le mot «nasdaq» aurait été choisi car il s’agirait d’un acronyme de «Nuovi Articoli Sportivi Di Alta Qualità») n’était pas convaincant, relevant que les prépositions ne sont en principe pas reprises dans les acronymes.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 79
FINAL VERSION 1.0 01/08/2015
N° de l’affaire Commentaire
Décision du 23/11/2010, «WATERFORD (fig.)», R 240/2004-2
Contrairement aux arguments de la requérante selon lesquels il existait un juste motif car le terme «WATERFORD» serait très courant dans les noms et les marques, la chambre de recours a considéré que la requérante n’était pas parvenue à fournir des preuves de la coexistence sur le marché de marques WATERFORD et qu’elle n’avait pas non plus soumis le moindre élément permettant de déduire que le grand public concerné (au Royaume-Uni) considère Waterford comme un nom géographique courant.
Dans la mesure où de tels arguments jouent un rôle dans l’appréciation du caractère unique d’un signe en vue d’établir l’existence du lien nécessaire entre les signes en cause dans l’esprit du public concerné, la chambre de recours a toutefois estimé que, une fois que le caractère unique a été établi, ces arguments ne peuvent pas servir de juste motif.
Par ailleurs, la chambre de recours a noté que la condition de juste motif n’est pas remplie par le simple fait que (a) ce signe est particulièrement adapté pour l’identification des produits pour lesquels il est utilisé, (b) la requérante a déjà utilisé ce signe pour ces produits ou des produits similaires à l’intérieur et/ou à l’extérieur du territoire concerné de l’Union européenne, ou (c) la requérante invoque un droit découlant du dépôt d’une demande sur lequel le dépôt de la marque de l’opposant a préséance.
Décision du 06/10/2006, «TISSOT», R 428/2005-2
La chambre a considéré que l’allégation (non étayée par des preuves) de la requérante selon laquelle le signe TISSOT est dérivé du nom d’une société commerciale associée à la société de la requérante depuis le début des années 1970, ne suffirait pas, à elle seule, même si elle était prouvée, à justifier le «juste motif», au sens de l’article 8, paragraphe 5, du RMC. Les personnes qui héritent d’un nom de famille qui s’avère coïncider avec une marque renommée ne doivent pas partir du principe qu’elles ont le droit de l’utiliser à des fins commerciales d’une manière qui leur permette de tirer indûment profit de la renommée bâtie par le titulaire de la marque au terme de nombreux efforts.
Décision du 18/08/2005, «GRAMMY», R 1062/2000-4
La requérante a invoqué que «GRAMMY» est une abréviation internationale et agréable à entendre du nom de famille de la requérante (Grammatikopoulos). La chambre de recours a rejeté cet argument comme étant insuffisant pour établir le juste motif qui pourrait empêcher l’application de l’article 8, paragraphe 5, du RMC.
Marques jouissant d'une renommée, article 8, paragraphe 5, du RMC
Directives relatives à l’examen devant l'Office, Partie C, Opposition Page 80
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N° de l’affaire Commentaire
Décision du 15/06/2009, «MARIE CLAIRE (fig.)», R 1142/2005-2,
Le juste motif au titre de l’article 8, paragraphe 5, du RMC signifie que, nonobstant le préjudice porté au caractère distinctif ou à la renommée de la marque antérieure, ou le profit qui en est indûment tiré, l’enregistrement et l’usage de la marque par la requérante pour les produits demandés peut être justifié, s’il ne peut être raisonnablement exigé de la requérante qu’elle s’abstienne d’utiliser la marque contestée ou si la requérante jouit d’un droit spécifique d’utilisation de la marque pour ces produits, qui a préséance sur la marque antérieure invoquée dans la procédure d’opposition. Plus spécifiquement, la condition de juste motif n’est pas remplie par le simple fait que (a) ce signe est particulièrement adapté pour l’identification des produits pour lesquels il est utilisé, (b) la requérante a déjà utilisé ce signe pour ces produits ou des produits similaires à l’intérieur et/ou à l’extérieur du territoire concerné de la Communauté, ou (c) la requérante invoque une marque dont la date de dépôt est antérieure à la marque de l’opposant (décision du 25/04/2001 dans R 283/1999-3 HOLLYWOOD / HOLLYWOOD).
En ce qui concerne la tolérance du titulaire de la marque antérieure, la chambre de recours a considéré que cette tolérance s’appliquait uniquement aux magazines et non aux produits plus proches de son segment de marché (c’est-à-dire, les textiles). La chambre de recours a noté que la jurisprudence nationale démontrait que même si une protection est accordée à chaque partie dans son domaine d’activités spécifique, il convenait de refuser l’extension lorsqu’elle se rapproche du domaine d’activités de l’autre partie et pourrait enfreindre ses droits.
À la lumière de ces facteurs, la chambre de recours a estimé que la coexistence ne constituait pas un juste motif permettant l’enregistrement d’une marque communautaire.
Arrêt du 26/09/2012, «Citigate», T-301/09, points 116, 125 et 126
En ce qui concerne l’argument de la requérante selon lequel elle dispose d’un juste motif pour l’usage de la marque demandée (CITIGATE), car elle a utilisé différentes marques consistant en CITIGATE ou contenant cette marque en relation avec les produits et services pour lesquels l’enregistrement est demandé, le Tribunal a déclaré ce qui suit: il y a lieu de relever que les documents fournis par la requérante tendent seulement à démontrer l’existence de diverses sociétés dont la dénomination sociale contient le terme CITIGATE ainsi que l’existence de différents noms de domaine comprenant également ce terme. Or, ces preuves ne sont pas suffisantes pour établir l’existence d’un juste motif, car elles ne démontrent pas l’utilisation effective de la marque CITIGATE.
En ce qui concerne l’argument de la requérante selon lequel elle dispose d’un juste motif pour l’usage de la marque demandée étant donné que les intervenantes ont consenti à l’utilisation de CITIGATE en relation avec les produits et services couverts par la demande d’enregistrement, le Tribunal a déclaré qu’il n’est pas exclu que, dans certains cas, la coexistence de marques antérieures sur le marché puisse éventuellement amoindrir […] le risque de rapprochement entre deux marques en vertu de l’article 8, paragraphe 5, du règlement n° 207/2009.
Dans le cas présent, la coexistence n’a pas été prouvée.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE D
ANNULATION
SECTION 2
DISPOSITIONS MATÉRIELLES
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Table des matières
1 Remarques générales ............................................................................... 4 1.1 Causes d’annulation ..................................................................................4 1.2 Procédures inter partes .............................................................................4 1.3 Effets de la déchéance et de la nullité ......................................................4
2 Déchéance.................................................................................................. 5 2.1 Introduction ................................................................................................5 2.2 Non-usage de la marque communautaire - article 51, paragraphe 1,
point a), du RMC.........................................................................................5 2.2.1 Charge de la preuve ....................................................................................... 6 2.2.2 Usage sérieux................................................................................................. 6 2.2.3 Période à prendre en considération ............................................................... 6 2.2.4 Justes motifs pour le non-usage .................................................................... 7
2.3 Marque communautaire devenue une désignation usuelle (terme générique) – article 51, paragraphe 1, point b), du RMC .........................7 2.3.1 Charge de la preuve ....................................................................................... 7 2.3.2 Dates à prendre en considération .................................................................. 8 2.3.3 Public pertinent ............................................................................................... 8 2.3.4 Désignation usuelle ........................................................................................ 8 2.3.5 Moyens de défense du titulaire....................................................................... 9
2.4 Marque communautaire devenue propre à induire en erreur – article 51, paragraphe 1, point c), du RMC.................................................................9 2.4.1 Charge de la preuve ....................................................................................... 9 2.4.2 Dates à prendre en considération .................................................................. 9 2.4.3 Critères à appliquer ...................................................................................... 10 2.4.4 Exemples ...................................................................................................... 10
3 Causes de nullité absolue....................................................................... 10 3.1 Marque communautaire déposée en violation de l’article 7 – article 52,
paragraphe 1, point a), du RMC...............................................................10 3.1.1 Charge de la preuve ..................................................................................... 11 3.1.2 Dates à prendre en considération ................................................................ 11 3.1.3 Critères à appliquer ...................................................................................... 11
3.2 Défense face à une demande basée sur l’absence de caractère distinctif ....................................................................................................12
3.3 La mauvaise foi – article 52, paragraphe 1, point b), du RMC............... 12 3.3.1 Date de référence......................................................................................... 13 3.3.2 Notion de mauvaise foi ................................................................................. 13
3.3.2.1 Facteurs susceptibles d’indiquer l’existence d’une mauvaise foi 14
3.3.2.2 Facteurs peu susceptibles d’indiquer l’existence d’une mauvaise foi 19
3.3.3 Preuves de mauvaise foi .............................................................................. 20 3.3.4 Lien avec d’autres dispositions du RMC ...................................................... 20
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3.3.5 Étendue de la nullité ..................................................................................... 20
4 Causes de nullité relative........................................................................ 21 4.1 Introduction ..............................................................................................21 4.2 Causes en vertu de l’article 53, paragraphe 1, du RMC......................... 22
4.2.1 Normes à appliquer ...................................................................................... 22 4.2.2 Dates à prendre en considération ................................................................ 22
4.2.2.1. Aux fins de l’appréciation du caractère distinctif accru ou de la renommée 22
4.2.2.2. Demande fondée sur l’article 53, paragraphe 1, point c), lu conjointement avec l'article 8, paragraphe 4, du RMC 23
4.3 Causes en vertu de l’article 53, paragraphe 2, du RMC: autres droits antérieurs..................................................................................................23 4.3.1 Droit au nom/droit à l’image.......................................................................... 24 4.3.2 Droit d’auteur ................................................................................................ 25 4.3.3 Autres droits de propriété industrielle ........................................................... 27
4.4 Non-usage de la marque antérieure........................................................28 4.5 Exceptions opposables à une demande en nullité fondée sur des
motifs relatifs............................................................................................29 4.5.1 Consentement à l’enregistrement ................................................................ 29 4.5.2 Demandes en nullité ou demandes reconventionnelles antérieures............ 30 4.5.3 Forclusion par tolérance ............................................................................... 30
4.5.3.1 Exemples de conclusions rejetant l’allégation de forclusion par tolérance 31
4.5.3.2 Exemples de conclusions accueillant (partiellement) l’allégation de forclusion par tolérance 32
5 Autorité de la chose jugée ...................................................................... 33
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1 Remarques générales
1.1 Causes d’annulation
Conformément à l’article 56, paragraphe 1, du RMC, la «procédure d’annulation» couvre les demandes en déchéance et en nullité.
Les causes de déchéance sont prévues à l’article 51 du RMC. Les causes de nullité sont prévues à l’article 52 du RMC (causes de nullité absolue) ainsi qu’à l’article 53 du RMC (causes de nullité relative). Le REMC traite de la déchéance et de la nullité dans les règles 37 à 41.
1.2 Procédures inter partes
Les procédures d’annulation ne sont jamais engagées par l’Office. L’initiative revient au demandeur en annulation, y compris dans le cas d’affaires fondées sur des causes de nullité absolue.
L’article 56, paragraphe 1, du RMC définit la qualité pour agir dont le demandeur doit se prévaloir pour pouvoir présenter une demande en déchéance ou une demande en nullité. Pour de plus amples détails, voir les Directives, Partie D, Annulation, Section 1, Questions de procédures, points 2.1 et 4.1.
1.3 Effets de la déchéance et de la nullité
En vertu de l’article 55, paragraphe 1, du RMC, en cas de déchéance, et dans la mesure où le titulaire est déclaré déchu de ses droits, la marque communautaire est réputée n’avoir pas eu les effets prévus par le RMC à compter de la date de la demande en déchéance. Cette disposition est particulièrement pertinente lorsqu’une demande en déchéance pour non-usage est suivie de la renonciation à la marque communautaire. À cet égard, le Tribunal a déclaré que la partie qui demande la déchéance a un intérêt légitime à poursuivre la procédure de déchéance en dépit de la renonciation à la marque communautaire par son titulaire, étant donné que la poursuite de la procédure de déchéance peut conduire à une déclaration de non-usage empêchant, en application de l'article 112, paragraphe 2, point a), du RMC, le titulaire de la marque communautaire de solliciter la transformation de sa marque (ordonnance du 24/10/2013, T-451/12, «Stormberg», point 48) (pour connaître la nouvelle pratique en matière de renonciations, voir les Directives, Partie D, Annulation, Section 1, Questions de procédures, points 7.3.1 et 7.3.2).
Une date antérieure à laquelle est survenue l'une des causes de la déchéance peut être fixée par l’Office sur demande d'une partie, à la condition que ladite partie justifie d’un intérêt juridique légitime à cet effet. Sur la base des informations disponibles versées au dossier concerné, il doit être possible de déterminer la date antérieure avec précision. En tout état de cause, et en application de l’article 15 du RMC, la date antérieure doit être fixée après le «délai de grâce» de cinq ans dont jouit le titulaire de la marque communautaire au terme de l’enregistrement d’une marque (voir décision du 28/07/2010, 3349 C, «ALPHATRAD», confirmée par la décision du 08/10/2012, R 0444/2011-1, paragraphes 48-50, et l'arrêt du 16/01/2014, T-538/12).
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Directives relatives à l’examen devant l’Office, Partie D, Annulation Page 5 FINAL VERSION 1.0 01/08/2015
Conformément à l’article 55, paragraphe 2, du RMC, en cas de déclaration de nullité, la marque communautaire est réputée n’avoir pas eu, dès le début, les effets prévus au règlement.
2 Déchéance
2.1 Introduction
Conformément à l’article 51, paragraphe 1, du RMC, trois causes de déchéance peuvent être invoquées:
• la marque n’a pas fait l’objet d’un usage sérieux pendant une période ininterrompue de cinq ans;
• la marque est devenue, par le fait de l’activité ou de l’inactivité de son titulaire, une désignation usuelle;
• la marque est propre à induire le public en erreur par suite de l’usage qui en a été fait par son titulaire ou avec son consentement.
Ces causes sont examinées plus en détails ci-dessous. En vertu de l’article 51, paragraphe 2, du RMC, si les motifs de déchéance n’existent que pour une partie des produits ou des services pour lesquels la marque communautaire est enregistrée, le titulaire n’est déclaré déchu de ses droits que pour les produits ou les services concernés.
2.2 Non-usage de la marque communautaire - article 51, paragraphe 1, point a), du RMC
Conformément à l’article 51, paragraphe 1, point a), du RMC, si, pendant une période ininterrompue de cinq ans après l’enregistrement de la marque communautaire et avant la présentation de la demande d’annulation, la marque communautaire n’a pas fait l’objet d’un usage sérieux au sens de l’article 15 du RMC, son titulaire est déclaré déchu de ses droits, à moins qu’il n’existe de justes motifs pour le non-usage.
En vertu de l’article 51, paragraphe 2, du RMC, si la marque communautaire n’est utilisée que pour une partie des produits et des services pour lesquels elle est enregistrée, le titulaire n’est déclaré déchu de ses droits que pour les produits et services non utilisés.
S’agissant des questions de procédure relatives à la soumission des éléments de preuve (délais pour la soumission d’éléments de preuve, échanges d’observations supplémentaires et production d’éléments de preuve additionnels pertinents, traduction des éléments de preuve, etc.), voir les Directives, Partie D, Annulation, Section 1, Questions de procédures.
Les règles de bonne pratique applicables à l’appréciation au fond des preuves de l’usage de droits antérieurs lors des procédures d’opposition s’appliquent également à l’appréciation des demandes en déchéance fondées sur le non-usage (voir les Directives, Partie C, Opposition, Section 6, La preuve de l'usage, Chapitre 2, Le droit matériel). Toutefois, il y a lieu de prendre en considération un certain nombre de spécificités propres à la procédure de déchéance, qui seront examinées ci-dessous.
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2.2.1 Charge de la preuve
Conformément à l’article 40, paragraphe 5, du REMC, la charge de la preuve incombe au titulaire de la marque communautaire.
Le rôle de l’Office consiste à apprécier les preuves qui lui sont présentées à la lumière des moyens des parties. L’Office ne peut constater d’office l’usage sérieux des marques antérieures. Il ne lui appartient pas de recueillir lui-même des éléments de preuve. Les titulaires de marques dites «notoirement connues» doivent eux-aussi produire des éléments démontrant l’usage sérieux de leurs marques.
2.2.2 Usage sérieux
Conformément à la règle 40, paragraphe 5, lue conjointement avec la règle 22, paragraphe 3, du REMC, les indications et les preuves à produire afin de prouver l’usage comprennent des indications sur le lieu, la durée, l’importance et la nature de l’usage qui a été fait de la marque contestée pour les produits et services pour lesquels elle est enregistrée.
Ainsi que cela a été mentionné précédemment, les critères d’appréciation de l’usage sérieux (notamment du lieu, de la durée, de l’importance et de la nature de l’usage) sont les mêmes pour les procédures d’annulation et d’opposition. Il convient dès lors de suivre les dispositions détaillées contenues dans les Directives, Partie C, Opposition, Section 6, La preuve de l'usage, Chapitre 2, Le droit matériel.
Au titre d’une procédure de déchéance, l’absence d’usage sérieux de certains produits/services de la marque contestée implique la déchéance des droits du titulaire de la marque communautaire enregistrée pour lesdits produits/services. Par voie de conséquence, une grande attention doit être accordée à l’appréciation des éléments de preuve dans les procédures de déchéance pour ce qui concerne l’usage des produits et services de la marque enregistrée (et contestée).
Référence de l’affaire Commentaire
R 1857/2011-4 AQUOS
La marque communautaire a été enregistrée pour des articles de pêche; équipement de pêche; accessoires de pêche dans la classe 28. La chambre a confirmé la décision de la division d’annulation et a maintenu l’enregistrement de la marque pour des cannes à pêche; et les biens non contestés lignes de pêche dans la classe 28. À l’instar de la division d'annulation, la chambre est d'avis que la preuve présentée pour accréditer l’usage avait effectivement démontré un usage sérieux par rapport aux cannes à pêche et que ces biens se distinguent suffisamment des catégories plus larges des articles de pêche et de l’équipement de pêche pour former des sous-catégories cohérentes.
2.2.3 Période à prendre en considération
La date pertinente est la date de présentation de la demande en déchéance.
• Le titulaire de la marque communautaire ne peut faire l’objet d’une procédure de déchéance que si la marque est enregistrée depuis plus de cinq ans à la date de la demande en déchéance.
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• Si cette condition est satisfaite, la marque communautaire doit avoir fait l’objet d’un usage sérieux au cours de la période de cinq ans précédant cette date (la période de cinq ans est toujours décomptée à partir de la date pertinente).
Une exception toutefois: si le commencement ou la reprise de l’usage sérieux de la marque communautaire s’inscrit dans un délai de trois mois précédant la date de présentation de la demande en déchéance, ledit usage n’est pas pris en considération lorsque les préparatifs pour le commencement ou la reprise de l’usage interviennent seulement après que le titulaire de la marque communautaire a appris que la demande en déchéance pourrait être présentée [article 51, paragraphe 1, point a), du RMC].
La charge de la preuve de cette exception incombe au demandeur en déchéance qui doit alors présenter des éléments démontrant qu’il avait informé le titulaire de la marque communautaire de ses intentions de présenter une demande en déchéance.
2.2.4 Justes motifs pour le non-usage
Il y a lieu de suivre les dispositions détaillées contenues dans les Directives, Partie C, Opposition, Section 6, La preuve de l'usage, Chapitre 2, Le droit matériel, et plus particulièrement le point 2.11.
2.3 Marque communautaire devenue une désignation usuelle (terme générique) – article 51, paragraphe 1, point b), du RMC
Une marque communautaire sera déclarée déchue si, par le fait de l’activité ou de l’inactivité de son titulaire, elle est devenue la désignation usuelle dans le commerce d’un produit ou d’un service pour lequel elle a été enregistrée.
2.3.1 Charge de la preuve
Il incombe au demandeur qui introduit une demande en déchéance de prouver que le terme est devenu la désignation usuelle dans le commerce par le fait:
- de l’activité; ou - de l’inactivité
du titulaire.
L'Office doit examiner les faits conformément à l’article 76, paragraphe 1, du RMC, dans la limite des allégations de fait du demandeur en déchéance (voir l’arrêt du 13/09/2013, T-320/10, «Castel», point 28). Ce faisant, il peut tenir compte de faits évidents et notoirement connus. Toutefois, il ne doit pas aller au-delà des arguments juridiques présentés par le demandeur en déchéance. Si une demande en déchéance est uniquement fondée sur l’article 51, paragraphe 1, point b), du RMC, la marque ne pourra être déclarée déchue au motif, par exemple, qu’elle est contraire à l’ordre public et aux bonnes mœurs.
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2.3.2 Dates à prendre en considération
Le demandeur en déchéance doit prouver que la marque est devenue la désignation usuelle dans le commerce du produit ou du service en question après la date d'enregistrement de la marque communautaire, même si des faits ou des circonstances qui se sont produits entre la demande et l'enregistrement peuvent être pris en compte. Le fait que le signe était, à la date de la demande, la désignation usuelle utilisée dans le commerce des produits ou services pour lesquels l’enregistrement a été demandé, ne serait pertinent que dans le contexte d'une action en nullité.
2.3.3 Public pertinent
Une marque communautaire est susceptible d'être déchue conformément à l’article 51, paragraphe 1, point b), du RMC si elle est devenue la désignation usuelle du produit ou du service pour, non pas simplement quelques personnes, mais pour la grande majorité du public concerné, y compris les personnes participant à la commercialisation du produit ou service en cause (voir l’arrêt du 29/04/2004, C-371/02, «Bostongurka», points 23 et 26). Il n’est pas nécessaire que le signe devienne la désignation usuelle d’un produit du point de vue des vendeurs et des utilisateurs finals du produit (arrêt du 06/03/2014, C-409/12, «Kornspitz», point 30). Il suffit que les vendeurs du produit fini n’informent pas leurs clients de ce que le signe a été enregistré en tant que marque, ou qu'ils ne leur offrent pas, au moment de la vente, une assistance comprenant l’indication de la provenance des différents produits qui sont en vente (arrêt du 06/03/2014, C-409/12, «Kornspitz», points 23-25).
2.3.4 Désignation usuelle
Un signe est considéré comme une «désignation usuelle dans le commerce» si le fait d’utiliser le terme en question pour désigner les produits ou services pour lesquels il est enregistré est une pratique constante dans le commerce (voir les Directives, Partie B, Examen, Section 4, Motifs absolus de refus, Chapitre 2, Motifs absolus, Point 2.4 Signes ou indications usuels). Il n’est pas nécessaire de prouver que le terme décrit directement une qualité ou une caractéristique des produits ou services, mais simplement qu’il est effectivement utilisé dans le commerce pour faire référence à ces produits ou services. La force distinctive d’une marque est toujours plus susceptible de s’affaiblir lorsqu’un signe est suggestif ou approprié d’une certaine manière, en particulier s’il contient des connotations positives qui conduisent des tiers à saisir sa pertinence pour désigner, non pas uniquement le produit ou service d’un producteur particulier, mais un type particulier de produit ou de service (voir la décision de la division d’annulation du 30/01/2007, 1020 C, «STIMULATION», paragraphes 22, 32 et suivants).
Le fait qu’une marque soit utilisée comme synonyme d’un produit ou service spécifique indique qu’elle a perdu sa capacité à différencier les produits ou services en cause de ceux d’autres entreprises. Le fait qu’une marque soit communément utilisée à l’oral pour faire référence à un type ou une caractéristique particulière des produits ou des services montre qu’elle est devenue une désignation générique. Toutefois, cela n’est pas décisif en soi: il convient de déterminer si la marque est toujours apte à différencier les produits ou services en cause de ceux d’autres entreprises.
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L’absence de tout terme alternatif ou l’existence d’un seul terme long et compliqué peut également indiquer que la marque est devenue la désignation usuelle dans le commerce d’un produit ou service spécifique.
2.3.5 Moyens de défense du titulaire
Lorsque le titulaire de la marque communautaire a pris les mesures qui pouvaient raisonnablement être attendues dans un cas donné (par exemple, organiser une campagne télévisée ou publier des publicités dans les journaux et les magazines pertinents), la marque communautaire ne peut être déclarée déchue. Le titulaire doit alors vérifier si sa marque figure dans les dictionnaires en tant que terme générique; si tel est le cas, le titulaire peut exiger auprès de l'éditeur que, lors d’éditions ultérieures, la marque soit accompagnée d'une indication précisant qu’il s’agit d’une marque enregistrée (voir l’article 10 du RMC).
2.4 Marque communautaire devenue propre à induire en erreur – article 51, paragraphe 1, point c), du RMC
Si, par suite de l’usage qui en est fait par le titulaire ou avec son consentement, la marque est propre à induire le public en erreur, notamment sur la nature, la qualité ou la provenance géographique des produits ou des services pour lesquels elle est enregistrée, le titulaire de la marque communautaire peut être déchu de ses droits. Dans ce contexte, la qualité fait référence à une caractéristique ou un attribut plutôt qu’à un niveau ou à une norme d’excellence.
2.4.1 Charge de la preuve
L'Office doit examiner les faits conformément à l’article 76, paragraphe 1, du RMC, dans la limite des allégations de fait du demandeur en déchéance (voir l’arrêt du 13/09/2013, T-320/10, «Castel», point 28). Ce faisant, il peut tenir compte de faits évidents et notoirement connus. Toutefois, il ne doit pas aller au-delà des arguments juridiques présentés par le demandeur en déchéance.
Il incombe au demandeur qui introduit une demande en déchéance de prouver que le terme est devenu trompeur. Il doit encore prouver que c’est l'utilisation faite par le titulaire qui cause cet effet trompeur. Si l'utilisation est faite par une tierce partie, il incombe au demandeur en déchéance de prouver que le titulaire a consenti à l’usage, sauf si le tiers est un licencié.
2.4.2 Dates à prendre en considération
Le demandeur en déchéance doit prouver que la marque est devenue de nature à tromper le public, en ce qui concerne particulièrement la nature, la qualité ou la provenance géographique des produits ou des services en question, après la date d'enregistrement de la marque communautaire. Si le signe était déjà trompeur ou de nature à tromper le public à la date de la demande, cela serait pertinent dans une action en nullité.
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2.4.3 Critères à appliquer
Les Directives relatives à l’examen contiennent les critères détaillés à appliquer pour évaluer si une demande de marque communautaire est conforme à l’article 7, paragraphe 1, point g), du RMC [Directives, Partie B, Examen, Section 4, Motifs absolus de refus, Chapitre 2, Motifs absolus (Article 7 du RMC), Point 2.7, Caractère trompeur]. Les critères sont comparables à ceux appliqués dans le cadre des procédures de déchéance de l’article 51, paragraphe 1, point c), du RMC.
2.4.4 Exemples
Une marque composée d’une indication géographique, ou la contenant, sera en règle générale perçue par le public pertinent comme une référence au lieu d’où proviennent les produits. La seule exception à cette règle est lorsque la relation entre le nom géographique et les produits est manifestement si fantaisiste (par exemple, parce que le lieu n’est pas, et a peu de chance d’être, connu du public comme étant l’origine des produits en question) que les consommateurs n’établiront pas un tel lien.
Par exemple, la marque MÖVENPICK DE SUISSE a été annulée parce que les produits en question étaient produits (selon les faits) uniquement en Allemagne, et non pas en Suisse (voir la décision du 12/02/2009, R 0697/2008-1 – «MÖVENPICK OF SWITZERLAND»)
De plus, si une marque comportant les éléments verbaux «chèvre» et «fromage», ainsi qu’un élément figuratif représentant clairement une chèvre, est enregistrée pour du «fromage de chèvre», et que l’usage est établi pour du fromage qui n’est pas fabriqué à base de lait de chèvre, le titulaire de la marque communautaire sera déchu de ses droits.
Si une marque comportant les éléments verbaux «pure laine vierge» est enregistrée pour des «vêtements», et que l’usage est établi pour des vêtements fabriqués à partir de fibres artificielles, le titulaire de la marque communautaire sera déchu de ses droits.
Si une marque comportant les termes «cuir véritable» ou le pictogramme correspondant est enregistrée pour des «chaussures», et que l’usage est établi pour des chaussures qui ne sont pas fabriquées à partir de cuir, le titulaire de la marque communautaire sera déchu de ses droits.
3 Causes de nullité absolue
3.1 Marque communautaire déposée en violation de l’article 7 – article 52, paragraphe 1, point a), du RMC
Si, lors du dépôt de la demande, une objection pouvait être soulevée contre la marque communautaire pour l’une des causes énumérées à l’article 7 du RMC, la nullité de celle-ci peut être déclarée.
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3.1.1 Charge de la preuve
La procédure de nullité a pour objet, notamment, de permettre à l’Office de revoir la validité de l’enregistrement d’une marque et d’adopter une position qu’il aurait dû, le cas échéant, adopter d’office au cours de la procédure d’enregistrement, conformément à l’article 37, paragraphe 1, du RMC (voir l’arrêt du 30/05/2013, T-396/11, «Ultrafilter international», point 20).
Le Tribunal a jugé que, dans le cadre d’une procédure de nullité, l’Office n’est pas tenu d'examiner d’office tous les motifs absolus de refus, mais seulement ceux invoqués par le demandeur. La marque communautaire bénéficie d'une présomption de validité et il appartient au demandeur en nullité d'invoquer devant l'Office les éléments concrets qui mettent en cause sa validité (voir l'arrêt du 13/09/2013, T-320/10, «Castel», points 27 à 29).
Par conséquent, l'Office doit examiner les faits conformément à l’article 76, paragraphe 1, du RMC, dans la limite des allégations de fait du demandeur en nullité (voir l’arrêt du 13/09/2013, T-320/10, «Castel», point 28). Ce faisant, il peut tenir compte de faits évidents et notoirement connus. Toutefois, il ne doit pas aller au-delà des arguments juridiques présentés par le demandeur en nullité.
L’un des arguments que peut invoquer le titulaire de la marque communautaire à l’encontre de la demande en nullité est la preuve que la marque a acquis un caractère distinctif du fait de son usage. Voir, à cet égard, le paragraphe 3.2. ci-dessous.
3.1.2 Dates à prendre en considération
Le Tribunal a considéré que, pour déterminer si une marque doit être enregistrée ou déclarée nulle, il y a lieu d’apprécier la situation à la date de sa demande et non pas à la date de son enregistrement (voir l’arrêt du 03/06/2009, T-189/07, «Flugbörse»; confirmé par l’ordonnance du 23/04/2010, C-332/09 P, «Flugbörse»).
En règle générale, tout fait nouveau ou événement survenant postérieurement à la date de la demande ou à la date de priorité ne sera pas pris en compte. Par exemple, le fait qu’un signe soit devenu, postérieurement à la date de la demande, la désignation usuelle dans le commerce des produits ou services pour lesquels l’enregistrement a été demandé est, en principe, dénué de pertinence aux fins de l’examen d’une demande en nullité (cela ne serait pertinent que dans le cadre d’une demande en déchéance). Cependant, ces faits peuvent néanmoins être pris en compte si et dans la mesure où ils permettent de tirer des conclusions quant à la situation à la date de la demande de la marque communautaire.
3.1.3 Critères à appliquer
Les Directives relatives à l’examen contiennent les critères détaillés à appliquer pour évaluer si une demande de marque communautaire est conforme à l’article 7 du RMC. Les critères sont identiques à ceux appliqués dans le cadre des procédures de nullité, en application de l'article 52, paragraphe 1, point a), du RMC.
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3.2 Défense face à une demande basée sur l’absence de caractère distinctif
Une marque qui tombe sous le coup de l’article 52, paragraphe 1, point a), lu conjointement avec l'article 7, paragraphe 1, points b), c) ou d), du RMC ne sera pas déclarée nulle si elle a acquis un caractère distinctif par l’usage (article 7, paragraphe 3, et article 52, paragraphe 2, du RMC). La charge de la preuve du caractère distinctif acquis par l’usage de la marque contestée doit incomber au titulaire de cette marque, qui invoque ce caractère distinctif.
Le caractère distinctif par l’usage constitue, dans le cadre d’une procédure de nullité, une exception aux causes de nullité de l'article 52, paragraphe 1, point a), lu conjointement avec l'article 7, paragraphe 1, points b), c) et d), du RMC. Puisqu'il s'agit d'une exception, la charge de la preuve incombe à la partie qui entend s’en prévaloir, à savoir le titulaire de la marque contestée. Le titulaire de la marque contestée est le mieux à même d’apporter la preuve permettant d’étayer l’affirmation selon laquelle sa marque a acquis un caractère distinctif du fait de son usage (preuve concernant, par exemple, l'intensité, l’étendue géographique, la durée de l’usage, les investissements promotionnels). Par conséquent, lorsque le titulaire de la marque contestée est appelé à produire la preuve de l’acquisition d’un caractère distinctif par l’usage et ne réussit pas à apporter cette preuve, la nullité de ladite marque s’impose (arrêt du 19/06/2014, affaires jointes C-217/13 et C-218/13, «Oberbank ea», points 68 à 71).
La situation sera évaluée conformément à la partie applicable des Directives relatives à l’examen.
Le titulaire doit démontrer:
- que la marque a acquis un caractère distinctif à la date de la demande, à la date de priorité ou antérieurement à celles-ci (article 7, paragraphe 3, du RMC); ou
- que le caractère distinctif a été acquis après l’enregistrement (article 52, paragraphe 2, du RMC).
La preuve de l'usage pendant la période comprise entre la date de la demande et celle de l'enregistrement peut servir à étayer la constatation d’un caractère distinctif acquis après l'enregistrement.
3.3 La mauvaise foi – article 52, paragraphe 1, point b), du RMC
Le RMC considère uniquement la mauvaise foi comme une cause de nullité absolue d’une marque communautaire, qui peut être invoquée soit devant l’OHMI, soit par voie d’une demande reconventionnelle lors d’une action en contrefaçon. La mauvaise foi n’est donc pas un critère pertinent dans les procédures d’examen ou d’opposition (voir, pour les procédures d’opposition, l’arrêt du 17/12/2010, T-192/09, «Seve Trophy», point 50).
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3.3.1 Date de référence
La date à prendre en considération au moment de déterminer si le titulaire de la marque communautaire a fait preuve de mauvaise foi est la date de dépôt de la demande d’enregistrement. Il convient néanmoins de noter ce qui suit:
• les faits et preuves antérieurs à la date de dépôt peuvent être pris en considération pour l’interprétation de l’intention du titulaire au moment du dépôt de la marque communautaire. Parmi ces faits figurent notamment la préexistence éventuelle d’un enregistrement de la marque dans un État membre, les circonstances dans lesquelles cette marque a été créée et l’usage qui en a été fait depuis sa création (voir paragraphe 3.3.2.1, point 3, ci-dessous);
• les faits et preuves postérieurs à la date de dépôt peuvent parfois être utilisés pour interpréter l’intention du titulaire au moment du dépôt de la marque communautaire, notamment lorsqu’il s’agit de déterminer si le titulaire a fait usage de la marque depuis son enregistrement (voir paragraphe 3.3.2.1, point 3, ci-dessous).
3.3.2 Notion de mauvaise foi
Comme indiqué par l’avocat général Sharpston (conclusions du 12/03/2009, «Lindt Goldhase», C-529/07, point 36), la notion de mauvaise foi visée à l’article 52, paragraphe 1, point b), du RMC n’est ni définie, ni délimitée, ni même décrite d’une quelconque manière dans la législation. Toutefois, la Cour de justice a fourni quelques orientations sur la manière d’interpréter cette notion dans l’arrêt qu’elle a rendu dans la même affaire, comme l’a fait le Tribunal dans plusieurs affaires (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill»; arrêt du 14/02/2012, T-33/11, «Star foods»; et arrêt du 13/12/2012, T-136/11, «Pelikan»). Dans sa décision préjudicielle du 27/06/2013, dans l’affaire C- 320/12, «Malaysia Dairy», la Cour de justice a jugé que la notion de mauvaise foi constitue une notion autonome du droit de l'Union européenne, qui doit être interprétée de manière uniforme dans l’Union.
La mauvaise foi peut notamment être décrite comme «un comportement s’écartant des principes reconnus d’un comportement éthique ou des usages honnêtes en matière industrielle ou commerciale» (conclusions de l’avocat général Sharpston du 12/03/2009, «Lindt Goldhase», C-529/07, point 60; décision similaire du 01/04/2009, «FS», R 0529/2008-4, paragraphe 14).
Afin de déterminer si le titulaire a agi de mauvaise foi au moment du dépôt de sa demande, il convient d’effectuer une appréciation globale tenant compte de
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tous les facteurs pertinents du cas d’espèce. Une liste non exhaustive de ces facteurs est incluse ci-dessous.
3.3.2.1 Facteurs susceptibles d’indiquer l’existence d’une mauvaise foi
Selon la jurisprudence, trois facteurs cumulatifs sont particulièrement pertinents:
1. Identité/similitude susceptible de provoquer une confusion entre les signes: la marque communautaire prétendument enregistrée de mauvaise foi doit être identique au signe invoqué par le demandeur en nullité ou suffisamment similaire à celui-ci pour provoquer une confusion. Bien que le fait que des marques soient identiques ou suffisamment similaires pour provoquer une confusion ne suffise pas à lui seul à démontrer une mauvaise foi (voir, concernant l’identité, l’arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», point 90), une marque différente ou ne présentant pas une similitude prêtant à confusion ne permettra pas d’étayer une conclusion de mauvaise foi.
2. Connaissance de l’utilisation d’un signe identique ou similaire au point de prêter à confusion: le titulaire d’une marque communautaire savait ou aurait dû savoir qu’une tierce partie utilisait un signe identique ou similaire au point de prêter à confusion pour des produits ou services identiques ou similaires.
Il existe par exemple une connaissance lorsque les parties ont entretenu des relations d’affaires ensemble («[ne pouvait pas ignorer, et savait probablement que le demandeur en nullité utilisait le signe] depuis longtemps», arrêt du 11/07/2013, T-321/10,«Gruppo Salini», point 25), ou lorsque la notoriété du signe, même en tant que marque «historique», est un fait notoirement connu (arrêt du 08/05/2014, T 327/12, «Simca», point 50).
Il existe une présomption de connaissance («aurait dû savoir») sur la base, notamment, d’une connaissance générale du secteur économique concerné ou de la durée de l’utilisation. Plus l’utilisation du signe est ancienne, plus il est vraisemblable que le titulaire de la marque communautaire en ait eu connaissance (arrêt du 11/06/2009, C-529/07, «Lindt Golhase», point 39). Cependant, une présomption de connaissance est moins probable si le signe a été enregistré dans un pays non-membre de l’UE et que peu de temps s’est écoulé entre la demande d’enregistrement dans ce pays tiers et la demande d’enregistrement dans un pays de l’UE (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», point 61).
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La connaissance d'un signe antérieur identique ou similaire pour des produits ou services identiques ou similaires ne suffit pas à elle seule pour que soit établie l’existence d’une mauvaise foi (arrêt du 11/06/2009, C-529/07, «Lindt Goldhase», points 40, 48 et 49). Par exemple, il ne peut être exclu que lorsque plusieurs producteurs utilisent, sur le marché, des signes identiques ou similaires pour des produits identiques ou similaires, prêtant à confusion avec le signe dont l’enregistrement est demandé, le titulaire de la marque communautaire poursuive, par l’enregistrement de ce signe, un objectif légitime. Cela peut être le cas lorsque le titulaire de la marque communautaire sait, au moment du dépôt de la demande de marque communautaire, qu’une entreprise tierce fait usage de la marque soumise à l’enregistrement en créant auprès de sa clientèle l’illusion qu’elle distribue officiellement les produits vendus sous cette marque, alors même qu’elle n’en a pas reçu l’autorisation (arrêt du 14/02/2012, T-33/11, «Star foods», point 27).
De même, la circonstance que le demandeur sait ou doit savoir qu’un tiers utilise une marque à l’étranger au moment du dépôt de sa demande qui peut être confondue avec la marque dont l’enregistrement est demandé ne suffit pas, à elle seule, à établir l’existence, au sens de ladite disposition, de la mauvaise foi du demandeur (décision préjudicielle du 27/06/2013, C-320/12, «Malaysia Dairy», point 37).
La connaissance ou la présomption de connaissance d’un signe existant n’est pas requise lorsque le titulaire de la marque communautaire détourne le système dans l’intention d’empêcher tout signe similaire d’entrer sur le marché [voir par exemple l’extension artificielle de la période de grâce pour défaut d’usage au paragraphe 3.3.2.1, point 3, c), ci-dessous].
3. Intention malhonnête de la part du titulaire de la marque communautaire: il s’agit d’un facteur subjectif devant être déterminé par référence aux circonstances objectives du cas d’espèce (arrêt du 11/06/2009, C-529/07, «Lindt Goldhase», point 42). Ici encore, plusieurs facteurs peuvent être pertinents. Voir, par exemple, les scénarios suivants:
a) La mauvaise foi est constatée lorsque l'on peut déduire que le but du demandeur de marque communautaire est «d’exploiter de manière parasitaire» la renommée des marques enregistrées du demandeur en nullité et de tirer avantage de celle-ci (arrêt du 08/05/2014, T 327/12, «Simca», point 56).
Bien que le système de la marque communautaire n’exige pas d’un titulaire de marque communautaire qu’il ait également, au moment du dépôt de sa demande, l’intention de faire usage de sa marque, le fait qu’il s’avère, ultérieurement, que le seul but du titulaire était d’empêcher l’entrée d’un tiers sur le marché peut être considéré comme une
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indication d’intention malhonnête (arrêt du 11/06/2009, C-529/07, «Lindt Goldhase», point 44).
En revanche, si le dépôt de la marque communautaire présente une logique commerciale et que l’on peut supposer que le titulaire de la marque communautaire comptait utiliser son signe en tant que marque commerciale, cela tend à indiquer qu’il n’y avait aucune intention malhonnête. Cela pourrait par exemple être le cas s’il existait une «trajectoire commerciale», comme l’enregistrement d’une marque communautaire après l’enregistrement de la marque dans un État membre (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», point 58), s’il existe des preuves démontrant l’intention du titulaire de marque communautaire de développer ses activités commerciales, par exemple au moyen d’un contrat de licence (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», point 67), ou si le titulaire de la marque communautaire avait un intérêt commercial à obtenir une protection plus large de sa marque, par exemple en augmentant le nombre d’États membres dans lesquels le titulaire génère un chiffre d’affaires grâce aux produits commercialisés sous la marque (arrêt du 14/02/2012, T-33/11, «Star foods», points 20 et 23).
L’existence d’une relation directe ou indirecte entre les parties avant le dépôt de la marque communautaire, comme par exemple une relation précontractuelle, contractuelle ou post-contractuelle (résiduelle), peut également indiquer l’existence d’une mauvaise foi de la part du titulaire de marque communautaire (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», points 85 à 87; arrêt du 11/07/2013, T-321/10, «Gruppo Salini», points 25 à 32). Dans de tels cas de figure, l’enregistrement du signe par le titulaire de la marque communautaire en son propre nom peut être, selon les circonstances, considéré comme une violation des usages honnêtes dans le commerce et les affaires.
Un exemple de situation susceptible d’être prise en compte, afin de déterminer si le titulaire de marque communautaire a agi de mauvaise foi, est celle où le titulaire tente d’étendre artificiellement la période de grâce pour défaut d’usage, par exemple en déposant une demande réitérée portant sur une marque communautaire antérieure, afin d’éviter de perdre un droit pour défaut d’usage (arrêt du 13/12/2012, T-136/11, «Pelikan», point 27).
Il convient de distinguer ce cas de la situation dans laquelle le titulaire de la marque communautaire, conformément à la pratique commerciale normale, cherche à protéger des variations de son
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signe, par exemple lorsqu’un logo a évolué (arrêt du 13/12/2012, T-136/11, «Pelikan», points 36 et suivants).
Outre les trois facteurs susmentionnés, les autres facteurs potentiellement pertinents cités par la jurisprudence et/ou l’Office afin d’apprécier l’existence d’une mauvaise foi comprennent:
i) les circonstances dans lesquelles le signe contesté a été créé, l’usage qui en a été fait depuis sa création et la logique commerciale sous-tendant le dépôt de la demande d’enregistrement de ce signe en tant que marque communautaire (arrêt du 14/02/2012, T-33/11, «Star foods», points 21 et suivants; arrêt du 08/05/2014, T-327/12, «Simca», point 39);
ii) la nature de la marque demandée. Lorsque le signe dont l’enregistrement est demandé consiste en la forme et la présentation d’ensemble d’un produit, le fait que le titulaire de la marque communautaire ait agi de mauvaise foi au moment du dépôt pourrait être établi plus facilement lorsque la liberté de choix des concurrents quant à la forme et la présentation d’un produit est restreinte en raison de considérations d’ordre technique ou commercial, de sorte que le titulaire de la marque communautaire est en mesure d’empêcher ses concurrents non seulement d’utiliser un signe identique ou similaire, mais également de commercialiser des produits comparables (arrêt du 11/06/2009, C‑529/07, «Lindt Goldhase», point 50);
iii) le degré de caractère distinctif intrinsèque ou acquis du signe du demandeur en nullité et du signe du titulaire de la marque communautaire, ainsi que son degré de renommée, même s'il n'est que résiduel (arrêt du 05/08/2014, T-327/12, «Simca», point 40, 46, et 49);
iv) le fait que la marque nationale sur laquelle le titulaire de la marque communautaire a basé une revendication de droit prioritaire ait été déclarée invalide pour cause de mauvaise foi (décision du 30/07/2009, R 1203/2005 1, «BRUTT»);
(v) une demande de compensation financière faite par le titulaire de la marque communautaire au demandeur en nullité, s'il est prouvé que le titulaire de la marque communautaire connaissait l'existence du signe antérieur identique ou similaire et qu'il s'attendait à recevoir une proposition de compensation financière de la part du demandeur en nullité (arrêt du 08/05/2014, T-327/12, «Simca», point 72). Toutefois, dans une affaire antérieure, la Cour a estimé qu’une demande de compensation, même en apparence disproportionnée, ne saurait
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permettre de mettre en évidence, à elle seule, la mauvaise foi si le demandeur en nullité ne fournit pas la preuve que le titulaire de la marque communautaire ne pouvait pas ignorer l'existence de la marque antérieure. Dans cette affaire particulière, la Cour a tenu compte du fait qu’en 1994, le titulaire de la marque avait enregistré une marque identique à la marque contestée au niveau de l’Office espagnol des marques (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», points 1-22 et 88).
Enfin, la jurisprudence et/ou l'Office ont identifié un certain nombre de facteurs qui, considérés isolément, ne suffisent pas à constater la mauvaise foi, mais qui, en combinaison avec d'autres facteurs pertinents (à identifier au cas par cas), pourraient indiquer l'existence de la mauvaise foi:
• le fait qu’une marque communautaire antérieure hautement similaire ait été déchue pour des produits ou services d’un certain nombre de classes ne saurait être à lui seul suffisant pour tirer des conclusions sur l’intention du titulaire de la marque communautaire au moment du dépôt de la demande de marque communautaire pour les mêmes produits ou services (arrêt du 13/02/2012, T-136/11, «Pelikan», point 45), si ce dépôt a été effectué cinq ans avant l’introduction de la demande de déchéance.
• Le fait que la demande d’enregistrement de la marque communautaire contestée ait été déposée trois mois avant l’expiration du délai de grâce des marques communautaires antérieures n’est pas suffisant pour contrebalancer les éléments dont il ressort que la volonté du titulaire de la marque communautaire était de déposer une marque modernisée couvrant une liste de services actualisée (arrêt du 13/02/2012, T-136/11, «Pelikan», points 50 et 51).
• Le dépôt des demandes de déclaration en nullité des marques du demandeur en nullité constitue l’exercice légitime du droit exclusif d’un titulaire de marque communautaire et ne peut prouver en lui-même l’intention malhonnête de sa part (arrêt du 13/02/2012, T-136/11, «Pelikan», point 66).
• Le fait que le titulaire de la marque communautaire, après avoir obtenu l’enregistrement de la marque communautaire en question, mette d’autres parties en demeure de cesser d’utiliser un signe similaire dans leurs relations commerciales ne constitue pas un indice de mauvaise foi, une telle demande relevant des prérogatives attachées à l’enregistrement d’une marque en tant que marque communautaire; voir l’article 9 du RMC (arrêt du 14/02/2012, T-33/11, «Star foods», point 33). Cependant, lorsque cette demande est liée à d'autres facteurs (par exemple, la marque n'est pas utilisée), cela pourrait constituer une indication de l'intention d'empêcher une autre partie d’entrer sur le marché.
• Le fait que les signes en cause soient identiques ne saurait démontrer la mauvaise foi en l’absence de tout autre élément pertinent (arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», point 90). En outre, le simple fait que les différences entre la marque communautaire en cause et la marque communautaire antérieure enregistrée par le même titulaire soient si insignifiantes qu’elles peuvent passer inaperçues aux yeux d’un consommateur moyen ne saurait à lui seul démontrer que la marque communautaire contestée constitue une simple demande réitérée, déposée de mauvaise foi (arrêt du 13/12/2012, T-136/11, «Pelikan», points 33 et 34). L’évolution, au fil du temps,
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du logo destiné à représenter graphiquement une marque constitue une pratique commerciale normale (arrêt du 13/12/2012, T-136/11, «Pelikan», point 36).
3.3.2.2 Facteurs peu susceptibles d’indiquer l’existence d’une mauvaise foi
La jurisprudence a relevé plusieurs facteurs qui sont généralement peu susceptibles de démontrer une mauvaise foi:
• l’extension de la protection d’une marque nationale via un enregistrement de celle-ci en tant que marque communautaire relève de la stratégie commerciale normale d’une société (arrêt du 14/02/2012, T-33/11, «Star foods», point 23 et arrêt du 01/02/2012, T-291/09, «Pollo Tropical chicken on the grill», point 58);
• la mauvaise foi ne peut être constatée à la lumière de l’ampleur de la liste des produits et des services figurant dans la demande d’enregistrement (arrêt du 07/06/2011, T-507/08, «16PF», point 88). Il est en principe légitime pour une entreprise de solliciter l’enregistrement d’une marque non seulement pour les catégories de produits et de services qu’elle commercialise au moment du dépôt, mais aussi pour d’autres catégories de produits et de services qu’elle a l’intention de commercialiser dans le futur (arrêt du 14/02/2012, T-33/11, «Star foods», point 25; arrêt du 07/06/2011, T-507/08, «16PF», point 88);
• le fait que le titulaire de plusieurs marques nationales décide de demander une marque communautaire uniquement pour l’une de ces marques, et pas pour toutes, ne saurait indiquer l’existence d’une mauvaise foi. La décision de protéger une marque au niveau national et au niveau de l’Union européenne relève d’un choix dicté par la stratégie de commercialisation du titulaire. Il n’appartient ni à l’Office, ni au Tribunal de s’immiscer dans cette appréciation (arrêt du 14/02/2012, T-33/11, «Star foods», point 29);
• lorsqu’un signe jouit d’un degré de notoriété au niveau national et que son titulaire demande une marque communautaire, ce degré de notoriété peut justifier l’intérêt du titulaire à assurer une protection juridique plus étendue (arrêt du 11/06/2009, C-529/07, «Lindt Goldhase», points 51 et 52);
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3.3.3 Preuves de mauvaise foi
La bonne foi est présumée jusqu’à preuve du contraire (arrêt du 13/12/2012, T-136/11, «Pelikan», point 57). Le demandeur en nullité doit démontrer que le titulaire de la marque communautaire était de mauvaise foi au moment du dépôt de la marque communautaire, par exemple en prouvant qu’il n’avait pas l’intention d’utiliser la marque communautaire ou que son but était d’empêcher une tierce partie d’entrer sur le marché. Il ressort clairement des décisions de la chambre de recours du 12/07/2013 dans les affaires «URB» (R 1306/2012-4, R- 1309/2012-4 et R-1310/2012-4) que la mauvaise foi doit être clairement prouvée par le demandeur.
3.3.4 Lien avec d’autres dispositions du RMC
Si l’article 8, paragraphe 3, du RMC, procède du principe en vertu duquel les transactions commerciales doivent être conduites de bonne foi, l’article 52, paragraphe 1, point b), du RMC, lui, pose expressément ce principe (voir p. 4 et suivantes des Directives sur l’article 8, paragraphe 3, du RMC).
3.3.5 Étendue de la nullité
Lorsque la mauvaise foi du titulaire de la marque communautaire a été établie, la marque communautaire est déclarée nulle dans son intégralité, y compris pour les produits et services non liés à ceux protégés par la marque du demandeur en nullité. La seule exception concerne les cas où le demandeur a dirigé sa demande en nullité seulement contre certains des produits et services couverts par la marque communautaire contestée, auquel cas une conclusion de mauvaise foi entraînera la nullité de la marque communautaire seulement pour les produits et services qui ont été contestés.
Par exemple, dans sa décision R-0219/2009-1 («GRUPPO SALINI/SALINI»), la chambre de recours a conclu que la mauvaise foi avait été prouvée et a déclaré nulle la marque communautaire contestée dans son intégralité, c'est-à-dire aussi pour des services (assurances, services financiers et monétaires relavant de la classe 36 et des services ayant trait à des logiciels et à du matériel informatique relevant de la classe 42) qui n’étaient pas similaires aux services de construction, maintenance et installation du demandeur en nullité compris dans la classe 37.
Le Tribunal a confirmé la décision de la chambre de recours et a déclaré que la conclusion de mauvaise foi à la date de dépôt de la marque communautaire contestée ne pouvait qu’aboutir à une déclaration de nullité de la marque
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communautaire dans son intégralité (arrêt du 11/07/2013, T-321/10; «Gruppo Salini», point 48).
Alors que le Tribunal n’a pas développé les raisons pour une telle conclusion, il peut en être déduit, en toute sécurité, qu’il a considéré que la protection de l’intérêt général en ce que les activités dans le domaine commercial et des affaires soient conduites d’une manière honnête, justifie l’annulation de la marque communautaire aussi pour des produits et services qui ne sont pas similaires à ceux du demandeur en nullité et n’appartiennent même pas à des marchés adjacents ou voisins.
Par conséquent, il paraît tout simplement logique que la nullité, une fois déclarée, soit étendue à tous les produits et/ou services couverts par la marque communautaire contestée, même à ceux qui seraient considérés dissimilaires dans un scénario relevant purement de l’article 8, paragraphe 1, point b).
4 Causes de nullité relative
4.1 Introduction
L’article 53 du RMC permet aux titulaires de droits antérieurs de présenter une demande en nullité d’une marque communautaire dans un certain nombre de circonstances (causes) détaillées ci-dessous.
• Les mêmes causes que celles applicables dans le cadre des procédures d’opposition:
o lorsque la marque antérieure, au sens de l’article 8, paragraphe 2, du RMC, est identique ou similaire à la marque communautaire contestée et couvre des produits et des services identiques ou similaires, ou lorsque la marque antérieure jouit d’une renommée [article 53, paragraphe 1, point a), du RMC, lu conjointement avec l’article 8, paragraphe 1, point a) ou b) et paragraphe 5, du RMC];
o lorsqu’une marque a été demandée par un agent ou un représentant du titulaire de la marque, mais sans le consentement de ce dernier [article 53, paragraphe 1, point b), du RMC, lu conjointement avec l’article 8, paragraphe 3, du RMC];
o lorsqu’une marque non enregistrée ou un autre signe utilisé dans la vie des affaires peut entraîner l’annulation de l’enregistrement d’une marque communautaire, dès lors que les législations nationales donnent au titulaire du signe antérieur le droit d’interdire l’utilisation de la marque communautaire enregistrée [article 53, paragraphe 1, point c), du RMC, lu conjointement avec l’article 8, paragraphe 4, du RMC].
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• Une cause additionnelle fondée sur un autre droit antérieur, dans la mesure où la législation européenne ou la législation nationale (ce qui inclut les droits issus d’accords internationaux applicables dans un État membre) confère au titulaire le droit d’interdire l’usage de la marque communautaire contestée (article 53, paragraphe 2, du RMC), et notamment:
oun droit au nom; oun droit à l’image; oun droit d’auteur; oun droit de propriété industrielle.
Ces causes sont décrites plus en détail ci-après (points 4.2 et 4.3).
Ainsi que cela est le cas dans les procédures d’opposition, le titulaire de la marque communautaire contestée peut exiger du demandeur en nullité qu’il soumette des preuves de l’usage sérieux de sa marque antérieure. Les spécificités concernant la période pertinente retenue pour l’appréciation de l’usage sérieux dans le cadre des procédures en nullité sont abordées au point 4.4.
Enfin, le RMC comporte un certain nombre de dispositions dont peut se prévaloir le titulaire d’une marque communautaire en réponse à une demande en nullité, en fonction du type de droit antérieur invoqué (par ex., selon qu’il s’agit ou non d’une marque communautaire ou d’une marque nationale antérieure). Ces dispositions font l’objet du point 4.5.
4.2 Causes en vertu de l’article 53, paragraphe 1, du RMC
4.2.1 Normes à appliquer
Les conditions fondamentales pour considérer un droit antérieur visé à l’article 53, paragraphe 1, du RMC, lu conjointement avec l’article 8, du RMC, comme une cause de nullité relative sont les mêmes que pour une procédure d’opposition. Les règles de bonne pratique prévues dans les Directives, Partie C, Opposition, notamment la Section 2 (Identité et risque de confusion), la Section 3 (Dépôt non autorisé par les agents du titulaire de la marque), la Section 4 (Droits en vertu de l’article 8, paragraphe 4, du RMC) et la Section 5 (Marques jouissant d’une renommée) doivent être appliquées en conséquence.
4.2.2 Dates à prendre en considération
4.2.2.1. Aux fins de l’appréciation du caractère distinctif accru ou de la renommée
Comme pour les procédures d’opposition, dans le cadre des procédures de nullité, un demandeur en nullité invoquant un caractère distinctif accru ou la notoriété doit prouver que son droit antérieur a acquis un caractère distinctif accru ou est notoirement connu à la date de la demande d'enregistrement de la marque communautaire contestée, en prenant en considération, le cas échéant, tout droit de priorité invoqué. En outre, la renommée ou le caractère distinctif accru de la marque antérieure doit continuer d'exister au moment où la décision relative à la demande en nullité est adoptée.
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Lors des procédures d’opposition, en raison de la courte période séparant le dépôt d’une demande d'enregistrement en tant que marque communautaire et la décision d'opposition, on estime normalement que le caractère distinctif accru ou la renommée de la marque antérieure continue d’exister au moment de la décision1. Cependant, dans le cadre des procédures de nullité, cette durée peut être considérable. Il appartient dès lors au demandeur en nullité de démontrer que son droit antérieur continue de bénéficier d’un caractère distinctif accru ou d’une renommée au moment où la décision relative à la demande en nullité est adoptée.
4.2.2.2. Demande fondée sur l’article 53, paragraphe 1, point c), lu conjointement avec l'article 8, paragraphe 4, du RMC
Dans le cas d'une demande en nullité fondée sur l'article 53, paragraphe 1, point c), lu conjointement avec l'article 8, paragraphe 4, du RMC, le demandeur en nullité doit démontrer l’usage du signe antérieur dans la vie des affaires dont la portée n’est pas seulement locale à la date du dépôt de la demande d’enregistrement de la marque communautaire contestée (ou à la date de la priorité le cas échéant). Dans le cadre des procédures de nullité, le demandeur doit également démontrer que le signe était utilisé dans la vie des affaires dont la portée n’est pas seulement locale à un autre moment, à savoir à la date de présentation de la demande en nullité. Cette condition découle du libellé de l’article 53, paragraphe 1, point c), du RMC, lequel stipule qu’une marque communautaire doit être déclarée nulle «lorsqu’il existe un droit antérieur visé à l’article 8, paragraphe 4, et que les conditions énoncées audit paragraphe sont remplies» (décision de la division d’annulation du 05/10/2004, 606 C, «ANKER», et décision R 1822/2010-2, «Baby Bambolina», paragraphe 15). Une fois démontrée, cette condition est réputée comme étant toujours remplie au moment où la décision relative à la demande en nullité est adoptée, sauf preuve du contraire (par ex., un nom de société est invoqué mais la société n’existe plus).
D'autres spécificités concernant la justification et la recevabilité sont abordées dans les Directives, Partie D, Section 1, Questions de procédures.
4.3 Causes en vertu de l’article 53, paragraphe 2, du RMC: autres droits antérieurs
Une marque communautaire peut être déclarée nulle sur la base des droits mentionnés ci-après lorsque l’usage de la marque aurait pu être interdit en vertu du droit communautaire ou national régissant leur protection. La liste qui suit n’est pas une liste exhaustive de ces droits antérieurs.
L’article 53, paragraphe 2, du RMC peut uniquement être appliqué lorsque les droits invoqués sont d’une nature telle qu’ils ne sont pas considérés comme des droits traditionnels pouvant être invoqués lors de procédures d’annulation fondées sur l’article 53, paragraphe 1, du RMC (décision de la division d’annulation du 13/12/2011, 4033 C, paragraphe 12).
1Voir les Directives, Partie C, Opposition, Section 5, Marques jouissant d’une renommée
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4.3.1 Droit au nom/droit à l’image
Tous les États membres ne protègent pas le droit au nom ou à l’image d’une personne. L’étendue exacte de la protection découlera du droit national (par exemple, si le droit est protégé indépendamment des produits et services couverts par la marque contestée).
Le demandeur en nullité devra mentionner la législation nationale en vigueur nécessaire et fournir une argumentation convaincante concernant la raison pour laquelle il parviendrait, en vertu de ladite législation nationale, à interdire l’usage de la marque contestée. Toute référence simple à la législation nationale ne pourra être considérée comme suffisante: il n’appartient pas à l’Office de développer cet argument pour le compte de la requérante (voir, par analogie, l’arrêt du 05/07/2011, C-263/09, «Elio Fiorucci»).
Droit antérieur Signe contesté Référence de l’affaire
TELESIS TELESIS R 0134/2009-2
Le droit au nom en vertu du droit autrichien
En vertu du droit autrichien (section 43 AGBG), «la personne dont le droit d’utiliser son nom a été contesté ou dont le nom est utilisé sans [motif] juste à son détriment, violant alors ses intérêts pouvant être protégés, est en droit de demander au contrevenant de mettre immédiatement fin à cette violation et de compenser tout préjudice subi. Une telle protection s’étend également aux différentes désignations des commerçants, même si ces dernières diffèrent de leur état civil […]. Si la section 43 AGBG peut également être appliquée au nom d’un commerçant, l’étendue de la protection n'outrepasse pas le domaine d’activité du signe utilisé. Les autres services contestés sont différents des services du droit antérieur dans la mesure où […] ils concernent différents domaines d’activité» (paragraphes 61 à 63). Partant, les conditions prévues par le droit autrichien n’ont pas été réunies et la demande en nullité fondée sur l’article 53, paragraphe 2, point a), du RMC, lu conjointement avec le droit autrichien, a été rejetée.
Droit antérieur Signe contesté Référence de l’affaire
«MARQUÉS DE BALLESTAR» (titre de noblesse) R 1288/2008-1
Le droit au nom en vertu du droit espagnol
En Espagne, les titres de noblesse sont protégés en vertu de la loi 1/1982 comme s’il s’agissait de noms de personnes. . La demanderesse en nullité a prouvé l’existence de son titre de noblesse et a démontré qu'elle portait ledit titre. La marque communautaire inclut un petit blason ainsi que les termes «MARQUÉS DE BALLESTAR» rédigés dans une police de grande taille. Le vin ne pourrait être correctement identifié lors d’une transaction commerciale sans citer les mots «MARQUÉS DE BALLESTAR». Le droit conféré par la marque communautaire consiste à l’utiliser de la façon suivante: en apposant la marque sur le conditionnement du produit, en commercialisant le produit arborant la marque, et en utilisant la marque dans le cadre de la publicité (article 9 du RMC). Par voie de conséquence, l’usage qui est fait de la marque est défini comme un usage «pour la publicité, à des fins commerciales ou similaires», au sens de l'article 7, paragraphe 6, de la loi 1/1982. Ces usages étant considérés par ladite loi comme des «intromissions illégitimes», la protection conférée par l’article 9, paragraphe 2, de ladite loi serait recevable. Ledit article autorise l’adoption de mesures visant à «mettre un terme à l’intromission illégitime». Il convient de déclarer la nullité de la marque communautaire en ce que son usage peut être interdit du fait d’un droit au nom en vertu du droit espagnol relatif à la protection du droit à l’honneur, à l’intimité personnelle et familiale et à sa propre image (paragraphes 14 et suivants).
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Droit antérieur Signe contesté Référence de l’affaire
DEF-TEC DEF-TEC R 0871/2007-4
Le droit au nom en vertu du droit allemand
La chambre estime que «ce qui pourrait éventuellement faire l’objet d’une protection en vertu de l’article 12 du Code civil allemand (BGB) est le nom de la demanderesse en nullité, qui est “DEF-TEC Defense Technology GmbH”, mais pas le signe “DEF-TEC”, qui n'est pas le nom de la demanderesse en nullité. [...] l’enregistrement et l’usage éventuel en tant que marque de la désignation “DEF-TEC” sur des pulvérisateurs de poivre ne peuvent enfreindre le droit au nom de la demanderesse en annulation. […] l’article 12 du BGB protège les noms des personnes physiques et, dans la mesure où il n’existe aucune interdiction absolue de porter un nom qui est similaire au nom d’une autre personne, sa protection se limite aux cas dans lesquels le droit au nom d’une autre personne est refusé ou détourné. [… ] et rien d’autre ne prévaut pour l’application étendue de l’article 12 du BGB aux noms des personnes morales. […] La demande en nullité est rejetée sur le fondement des droits antérieurs invoqués» (paragraphes 38 et suivants).
4.3.2 Droit d’auteur
Conformément à l’article 53, paragraphe 2, point c), du RMC, une marque communautaire est déclarée nulle sur demande présentée auprès de l’Office si son usage peut être interdit en vertu d’un autre droit antérieur selon la législation communautaire ou le droit national qui en régit la protection, et notamment d’un droit d’auteur.
En vertu de la règle 37 du REMC, la demande en nullité doit contenir des précisions sur le droit sur lequel est fondée la demande en nullité ainsi que des éléments démontrant que le demandeur est titulaire d’un droit antérieur visé à l’article 53, paragraphe 2, du RMC, ou qu'il est habilité, en vertu de la législation nationale applicable, à faire valoir ce droit.
Si le législateur communautaire a souhaité harmoniser certains aspects de la protection du droit d’auteur (nous renvoyons ici à la directive 2001/29/CE du Parlement européen et du Conseil du 22 mai 2001 sur l’harmonisation de certains aspects du droit d’auteur et des droits voisins dans la société de l’information, JO L 167, du 22 juin 2001, pages 10 à 19), à ce jour, aucune harmonisation complète des législations des États membres sur le droit d’auteur n’a été menée, de même qu'il n'existe pas un droit d'auteur communautaire homogène. Tous les États membres sont cependant liés par la Convention de Berne pour la protection des œuvres littéraires et artistiques ainsi que par l’Accord sur les aspects des droits de propriété intellectuelle qui touchent au commerce («ADPIC»).
Le demandeur en nullité devra mentionner la législation nationale en vigueur nécessaire et présenter une argumentation convaincante concernant la raison pour laquelle il parviendrait, en vertu de ladite législation nationale, à interdire l’usage de la marque contestée. Toute référence simple à la législation nationale ne pourra être considérée comme suffisante: il n’appartient pas à l’Office de développer cet argument pour le compte de la requérante (voir, par analogie, l’arrêt du 05/07/2011, C-263/09, «Elio Fiorucci»).
La notion de protection du droit d’auteur s’applique indépendamment des produits et services couverts par la marque contestée; elle requiert simplement que l’œuvre protégée soit «copiée», sans qu’il soit nécessaire pour autant que la marque contestée considérée dans son ensemble soit «similaire» à l'œuvre protégée.
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Droit antérieur Signe contesté Référence de l’affaire
R 1235/2009-1
Droit d’auteur en vertu du droit italien
La chambre indique que cette cause de nullité est relative et, partant, que seuls les titulaires des droits antérieurs – ou d’autres parties si le droit régissant lesdits droits le permet – sont habilités à l’invoquer [article 56, paragraphe 1, point c), du RMC]. Le droit invoqué en l’espèce est le droit d’auteur. En conséquence, la partie habilitée à agir est le titulaire du droit d’auteur sur le dessin ou modèle de fleur ou toute autre partie autorisée par la loi régissant le droit d’auteur. Le demandeur en nullité admet que la propriété du droit d’auteur sur le dessin ou modèle «appartient à des tierces parties» (en réalité, à une tierce partie: Corel Corporation, la société de graphisme). Le demandeur en nullité n’est pas titulaire du droit sur lequel il cherche à se fonder. Il est uniquement en droit d’utiliser un objet graphique (clipart) présentant la forme d’une fleur à des fins purement privées. La cause a été rejetée (paragraphes 32 et suivants).
Droit antérieur Signe contesté Référence de l’affaire
R 1757/2007-2
Droit d’auteur en vertu du droit français
«[…] le seul fait que la stylisation de la lettre “G” est “simple” n’exclut pas sa protection en vertu de la loi française sur le droit d’auteur. […] En effet, pour qu’une œuvre de l’esprit soit protégée, il suffit qu'elle soit “originale”. [...] S'il est vrai que la marque communautaire contestée ne constitue pas une copie fidèle de l'œuvre antérieure, il convient de ne pas oublier que la reproduction et l’adaptation partielles sans le consentement du titulaire du droit d’auteur sont également interdites. La chambre considère que tel est le cas en l’espèce. La marque communautaire contestée reprend les caractéristiques essentielles de l’œuvre antérieure: la lettre majuscule “G”, représentée seule, avec des traits noirs, épais et droits, selon une forme plane parfaitement rectangulaire. […] la lettre “G” de la marque communautaire contestée est représentée avec un trait noir épais de même largeur et sa partie intérieure est plus avancée que ne l’est celle de l’œuvre antérieure. Toutefois, les différences observées au niveau de ces détails mineurs constituent des modifications minimes n’ayant aucune incidence sur le fait que la marque contestée partage les caractéristiques essentielles de l'œuvre antérieure, à savoir, la lettre majuscule “G”, représentée seule, selon une forme parfaitement rectangulaire et plane et des traits noirs et épais […]. Dans la mesure où la reproduction ou l’adaptation partielle de l’œuvre antérieure a été réalisée sans le consentement de son titulaire, elle est illégale. Par voie de conséquence, il y a lieu d'annuler la décision attaquée et de faire droit […] à la demande en nullité» (paragraphes 33 et suivants).
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Droit antérieur Signe contesté Référence de l’affaire
R 1925/2011-4
Droit d’auteur en vertu du droit allemand
«Conformément à l'article 1 de la loi allemande sur le droit d'auteur, la protection du droit d'auteur est accordée aux “auteurs” d'“œuvres littéraires, scientifiques ou artistiques”. L’article 2 de ladite loi énumère les divers types d’œuvres relevant de la catégorie des œuvres artistiques. Conformément aux articles 16 et suivants, la loi sur le droit d’auteur protège l’auteur. À supposer que l’objet revendiqué constituait une “œuvre” au sens desdites dispositions, le demandeur en annulation n’a pas démontré ni prouvé qui en était l’auteur, ni la manière dont il (en tant que personne morale dont le siège est sis au Japon) a acquis les droits exclusifs auprès de l'auteur» (paragraphes 12 et 13). La chambre a apprécié chacun de ces aspects. Elle décrit en outre les différences existant entre similitude des marques et copie des marques aux fins de la violation du droit d’auteur. Le demandeur en annulation avait confondu ces deux concepts (paragraphes 22 à 24).
4.3.3 Autres droits de propriété industrielle
D’autres droits de propriété industrielle et œuvres antérieures, au niveau national ou communautaire, tels qu’un dessin ou modèle communautaire, peuvent être invoqués.
Le demandeur en nullité devra mentionner la législation nationale en vigueur nécessaire et présenter une argumentation convaincante concernant la raison pour laquelle il parviendrait, en vertu de ladite législation nationale, à interdire l’usage de la marque contestée. Toute référence simple à la législation nationale ne pourra être considérée comme suffisante: il n’appartient pas à l’Office de développer cet argument pour le compte de la requérante (voir, par analogie, l’arrêt du 05/07/2011, C-263/09, «Elio Fiorucci»).
Dans le cas d’un dessin ou modèle communautaire, nul n’est besoin de démontrer qu’une protection est accordée en vertu de la loi. La division d’annulation appliquera les normes propres au dessin ou modèle communautaire.
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Droit antérieur Signe contesté Référence de l’affaire
(dessin ou modèle communautaire antérieur) (forme d’un sachet de thé)
R 2492/2010-2
«L’article 19, paragraphe 1, du règlement du Conseil RDMC prévoit qu’un dessin ou modèle communautaire enregistré confère à son titulaire le droit exclusif de l’utiliser et d’interdire à tout tiers de l’utiliser sans son consentement. L’usage précité doit couvrir, en particulier, la fabrication, l’offre, la mise sur le marché, l’importation, l’exportation ou l’utilisation d’un produit dans lequel le dessin ou modèle est incorporé ou auquel ce dernier est appliqué, ou le stockage d'un produit à ces mêmes fins. Conformément à l’article 10, paragraphe 1, du RDMC, la portée de la protection conférée par le dessin ou modèle communautaire s’étend à tout dessin ou modèle qui ne produit pas sur l’utilisateur averti une impression globale différente. Le dessin ou modèle antérieur et la marque communautaire contestée produisent une impression globale différente. […] On observe en outre que le dessin ou modèle antérieur introduit des différences supplémentaires, telles que la présence d’une base notable qui n’apparaît pas dans la marque communautaire contestée. Par voie de conséquence, la chambre confirme la conclusion de la division d’annulation selon laquelle les droits conférés par le dessin ou modèle communautaire n° 241 427 en application de l’article 19, paragraphe 1, du RDMC, ne peuvent être opposés à la marque communautaire contestée» (paragraphes 59 à 64).
4.4 Non-usage de la marque antérieure
En application de l’article 57, paragraphes 2 et 3, du RMC, lorsque la marque antérieure est enregistrée depuis cinq ans au moins à la date de dépôt de la demande en nullité, le titulaire de la marque communautaire peut demander que le titulaire de la marque antérieure produise la preuve que ladite marque antérieure a fait l'objet d'un usage sérieux dans l’UE en relation avec les biens et services pour lesquels elle est enregistrée ou qu'il existe de justes motifs pour le non-usage.
Conformément à la règle 40, paragraphe 6, lue conjointement avec la règle 22, paragraphe 3, du REMC, les indications et les preuves à produire afin de prouver l’usage comprennent des indications sur le lieu, la durée, l’importance et la nature de l’usage qui a été fait de la marque antérieure pour les produits et services pour lesquels elle est enregistrée et sur lesquels se fonde la demande en nullité.
Les règles de bonne pratique applicables à l’appréciation au fond des preuves de l’usage de droits antérieurs lors des procédures d’opposition s’appliquent également à l’appréciation des preuves de l’usage dans le cadre des procédures de nullité (voir les Directives, Partie C, Opposition, Section 6, La preuve de l'usage, Chapitre 2, Le droit matériel). Plus particulièrement, lorsque le titulaire de la marque communautaire exige la preuve de l’usage des droits antérieurs, l’Office se doit d’apprécier si, et dans quelle mesure, l’usage a été démontré pour les marques antérieures, à la condition que cela soit pertinent aux fins du processus décisionnel.
Enfin, une spécificité doit être prise en considération lors de l’appréciation de la preuve de l’usage dans le contexte des procédures de nullité. Cette spécificité a trait à la période d’usage pertinente. Conformément à l’article 57, paragraphe 2, du RMC, lu conjointement avec l'article 42, paragraphe 2, du même règlement, contrairement aux procédures d’opposition, l’usage doit être établi au cours de deux périodes pertinentes:
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• dans tous les cas, lorsque la marque antérieure était enregistrée depuis plus de cinq ans avant la demande en nullité: la période de cinq ans précédant la date de dépôt de la demande en nullité (première période pertinente);
• en outre, dans les cas où la marque antérieure était enregistrée depuis au moins cinq ans à la date à laquelle la demande de marque contestée a été publiée: la période de cinq ans précédant la date de publication de la demande d’enregistrement de la marque communautaire contestée (deuxième période pertinente).
Ces deux périodes pertinentes ne se recoupent pas nécessairement: elles peuvent se recouper intégralement ou partiellement ou encore être consécutives (avec ou sans interruption).
4.5 Exceptions opposables à une demande en nullité fondée sur des motifs relatifs
4.5.1 Consentement à l’enregistrement
Conformément à l’article 53, paragraphe 3, du RMC, la marque communautaire ne peut pas être déclarée nulle lorsque le titulaire du droit antérieur donne expressément son consentement à l’enregistrement de cette marque avant que la demande en nullité ne soit déposée.
Le consentement ne doit pas être donné avant la date d’enregistrement de la marque communautaire. Il suffit qu’il soit donné avant le dépôt de la demande en nullité. À cet égard, l’Office tient compte, par exemple, du contrat conclu en ce sens entre les parties.
Droit antérieur Signe contesté Référence de l’affaire
SKYROCK R 1736/2010-2
Le titulaire de la marque communautaire a argué qu’en concluant un accord de coexistence, le demandeur en nullité avait effectivement consenti à l'enregistrement de la marque communautaire contestée, en application de l’article 53, paragraphe 3, du RMC. La chambre de recours a procédé à l’examen dudit accord de coexistence et de son interprétation par les juridictions françaises. Elle en a conclu que les tribunaux français interprétaient l’accord de coexistence comme conférant un droit de la part du titulaire de la marque communautaire pour l’enregistrement de marques, différentes de «SKYROCK» et «SKYZIN», comportant le préfixe «SKY». «Du fait de son champ d’application international, ledit accord s’applique aux demandes ou enregistrements de marques communautaires, notamment à celle en cause dans le cas d’espèce» (paragraphe 32).
Les preuves du consentement exprès doivent prendre la forme d’une déclaration (et non d’une conduite). Ladite déclaration doit émaner du demandeur (et non d’un tiers). Le consentement doit être «exprès» (et non implicite ni présumé) (décision du 23/07/2009, R 1099/2008-1, paragraphe 46).
Le simple retrait unilatéral d’une opposition n’implique pas nécessairement que l’opposante consente à l’enregistrement de la marque communautaire demandée (décision du 14/10/2008, R 0946/2007-2 et R 1151/2007-2, «VISION», paragraphe 26). Dans la mesure où l’article 53, paragraphe 3, du RMC exige un consentement exprès, le retrait de l’opposition ne saurait être considéré comme un consentement de
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l’enregistrement (décision du 01/12/2012, R 1883/2011-5, paragraphe 30, objet d’un recours).
4.5.2 Demandes en nullité ou demandes reconventionnelles antérieures
Conformément à l’article 53, paragraphe 4, du RMC, lorsque le titulaire du droit antérieur a déjà demandé la nullité d’une marque communautaire ou a introduit une demande reconventionnelle dans une action en contrefaçon devant un tribunal des marques communautaires sur la base des droits visés à l’article 53, paragraphe 1 ou 2, du RMC, il ne peut pas présenter une nouvelle demande en nullité sur la base d’autres droits visés à l’article 53, paragraphe 1 ou 2, du RMC, qu’il aurait pu invoquer dans la procédure initiale.
Bien que l’article 100 du RMC impose aux tribunaux des marques communautaires l’obligation de communiquer à l’Office la date des demandes reconventionnelles et leurs résultats, dans la pratique, ce n’est pas toujours le cas. Le titulaire d’une marque communautaire qui souhaite se prévaloir de l’exception visée à l’article 53, paragraphe 4, du RMC, doit produire des preuves provenant de la juridiction nationale à l’appui de sa demande.
4.5.3 Forclusion par tolérance
En vertu de l’article 54 du RMC, lorsque le titulaire d’une marque communautaire ou d’une marque nationale antérieure a toléré pendant cinq années consécutives l’usage de ladite marque, tout en ayant eu connaissance de cet usage, la marque communautaire ne peut pas être déclarée nulle, à moins que le dépôt de la marque communautaire postérieure n’ait été effectué de mauvaise foi.
L’article 54 du RMC vise à pénaliser les titulaires de marques antérieures qui ont toléré, pendant une période ininterrompue de cinq ans, l’usage d’une marque communautaire ultérieure alors qu’ils avaient connaissance dudit usage, en leur interdisant de présenter une demande en nullité ou de s’opposer à l’usage de ladite marque qui pourra, en conséquence, coexister avec la marque antérieure (arrêt du 28/06/2012, T-133/09 et T-134/09, «B. Antonio Basile 1952», point 32).
La charge de la preuve impose au titulaire de la marque communautaire litigieuse de démontrer que:
• la marque contestée a été utilisée dans la Communauté (ou dans l'État membre dans lequel la marque antérieure est protégée) pendant au moins cinq années consécutives;
• le demandeur en nullité en avait connaissance ou que l’on pouvait raisonnablement penser qu’il en avait connaissance;
• bien que le demandeur en nullité aurait pu mettre un terme à l’usage, il est néanmoins resté passif. Cela ne s’applique pas lorsque les parties entretenaient une relation de licence ou de distribution, de sorte que l’usage par le titulaire de la marque communautaire concernait des produits qu’il avait légalement obtenus auprès du demandeur en nullité (arrêt du 22/09/2011, C-482/09, «Budweiser», point 44; décision du 20/07/2012, R 2230/2010-4).
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Les trois conditions doivent être satisfaites. Le cas échéant, la limitation associée à la forclusion par tolérance ne s'appliquera qu'aux produits ou services contestés pour lesquels la marque communautaire ultérieure a été utilisée.
Dans le cas d’une forclusion par tolérance, la période de limitation débute à compter du moment où le titulaire de la marque antérieure a connaissance de l’usage de la marque communautaire postérieure. C’est à ce moment qu’il est en droit de ne pas tolérer son usage et, partant, de s'y opposer ou de demander à ce que la marque postérieure soit déclarée nulle (voir l’arrêt du 28/06/2012, T-133/09 et T-134/09, «B. Antonio Basile 1952», point 33).
Un exemple de cas où l’on pourrait raisonnablement penser que le titulaire a connaissance de l’usage de la marque communautaire litigieuse est celui où les deux titulaires ont présenté à la même occasion des produits ou des services sous leurs marques respectives.
L’article 54 du RMC ne s’applique pas lorsque la demande d'enregistrement de la marque communautaire contestée a été déposée de mauvaise foi. Cette exception ne sera considérée que si elle est avancée et démontrée par le demandeur.
4.5.3.1 Exemples de conclusions rejetant l’allégation de forclusion par tolérance
Droit antérieur Signe contesté Référence de l’affaire
BASILE T-133/09 et T-134/09(pourvoi rejeté - C-381/12 P)
Le requérant n’a pas fourni d’indices permettant d’établir le moment à partir duquel l’intervenante a eu connaissance de l’utilisation de la marque contestée après son enregistrement. Il s’est limité à affirmer que la marque contestée avait été utilisée pendant plus de cinq ans en Italie et que l’intervenante aurait dû avoir connaissance de cet usage. Néanmoins, moins de cinq ans se sont écoulés entre la date d’enregistrement de la marque contestée et la date de présentation de la demande en nullité, l’utilisation de ladite marque avant cette date n’étant pas pertinente dans la mesure où cette dernière n’avait pas encore été enregistrée (point 34).
Droit antérieur Signe contesté Référence de l’affaire
DIABLO DIABLO R 1022/2011-1
«En l’espèce, la marque communautaire contestée a été enregistrée le 11 avril 2007, et la demande en nullité a été présentée le 7 juillet 2009. Partant, la marque contestée était enregistrée en tant que marque communautaire depuis moins de cinq ans. L’une des conditions prévues par l’article 54, paragraphe 2, du RMC, n’étant pas remplie, la chambre conclut que c’est à bon droit que la division d’annulation a estimé que le demandeur n’avait pas toléré l’usage de la marque communautaire» (paragraphes 25 et 26).
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Droit antérieur Signe contesté Référence de l’affaire
R 2230/2010-4 (confirmé par T-417/12)
«Les éléments de preuve soumis tardivement par le titulaire de la marque communautaire indiquent qu’en 2005, les produits de la marque “AQUA FLOW” étaient distribués par diverses sociétés en Espagne, notamment par Hydro Sud. La défenderesse prétend que le demandeur en nullité avait connaissance de cet usage. Le titulaire de la marque communautaire a produit trois factures adressées à des sociétés tierces implantées en Espagne : “Hydro Sud”, “Tonocolor SL Hydro Sud” et “H2O Problematica del Agua”. Lesdites factures sont datées du 18 juin 2004, du 31 mai 2005 et du 31 juillet 2006 et leur en-tête inclut une représentation de la marque “AQUA FLOW”. Néanmoins, toutes ces factures sont ultérieures à mai 2004. À supposer que le demandeur en nullité avait connaissance des produits ou des transactions commerciales connexes, cela ne suffirait pas à conclure à l’existence d’une période ininterrompue de cinq ans précédant la demande en nullité au sens de l’article 54, paragraphe 2, du RMC» (paragraphes 21 et 22). L’allégation de forclusion par tolérance du titulaire de la marque communautaire a donc été rejetée.
Droit antérieur Signe contesté Référence de l’affaire
PURELL R 1317/2009-1
«L’article 54, paragraphe 2, du RMC exige que la marque communautaire soit utilisée pendant cinq années consécutives en Allemagne et que les demandeurs en nullité aient toléré cet usage pendant ladite période. En l’espèce, les arguments et les documents soumis par les parties ne permettent pas de conclure que la marque contestée a été utilisée en Allemagne, ni qu’il y a lieu de supposer raisonnablement que les demandeurs en nullité avaient connaissance de cet usage et avaient toléré, pendant cinq années consécutives, ledit usage. […] les seuls éléments qui laisseraient suggérer un certain lien avec l’Allemagne et sur lesquels le titulaire de la marque communautaire se fonde principalement dans le cadre du recours (à savoir, les chiffres relatifs à l'unique distributeur local et les extraits Internet examinés à la lumière des correspondances entre les parties en 2001) se révèlent insuffisants pour conclure que les demandeurs en nullité ont toléré l'usage honnête bien établi et de longue durée de la marque contestée en Allemagne» (paragraphe 47).
4.5.3.2 Exemples de conclusions accueillant (partiellement) l’allégation de forclusion par tolérance
Droit antérieur Signe contesté Référence de l’affaire
CITYBOND CITIBOND
3971 C R 1918/2011-5 (recours rejeté; la
décision de la division d’annulation est définitive)
Les éléments de preuve considérés dans leur ensemble ont permis de montrer que toutes les conditions nécessaires à la forclusion par tolérance étaient réunies pour certains des services contestés. Plus spécifiquement, l’échange de lettres entre les parties a démontré que la demanderesse avait connaissance de l’existence de la marque communautaire «CITIBOND» couvrant certains services. En outre, les extraits et la déclaration solennelle (2003) inclus dans les procédures au Royaume-Uni, ainsi que le reste des informations financières, ont révélé que la demanderesse avait connaissance de l'usage de la marque communautaire «CITIBOND» au Royaume-Uni où, il convient de ne pas l’oublier, le marché financier est tout à fait spécifique et hautement spécialisé.
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Droit antérieur Signe contesté Référence de l’affaire
Ghibli Et al R 1299/2007-2
La demanderesse en nullité a admis qu’elle avait connaissance de l’usage dudit signe en Italie. Aux fins de l'application de l'article 53, paragraphe 2, du RMC, la question juridique était de savoir si la demanderesse en nullité devait également avoir connaissance du statut juridique, en d’autres termes, savoir qu’il avait été utilisé en tant que marque communautaire enregistrée en Italie. De l’avis de la chambre, l’article 53, paragraphe 2, du RMC ne peut être interprété de manière à exiger du titulaire de la marque communautaire qu’il prouve, outre les cinq années consécutives de l’usage, sciemment toléré par le titulaire du droit antérieur, que la demanderesse en nullité avait également connaissance, depuis cinq années au moins, de la protection de la marque ultérieure en tant que marque communautaire. Ce qui importe dans ce contexte est l’existence objective du signe (dont l’usage a été sciemment toléré par la demanderesse en nullité), pendant cinq années au moins, en tant que marque communautaire. À la lumière des éléments de preuve versés au dossier, il a été démontré qu’au moment de la présentation de la demande en nullité, la demanderesse en nullité avait connaissance et tolérait l'usage de la marque communautaire contestée en Italie depuis plus de cinq ans, indépendamment du fait qu'elle avait connaissance ou non de son enregistrement (paragraphes 35 et suivants).
5 Autorité de la chose jugée
Conformément à l’article 56, paragraphe 3, du RMC, outre les exceptions spécifiques opposables par le titulaire d’une marque communautaire contre une demande en nullité ou en déchéance (voir les sections qui précèdent), une demande en déchéance ou en nullité est irrecevable si une demande ayant le même objet et la même cause et impliquant les mêmes parties a été tranchée par une juridiction d’un État membre et qu’une décision définitive a été adoptée. C'est ce qu'on appelle la règle de la «triple identité».
Bien que l'article 56, paragraphe 3, du RMC, ne se réfère qu'aux décisions définitives des tribunaux nationaux, par analogie et en tenant compte de l’article 83 et de l’article 100, paragraphe 2, du RMC, il en va de même dans les cas où il existe une décision définitive de l'Office ou de la Cour de justice de l'Union européenne sur une autre demande en annulation ayant le même objet et la même cause et impliquant les mêmes parties (décision de la division d'annulation du 30/09/2009 dans l'affaire 3458 C, paragraphe 10).
L'exception de chose jugée s'applique uniquement lorsqu’une décision définitive a déjà été rendue sur le fond dans le cadre d’une demande reconventionnelle ou en annulation. L'irrecevabilité ne s'applique pas, par exemple, lorsqu’une demande en annulation est retirée avant que la décision rendue sur cette demande ne soit devenue définitive (décision du 12/05/2014, R 1616/2013-4, paragraphe 13) ou lorsque la décision définitive déjà rendue a déclaré la demande irrecevable (car la marque communautaire contestée n'était pas encore enregistrée par exemple) et qu'elle n'a pas statué sur le fond.
i) Même objet L'autorité de la chose jugée ne s'applique pas à une demande en déchéance pour laquelle la décision définitive précédente renvoie à une autre demande en déchéance présentée à une date différente, car les dates auxquelles les circonstances ayant mené à la déchéance doivent être établies (absence d'usage, marque communautaire devenant une désignation usuelle ou faisant l’objet d’un usage trompeur) sont différentes et l'objet ne peut donc pas être
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considéré comme étant le même (décision de la division d'annulation du 31/01/2014 dans l'affaire 7333 C).
ii) Même cause À titre d’exception, une décision antérieure de l’Office dans des procédures d’opposition impliquant les mêmes parties et portant sur la même marque ne saurait exclure la présentation d’une demande en nullité successive fondée sur les mêmes droits antérieurs (arrêt du 14/10/2009, T-140/08, «TiMiKinderjoghurt», point 36, rejet du recours devant le Tribunal, et arrêt du 23/09/2014, T-11/13, «Mego», point 12), étant donné que la cause est différente. Cependant, il est peu probable que les procédures en nullité ou en déchéance aboutissent à une conclusion différente, sauf si une ou plusieurs des conditions ci-après sont satisfaites:
• de nouveaux faits sont établis (par exemple, preuve de l’usage ou de la renommée de la marque antérieure, non disponible durant la procédure d’opposition);
• la manière dont les appréciations juridiques fondamentales sont réalisées a changé (par exemple, en ce qui concerne les critères d’évaluation du risque de confusion), à la suite, par exemple, de décisions intermédiaires de la Cour de justice de l'Union européenne.
iii) Mêmes parties La règle de la triple identité requise par l'autorité de la chose jugée signifie également que les parties des deux procédures (celle en question et celle qui a conduit à la décision définitive précédente) doivent être les mêmes.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 1
MODIFICATIONS D’UN ENREGISTREMENT
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Table des matières
1 Renonciation.............................................................................................. 4 1.1 Principes généraux .................................................................................... 4 1.2 Effet juridique ............................................................................................. 4 1.3 Conditions de forme................................................................................... 5
1.3.1 Forme ............................................................................................................. 5 1.3.2 Langue............................................................................................................ 5 1.3.3 Taxes .............................................................................................................. 5 1.3.4 Renseignements nécessaires ........................................................................ 5 1.3.5 Renonciation partielle ..................................................................................... 6 1.3.6 Signature ........................................................................................................ 6 1.3.7 Représentation, pouvoir ................................................................................. 6 1.3.8 Conditions lorsqu’une licence ou un autre droit sur la marque
communautaire a été enregistré(e) ................................................................ 7
1.4 Examen .......................................................................................................8 1.4.1 Compétence ................................................................................................... 8 1.4.2 Enregistrement ou refus ................................................................................. 8
2 Modification d’une marque ....................................................................... 9 2.1 Principes généraux .................................................................................... 9 2.2 Conditions de forme................................................................................... 9
2.2.1 Forme et langue ............................................................................................. 9 2.2.2 Taxes .............................................................................................................. 9 2.2.3 Renseignements obligatoires ....................................................................... 10
2.3 Conditions de fond de la modification.................................................... 10 2.3.1 Exemples de modifications acceptables ...................................................... 11 2.3.2 Exemples de modifications inacceptables.................................................... 11
2.4 Publication................................................................................................ 13
3 Changements de nom ou d’adresse ...................................................... 13
4 Modifications des règlements relatifs aux marques collectives ......... 14 4.1 Inscription au registre des règlements modifiés.................................... 14
5 Division..................................................................................................... 15 5.1 Dispositions générales ............................................................................ 15 5.2 Conditions de forme................................................................................. 16
5.2.1 Forme et langue ........................................................................................... 16 5.2.2 Taxes ............................................................................................................ 16 5.2.3 Renseignements obligatoires ....................................................................... 16
5.3 Enregistrement ......................................................................................... 18 5.4 Nouveau dossier, publication.................................................................. 18
6 Revendication de l’ancienneté après l’enregistrement ........................ 19
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6.1 Principes généraux .................................................................................. 19 6.2 Effet juridique ........................................................................................... 19 6.3 Conditions de forme................................................................................. 20
6.3.1 Forme ........................................................................................................... 20 6.3.2 Langue.......................................................................................................... 20 6.3.3 Taxes ............................................................................................................ 20 6.3.4 Renseignements obligatoires ....................................................................... 20
6.4 Examen ..................................................................................................... 21 6.4.1 Examen sur le fond....................................................................................... 21 6.4.2 Triple identité ................................................................................................ 22 6.4.3 Harmonisation des informations relatives à l’ancienneté ............................. 23
6.5 Enregistrement et publication ................................................................. 24 6.6 Annulation des revendications de l’ancienneté ..................................... 24
7 Remplacement d’un enregistrement de marque communautaire par un enregistrement international............................................................. 25
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1 Renonciation
Article 50 du RMC Règle 36 du REMC
1.1 Principes généraux
Lorsqu’une marque communautaire est enregistrée, elle peut, à tout moment, faire l’objet d’une renonciation par son titulaire à l’égard de tout ou une partie des produits et services visés. La renonciation doit être déclarée à l’Office par écrit. (Pour tout renseignement sur le retrait des demandes de marque communautaire, à savoir avant l’enregistrement, voir les directives, partie B, Examen, section 1, Procédures, paragraphe 5.1.)
1.2 Effet juridique
Article 50, paragraphe 2, du RMC Règle 36 du REMC
Les renonciations ne produisent leurs effets juridiques qu’à partir de la date d’inscription au registre des marques communautaires (le «registre»). La procédure d’enregistrement de la renonciation peut être suspendue en cas de procédure en cours (voir le paragraphe 1.4.1 ci-dessous).
Il y a extinction ex nunc des droits sur la marque communautaire enregistrée que détient le titulaire, ainsi que de ceux de ses licenciés et de tout autre titulaire de droits sur la marque, à compter de la date d’inscription de la renonciation au registre. La renonciation n’a donc pas d’effet rétroactif.
La renonciation a des effets sur les plans procédural et substantiel.
Sur le plan procédural, dès l’inscription de la renonciation au registre, la marque communautaire cesse d’exister et toute procédure relative à la marque qui est pendante devant l’Office prend fin.
Sur le plan substantiel, les effets de la renonciation à l’égard des tiers comprennent la renonciation, de la part du titulaire de la marque communautaire, à invoquer à l’avenir tout droit fondé sur sa marque.
Le déclarant est lié par la déclaration de renonciation pendant sa procédure d’inscription de la renonciation au registre pour autant que les conditions suivantes soient réunies.
a) L’Office ne reçoit pas de révocation de la déclaration le jour même de la réception de la déclaration de renonciation. Autrement dit, toute déclaration de renonciation et toute lettre de révocation de cette déclaration reçues le même jour par l’Office (quelle que soit l’heure de leur réception) s’annulent mutuellement. Une déclaration devenue effective ne peut être révoquée.
b) La déclaration remplit toutes les conditions de forme, notamment celles visées au paragraphe 1.3.8 ci-dessous.
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1.3 Conditions de forme
1.3.1 Forme
Règles 79, 79 bis, 80 et 82 du REMC Décision nº EX-11-03 du Président de l’Office
Le titulaire doit déclarer la renonciation à l’Office par écrit. Les règles générales concernant les communications avec l’Office sont applicables (voir les directives, partie A, Dispositions générales, section 1, Moyens de communication, Délais).
La déclaration de renonciation n’est pas valable lorsqu’elle contient des conditions ou des limites dans le temps. Ainsi, par exemple, une déclaration de renonciation ne peut se faire à la condition que l’Office adopte une décision particulière ou, dans le cas d’une procédure inter partes, à la condition que la partie adverse fasse une déclaration procédurale. Par exemple, dans le cadre d’une procédure en déchéance ou nullité, il n’est pas possible de renoncer (en partie) à la marque à la condition que le requérant retire sa demande en déchéance ou nullité. Toutefois, cela n’exclut pas la possibilité d’un accord entre les parties ou que les deux parties demandent des procédures successives (par exemple, la renonciation à la marque et le retrait de la demande en déchéance ou nullité) dans la même lettre à l’Office.
1.3.2 Langue
Règle 95, point b), du REMC Article 119, paragraphe 2, du RMC
La déclaration de renonciation doit être déposée dans l’une des cinq langues de l’Office.
1.3.3 Taxes
La déclaration de renonciation n’est pas subordonnée au paiement d’une taxe.
1.3.4 Renseignements nécessaires
Règle 36, paragraphe 1, du REMC
La déclaration de renonciation doit contenir les renseignements visés à la règle 36, paragraphe 1, du REMC, à savoir:
le numéro d’enregistrement de la marque communautaire;
les nom et adresse du titulaire de la marque communautaire ou simplement le numéro d’identification attribué par l’OHMI au titulaire;
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si la renonciation ne porte que sur une partie des produits et services pour lesquels la marque est enregistrée, la liste des produits et services concernés par la renonciation et/ou une indication de la liste des produits et services pour lesquels la marque enregistrée est maintenue (voir ci-dessous au paragraphe 1.3.5 Renonciation partielle).
1.3.5 Renonciation partielle
Une marque communautaire peut faire l’objet d’une renonciation partielle, à savoir, une renonciation portant sur une partie des produits et services pour lesquels elle est enregistrée. Une renonciation partielle ne produit des effets qu’à compter de la date de son inscription au registre.
Pour qu’une renonciation partielle soit acceptée, les deux conditions suivantes ayant trait aux produits et services doivent être remplies:
a) le nouveau libellé ne peut constituer une extension de la liste des produits et des services;
b) la renonciation partielle doit constituer une description valable des produits et des services.
Pour plus de détails sur les limitations acceptables, voir les directives, partie B, Examen, section 3, Classification.
1.3.6 Signature
Sauf dans les cas où la règle 79 du REMC en dispose autrement, la déclaration de renonciation doit être signée par le titulaire de la marque communautaire ou par son représentant dûment désigné (voir le paragraphe 1.3.7 ci-dessous). Si la déclaration est présentée par voie électronique, l’indication du nom de l’émetteur est réputée équivalente à une signature.
Si une déclaration ne portant pas de signature lui est envoyée, l’Office invitera la partie en question à remédier, dans un délai de deux mois, à cette irrégularité. S’il n’est pas remédié à l’irrégularité dans le délai imparti, la renonciation sera refusée.
1.3.7 Représentation, pouvoir
Quant à la représentation du titulaire de la marque communautaire qui déclare sa volonté de renoncer, les règles ordinaires sont applicables (voir les directives, partie A, Dispositions générales, section 5, Représentation professionnelle).
Ne sont pas applicables aux termes du REMC, les règles de procédure qui, néanmoins, s’appliquent dans certains États membres, aux termes desquelles un pouvoir n’habilite pas à déclarer la renonciation à une marque, sauf disposition contraire.
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1.3.8 Conditions lorsqu’une licence ou un autre droit sur la marque communautaire a été enregistré(e)
Si des tiers détiennent des droits enregistrés sur la marque communautaire (tels que des licenciés, créanciers et autres), la renonciation ne sera pas inscrite au registre tant que certaines conditions complémentaires n’auront pas été remplies.
Les conditions complémentaires suivantes sont applicables lorsqu’une licence ou un autre droit sur la marque communautaire est inscrit au registre.
a) Le titulaire de la marque communautaire est tenu de fournir des preuves suffisantes qu’il a informé le licencié, le créancier ou autre de son intention de renoncer.
Si le titulaire de la marque présente à l'Office des preuves du consentement à la renonciation du licencié, du créancier ou autre, la renonciation est enregistrée à la réception de la preuve.
Si le titulaire de la marque communautaire présente simplement à l’Office des éléments attestant qu’il a informé le licencié/créancier de son intention de renoncer, l’Office communique au titulaire que la renonciation sera enregistrée trois mois après la date de réception de la preuve (règle 36, paragraphe 2, du REMC).
L’Office considère une copie de la lettre adressée par le titulaire de la marque au licencié/créancier comme une preuve suffisante, pour autant que la probabilité d’expédition de la lettre et de sa réception par le licencié/créancier soit raisonnablement établie. Il en est de même pour une déclaration écrite et signée par laquelle le licencié/créancier déclare avoir été informé de l'intention du titulaire de renoncer. Il n’est pas nécessaire que le titulaire de la marque présente une déclaration faite sous serment. Le terme «justifie» repris à l’article 50, paragraphe 3, de la version française du RMC n’implique pas l’apport d’une preuve complète, mais uniquement d’un élément probant plausible comme le laissent entendre les autres versions linguistiques du règlement (version anglaise de l’article 50, paragraphe 3: «prove»; version italienne: «dimostra»; version allemande «glaubhaft macht»). Les documents peuvent être rédigés dans une des vingt-trois langues officielles de l’Union européenne; l’Office peut toutefois réclamer une traduction dans la langue choisie pour la déclaration de renonciation ou, au choix du déclarant, dans l’une des cinq langues de l’Office.
Si la preuve fait défaut ou est insuffisante, l’Office peut en exiger la réception dans un délai de deux mois.
b) Lorsqu’une mesure d’exécution forcée a été inscrite au registre, la déclaration de renonciation doit être accompagnée d’une déclaration de consentement à la renonciation signée de la main de l’autorité compétente pour l’exécution forcée (voir les directives, partie E, Opérations dans le registre, section 3, La marque communautaire comme objet de propriété, chapitre 4, Exécution forcée).
c) Lorsqu’une procédure d’insolvabilité ou similaire a été inscrite au registre, le liquidateur doit demander la déclaration de renonciation (voir les directives, partie E, Opérations dans le registre, section 3, La marque communautaire comme objet de propriété, chapitre 5, Insolvabilité).
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1.4 Examen
1.4.1 Compétence
L’Office est compétent pour effectuer l’examen de la déclaration de renonciation.
Lorsqu’une déclaration de renonciation (ou une déclaration de renonciation partielle couvrant les produits et/ou services qui font objet de la demande en annulation) est présentée alors qu’une procédure en déchéance ou en nullité, remettant en cause la validité de la marque communautaire à laquelle il est renoncé, est en cours, le département concerné (par exemple la division d’annulation) est informé et l’Office suspend l’inscription au registre de la renonciation. La division d’annulation invitera le requérant à indiquer s’il souhaite que la procédure soit poursuivie, auquel cas la procédure de déclaration de déchéance ou de nullité se poursuit jusqu’à ce qu’il y ait une décision définitive au fond. Une fois la décision quant à la déchéance ou quant à la nullité devenue définitive, la renonciation est inscrite au registre uniquement pour les produits et/ou services pour lesquels ni la déchéance ni la nullité, le cas échéant, de la marque communautaire contestée n’a été déclarée (voir l’arrêt du 24/03/2011, «TiMiKinderjoghurt», C-552/09 P, point 39, la décision du 22/10/2010, «MAGENTA», R 0463/2009-4, paragraphes 25 à 27 et la décision du 07/08/2013, «SHAKEY’S», R 2264/2012-2). (Voir les directives, partie D, Annulation, section 1, Procédures de déclaration de déchéance ou de nullité, paragraphe 7.3).
Lorsque la marque communautaire fait l’objet d’une procédure pendante devant les chambres de recours, la chambre compétente statuera sur la renonciation.
Lorsque la marque communautaire fait l’objet d’une procédure pendante devant le Tribunal ou devant la Cour de justice (CJUE), la renonciation doit être déposée auprès de l’Office (et non pas devant le Tribunal ou la CJUE). L’Office fera alors savoir au Tribunal ou à la CJUE s’il trouve la renonciation acceptable et valable ou non. Toutefois, la procédure de renonciation sera suspendue jusqu’à ce que le Tribunal ou la CJUE rende une décision définitive sur ce point (par analogie, voir l’arrêt du 16/05/2013, «VORTEX», T-104/12).
1.4.2 Enregistrement ou refus
En cas d’irrégularité, l’Office accorde au déclarant un délai de deux mois pour y remédier.
S’il n’est pas remédié, dans le délai imparti, aux irrégularités communiquées par l’Office au déclarant, celui-ci refuse intégralement l’inscription de la renonciation au registre.
Si l'Office procède à l'inscription de la renonciation au registre, il en informe le titulaire de la marque communautaire ainsi que tous les titulaires de droits enregistrés pour cette marque.
Lors de la notification de l’inscription au registre d’une renonciation partielle, une copie de la nouvelle liste de produits et services doit être fournie dans la lettre de confirmation dans la langue de la procédure.
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2 Modification d’une marque
2.1 Principes généraux
Article 48 du RMC Règle 25 du REMC
Cette section des présentes directives et les dispositions ci-dessus concernent exclusivement les modifications de la marque communautaire demandées par le titulaire de sa propre initiative.
Il convient de distinguer la modification d’une demande de marque communautaire de celle d’une marque enregistrée. La modification d’une demande de marque communautaire est régie par l’article 43 du RMC et les règles 13 et 26 du REMC. La modification d’une marque enregistrée est régie par l’article 48 du RMC et les règles 25 et 26 du REMC (pour plus de détails sur les modifications d’une demande de marque communautaire, voir les directives, partie B, Examen, section 2, Examen des formalités).
Cette section ne s’applique pas aux rectifications des erreurs manifestes de l’Office figurant dans ses publications ou dans le registre des marques communautaires; ces erreurs sont rectifiées d’office, ou à la demande du titulaire, conformément aux règles 14 et 27 du REMC (pour plus de détails, voir les directives, partie A, Dispositions générales, section 6, Révocation des décisions et radiation des inscriptions au registre et correction des erreurs).
Les règlements prévoient la possibilité de demander une modification de la représentation de la marque (modification de la marque) à condition que cette modification ait trait au nom et à l’adresse du titulaire et n’affecte pas substantiellement l’identité de la marque telle qu’elle a été enregistrée à l’origine.
Les règlements ne prévoient pas la possibilité de modifier d’autres éléments de l’enregistrement de la marque communautaire.
2.2 Conditions de forme
2.2.1 Forme et langue
Article 48, paragraphe 2, du RMC
La requête en modification de la marque, à savoir de la représentation de la marque, doit être présentée par écrit dans l’une des cinq langues de l’Office.
2.2.2 Taxes
Article 2, paragraphe 25, du RTMC
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La requête est subordonnée au paiement d’une taxe de 200 euros; elle n'est réputée déposée qu'une fois la taxe acquittée (voir les directives, partie A, Dispositions générales, section 3, Paiement des taxes et des frais).
2.2.3 Renseignements obligatoires
Règle 25, paragraphe 1, du REMC
La requête en modification doit comporter les renseignements suivants:
le numéro d’enregistrement de la marque communautaire
les nom et adresse du titulaire de la marque communautaire, conformément à la règle 1, paragraphe 1, point b), du REMC; si le titulaire s’est déjà vu attribuer par l’OHMI un numéro d’identification, il suffit d’indiquer ce dernier ainsi que le nom du titulaire
l’indication de l’élément de la représentation de la marque qui doit être modifié et cet élément dans sa version modifiée
une représentation de la marque modifiée qui soit conforme aux conditions de forme visées dans la règle 3 du REMC.
Une requête unique peut être présentée pour la modification de plusieurs enregistrements de marques communautaires, pour autant que le titulaire de la marque communautaire et l’élément à modifier soient identiques dans chaque cas. Toutefois, la taxe doit être acquittée pour chaque enregistrement à modifier.
2.3 Conditions de fond de la modification
L’article 48, paragraphe 2, du RMC ne prévoit la modification de la représentation de la marque que dans des conditions extrêmement limitées, c’est-à-dire uniquement lorsque:
la marque communautaire comporte le nom et l’adresse du titulaire de la marque communautaire, et si
ces éléments sont ceux pour lesquels la modification est demandée, et si
la modification n’affecte pas substantiellement l’identité de la marque telle qu’elle a été enregistrée à l’origine.
L'Office applique des critères restrictifs dans ce cadre. Une modification ne peut être acceptée lorsque le nom ou l’adresse du titulaire fait partie intégrante des éléments distinctifs de la marque, par exemple lorsqu’ils font partie d’une marque verbale, étant donné que l’identité de la marque en serait substantiellement affectée. La seule exception concerne les abréviations usuelles qui se rapportent à la forme juridique de l'entreprise. Une modification de la marque ne semble être possible que si le nom ou l’adresse du titulaire de la marque communautaire apparaît sur une marque figurative, par exemple, sur l’étiquette d’une bouteille, en tant qu’élément secondaire en minuscules. Ces éléments ne seraient normalement pas pris en compte pour apprécier
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l’étendue de la protection ou le respect de la condition d’usage. Or, la raison d’être de l’article 48 du RMC réside justement dans l'exclusion de toute modification de la marque communautaire enregistrée qui pourrait altérer l’étendue de sa protection ou l'appréciation tenant au respect de la condition d’usage, afin de ne pas porter atteinte aux droits des tiers.
Aucun autre élément de la marque ne peut être modifié, même s’il s’agit d’un élément secondaire en lettres minuscules et de nature descriptive, comme l’indication de la teneur en alcool sur l’étiquette d’une bouteille de vin.
En outre, l’article 48, paragraphe 2, du RMC ne permet pas la modification de la liste des produits et services (voir la décision du 09/07/2008, R 0585/2008 2 «SAGA», paragraphe 16). Après l’enregistrement, la seule façon de changer la liste des produits et services est à travers une renonciation partielle de la marque au sens de l’article 50 du RMC (voir le paragraphe 1.3.5 ci-dessus).
2.3.1 Exemples de modifications acceptables
MARQUE ENREGISTRÉE MODIFICATION PROPOSÉE
Marque communautaire 7 389 687
Marque communautaire 4 988 556
2.3.2 Exemples de modifications inacceptables
MARQUE ENREGISTRÉE MODIFICATION PROPOSÉE
Marque communautaire 11 058 823
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY’
ROTAM – INNOVATION IN POST PATENT TECHNOLOGY
Marque communautaire 9 755 307
MINADI MINADI Occhiali MINADI
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MARQUE ENREGISTRÉE MODIFICATION PROPOSÉE
Marque communautaire 10 009 595
CHATEAU DE LA TOUR SAINT-ANNE CHATEAU DE LA TOUR SAINTE-ANNE
Marque communautaire 9 436 072
SLITONE ULTRA SLITONEULTRA
Marque communautaire 2 701 845
Marque communautaire 3 115 532
Marque communautaire 7 087 943
Marque communautaire 8 588 329
Dans tous les cas ci-dessus, la modification proposée a été refusée dans la mesure où elle affectait substantiellement l’identité de la marque communautaire telle qu’elle avait été enregistrée à l’origine (article 48, paragraphe 2, du RMC). L’article 48, paragraphe 2, du RMC ne permet la modification du nom et de l’adresse du titulaire figurant dans la marque enregistrée que dans la mesure où cette modification n’affecte pas substantiellement l’identité de la marque.
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2.4 Publication
Lorsque la modification de la représentation de la marque enregistrée est recevable, la modification est enregistrée et publiée dans la partie C.3.4 du Bulletin; la publication contient une représentation de la marque communautaire modifiée.
Les tiers dont les droits peuvent être affectés par la modification peuvent contester l'enregistrement de celle-ci dans un délai de trois mois à compter de la publication. Les dispositions de la procédure d’opposition s’appliquent mutatis mutandis.
3 Changements de nom ou d’adresse
Règles 26 et 84 du REMC
Il est possible de modifier le nom, l’adresse ou la nationalité du titulaire d’une marque communautaire enregistrée ou de son représentant. La demande d’inscription du changement doit être déposée dans l’une des cinq langues de l’Office. La modification sera inscrite au registre et publiée.
Conformément à la règle 26 du REMC, le nom, y compris l’indication de la forme juridique, et l’adresse du demandeur ou de son représentant peuvent être modifiés librement pour autant que:
s’agissant du nom du demandeur, la modification ne résulte pas d’un transfert
s’agissant du nom du représentant, il n’y ait pas de substitution d’un représentant par un autre.
Conformément à la règle 84, paragraphe 3, du REMC, l’indication de la nationalité ou de l’État sur le territoire duquel une personne morale a son siège ou un établissement peut également être modifiée ou ajoutée pour autant que cette modification ne résulte pas d’un transfert.
Une modification du nom du titulaire au sens de la règle 26, paragraphe 1, du REMC est un changement qui n’affecte pas l’identité du demandeur, tandis qu’un transfert implique un changement d’un titulaire à un autre. Pour plus d’informations sur la procédure applicable dans les cas où demeure une incertitude sur la question de savoir si une modification relève de l’article 17 du RMC, voir les directives, partie E, Opérations dans le registre, section 3, La marque communautaire comme objet de propriété, chapitre 1, Transfert.
De même, la modification du nom d’un représentant au sens de la règle 26, paragraphe 6, du REMC constitue un changement qui n’affecte pas l’identité du représentant désigné; tel est le cas, par exemple, d’une modification du nom du représentant à la suite d’un mariage. La règle 26, paragraphe 6, du REMC s’applique également en cas de modification de la dénomination d’un groupement de représentants. Il convient de distinguer une telle modification de nom de la substitution d’un représentant par un autre, cette dernière étant soumise aux règles qui régissent la désignation des représentants. Pour plus d’informations à ce sujet, voir les directives, partie A, Dispositions générales, section 5, Représentation professionnelle.
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La modification du nom ou de l’adresse au titre de la règle 26 du REMC, ou la modification de la nationalité, peut être le résultat d’un changement de circonstances ou d’une erreur commise lors du dépôt.
La modification du nom ou de l’adresse peut se faire sur requête présentée auprès de l’Office par le titulaire ou son représentant. Celle-ci doit comporter les renseignements suivants: le numéro de la marque communautaire ainsi que le nom et l’adresse du titulaire (conformément à la règle 1, paragraphe 1, point b), du REMC), ou de son représentant (conformément à la règle 1, paragraphe 1, point e), du REMC), tels qu’ils sont enregistrés dans le dossier et tels qu’ils doivent être modifiés.
Il n’est normalement pas nécessaire d’apporter la preuve de la modification. Toutefois, en cas de doute, l’examinateur pourra demander qu’une preuve, telle qu’un extrait d’un registre du commerce, soit présentée. La requête en modification du nom ou de l’adresse n’est pas subordonnée au paiement d’une taxe.
Les personnes morales ne peuvent disposer que d’une seule adresse officielle. S’il a des doutes, l’examinateur peut demander une preuve de la forme juridique ou, en particulier, de l’adresse. Le nom et l’adresse officiels servent également par défaut de domicile élu. Un titulaire ne devrait, idéalement, disposer que d’un seul domicile élu. Toute modification de la dénomination officielle du titulaire ou de son adresse officielle sera enregistrée pour toutes les marques communautaires et pour tous les dessins ou modèles communautaires enregistrés qui sont au nom de ce titulaire. Une modification de la dénomination ou de l’adresse officielle ne saurait être enregistrée que pour certains portefeuilles de droits, contrairement à ce qui est le cas pour le domicile élu. Ces règles s’appliquent par analogie aux représentants.
4 Modifications des règlements relatifs aux marques collectives
Article 71 du RMC
Selon l’article 71 du RMC, les titulaires de marques communautaires collectives doivent soumettre à l’Office tout règlement d’usage modifié.
La requête en inscription au registre d’une modification des règlements d’usage d’une marque collective doit être présentée par écrit dans l’une des cinq langues de l’Office.
4.1 Inscription au registre des règlements modifiés
Article 67, paragraphe 2, articles 68 et 69 du RMC, article 71, paragraphes 3 et 4, du RMC et règle 84, paragraphe 3, point e), du REMC
La modification ne sera pas inscrite au registre si les règlements modifiés ne satisfont pas aux prescriptions de l’article 67, paragraphe 2, du RMC ou comportent un motif de rejet visé à l’article 68 du RMC.
Si l’inscription au registre de la modification des règlements est acceptée, la modification sera inscrite au registre et publiée.
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Le requérant de l’enregistrement précisera la partie des règlements modifiés qui doit être inscrite au registre, laquelle pourra concerner:
le nom et l’adresse administrative du requérant; l’objet de l’association ou l’objet aux fins duquel la personne morale de droit
public a été constituée; les organismes habilités à représenter l’association ou la personne morale; les conditions d’adhésion; les personnes autorisées à utiliser la marque; le cas échéant, les conditions d’utilisation de la marque, y compris les sanctions
prévues; si la marque désigne la provenance géographique des produits ou services,
l’autorisation permettant à toute personne dont les produits ou services proviennent de la zone géographique concernée d’adhérer à l’association.
Les tiers dont les droits peuvent être affectés par la modification peuvent contester l'enregistrement de celle-ci dans un délai de trois mois à compter de la publication des règlements modifiés. Concernant cette procédure, les dispositions sur les observations des tiers s’appliquent mutatis mutandis.
5 Division
5.1 Dispositions générales
Article 49 du RMC Règle 25 bis du REMC
Un enregistrement peut être divisé en plusieurs parties non seulement à la suite d’un transfert partiel (voir les directives, partie E, Opérations dans le registre, section 3, La marque communautaire comme objet de propriété, chapitre 1, Transfert), mais aussi de la propre initiative du titulaire de la marque communautaire. La division d’une marque est particulièrement utile pour isoler certains produits et services d’une marque faisant l’objet d’une opposition tout en maintenant l’enregistrement en vigueur pour les autres produits et services. Pour plus de détails sur la division des demandes de marque communautaire, voir les directives, partie B, Examen, section 1, Procédures.
Alors que le transfert partiel est effectué à titre gracieux et nécessite un changement de titulaire de la marque, la déclaration de division d’une marque est subordonnée au paiement d’une taxe de 250 euros, la marque restant aux mains du même titulaire. À défaut du paiement, la déclaration de division est réputée ne pas avoir été effectuée. La déclaration de division doit être effectuée dans l’une des cinq langues de l’Office.
La déclaration de division n’est pas recevable dans le cas d’enregistrements internationaux désignant l’Union européenne au titre du protocole de Madrid; en effet, le registre qui concerne ces enregistrements est tenu exclusivement par l’OMPI. L’OHMI n’a pas le pouvoir de diviser un enregistrement international.
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5.2 Conditions de forme
5.2.1 Forme et langue
La déclaration de division de la marque communautaire doit être effectuée par écrit dans l’une des cinq langues de l’Office.
5.2.2 Taxes
Article 2, paragraphe 22, du RTMC
La déclaration de division est subordonnée au paiement d’une taxe de 250 euros et est réputée ne pas avoir été déposée tant que cette taxe n’a pas été payée (voir les directives, partie A, Dispositions générales, section 3, Paiement des taxes et des frais).
5.2.3 Renseignements obligatoires
Règle 25 bis du REMC
La déclaration de division doit comporter les renseignements suivants:
le numéro de dossier attribué à la demande à diviser;
le nom et l’adresse du titulaire; si le titulaire s’est déjà vu attribuer par l’OHMI un numéro d’identification, il suffit d’indiquer ce dernier ainsi que le nom du titulaire;
la liste des produits et des services visés par la demande divisionnaire ou, lorsque plus d’une nouvelle demande divisionnaire est demandée, la liste des produits et des services visés par chaque demande divisionnaire;
la liste des produits et des services demeurant dans la marque communautaire originale.
Les produits ou services doivent être répartis entre la marque communautaire originale et la nouvelle marque communautaire de telle sorte que les produits ou services de la première ne recouvrent pas les produits ou services de la seconde. Prises conjointement, les deux spécifications ne doivent pas dépasser la portée de la spécification originale.
Ce faisant, les renseignements doivent être clairs, précis et sans équivoque. Par exemple, s’agissant d’une marque communautaire visant des produits ou services couvrant plusieurs classes, pour laquelle la «répartition» entre l’ancien enregistrement et le nouvel enregistrement porte sur des classes entières, il suffit d’indiquer les classes respectives correspondant au nouvel enregistrement ou celles correspondant à l’ancien enregistrement.
Lorsque la déclaration de division désigne des produits et services qui sont explicitement mentionnés dans la liste originale des produits et services, l’Office retiendra automatiquement pour la marque communautaire originale les produits et
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services qui ne sont pas mentionnés dans la déclaration de division. Par exemple, si la liste originale contient les produits A, B, et C et si la déclaration de division vise les produits C, l’Office maintiendra les produits A et B dans l’enregistrement original et créera un nouvel enregistrement couvrant les produits C.
Pour évaluer s’il y a limitation ou élargissement de la portée de la liste, les règles généralement applicables dans de telles situations s’appliquent (voir les directives, partie B, Examen, section 3, Classification).
Dans tous les cas de figure, il est vivement conseillé de déposer une liste claire et précise des produits et services qui seront divisés, ainsi qu’une liste claire et précise des produits et services qui continueront de faire partie de l’enregistrement original. Par ailleurs, la liste originale devra être clarifiée. Par exemple, si la liste originale concernait les boissons alcooliques et que la division concerne le whisky et le gin, la liste originale doit être modifiée et limitée aux boissons alcooliques, à l’exception du whisky et du gin.
L’Office notifie le titulaire de toute irrégularité à cet égard et lui accorde un délai de deux mois pour y remédier. S'il n'est pas remédié à l'irrégularité, la déclaration de division est rejetée (Règle 25 bis, paragraphe 2, du REMC).
Il existe également des périodes au cours desquelles une déclaration de division n’est pas recevable pour des raisons d’économie procédurale ou de sauvegarde des droits de tiers. Ces périodes, qui sont prescrites par l’article 49, paragraphe 2, du RMC et par la règle 25 bis, paragraphe 3, du REMC, sont les suivantes:
Dès lors qu’une procédure de déchéance ou de nullité est en cours devant l’Office, seuls les produits et les services non visés par la demande en déchéance ou en nullité peuvent être divisés de la marque communautaire originale. L’Office interprète l’article 49, paragraphe 2, point a), du RMC en ce sens qu'il exclut la division non seulement lorsque certains des produits contestés font l’objet d’une division de la marque communautaire originale, avec pour conséquence que la procédure de déchéance ou de nullité doit être divisée, mais aussi qu’il exclut également la possibilité que tous les produits contestés soient divisés de la marque communautaire originale. Dans ce cas, le titulaire de la marque communautaire aura toutefois la possibilité de modifier la déclaration de division en divisant les autres produits et services de la marque communautaire originale, c’est-à-dire ceux qui ne sont pas visés par la procédure en déchéance ou en nullité.
Dès lors qu’une procédure est en cours devant les chambres de recours, le Tribunal ou la Cour de justice de l’Union européenne, seuls les produits et les services non affectés par la procédure peuvent être divisés de la marque communautaire originale du fait de l’effet suspensif de la procédure.
De même, dès lors qu'une demande reconventionnelle en déchéance ou en nullité est pendante devant un tribunal des marques communautaires, ces mêmes conditions sont applicables. Cette période commence à courir à la date à laquelle la demande reconventionnelle est présentée devant le tribunal des marques communautaires et se termine à la date à laquelle l'Office inscrit la mention de la décision du tribunal des marques communautaires au registre des marques communautaires, conformément à l’article 100, paragraphe 6, du RMC.
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5.3 Enregistrement
Si l’Office accepte la déclaration de division, une nouvelle inscription au registre est créée à partir de cette date, sans effet rétroactif à la date de la déclaration.
Le nouvel enregistrement conserve la date de dépôt, ainsi que toute date de priorité ou d’ancienneté, en fonction des produits et des services; l’effet d’ancienneté pourrait devenir partiel.
Toutes les requêtes et demandes effectuées et toutes les taxes payées avant la date de réception par l’Office de la déclaration de division sont réputées avoir été introduites ou payées également en ce qui concerne la demande divisionnaire résultante. Les taxes dûment acquittées pour l’enregistrement original ne sont cependant pas remboursables (article 49, paragraphe 6, du RMC). Les conséquences pratiques de cette disposition peuvent être illustrées par les exemples suivants:
si une demande d’enregistrement d’une licence a été présentée et que l’Office a reçu le paiement de la taxe d’enregistrement de celle-ci avant de recevoir la déclaration de division, la licence est enregistrée dans le registre de la marque communautaire originale et dans celui de la demande divisionnaire si la licence couvre des produits et/ou services de la marque communautaire initiale et de la demande divisionnaire. Aucune taxe supplémentaire n’est due;
si un enregistrement de marque communautaire comprenant six classes doit être divisé en deux enregistrements de trois classes chacun, aucune taxe supplémentaire par classe ne doit être acquittée à compter de l’entrée à laquelle la division est entrée au Registre. Par contre, deux taxes de renouvellement de base devront être acquittées, à savoir une pour chaque enregistrement.
En cas d’irrecevabilité de la division, l’enregistrement original reste inchangé, peu importe que:
la déclaration de division ait été considérée comme non déposée faute de paiement de la taxe;
la déclaration ait été refusée en raison du fait qu'elle ne remplissait pas les conditions de forme (voir le paragraphe 5.2 ci-dessus).
La taxe ne sera remboursée ni dans l’un ni dans l’autre de ces deux derniers cas.
Si la décision finale de l’Office est que la déclaration de division est irrecevable pour l’un des motifs précédents, le requérant pourra présenter à nouveau une déclaration de division, moyennant le paiement d’une nouvelle taxe.
5.4 Nouveau dossier, publication
Règle 84, paragraphe 2, et règle 84, paragraphe 3, point w), du REMC
Un nouveau dossier doit être créé pour l’enregistrement divisionnaire. Outre les documents qui figuraient dans le dossier de l’enregistrement original, ce nouveau dossier doit contenir toute correspondance se rapportant à la déclaration de division, ainsi que toute correspondance future concernant le nouvel enregistrement.
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La division est publiée au Bulletin des marques communautaires. La règle 84, paragraphe 3, point w), du REMC dispose que la division de l’enregistrement est publiée en même temps que les éléments visés à la règle 84, paragraphe 2, du REMC en ce qui concerne l’enregistrement divisionnaire, ainsi que la liste des produits et des services de l’enregistrement original tel qu’il a été modifié.
6 Revendication de l’ancienneté après l’enregistrement
Article 35 du RMC Règle 28 du REMC Communication nº 2/00 du 25/02/2000 Décision nº EX-03-5 du 20/01/2003 Décision nº EX-05-5 du 01/06/2005
6.1 Principes généraux
Le titulaire d'une marque antérieure enregistrée dans un État membre, y compris une marque enregistrée qui a fait l'objet d'un enregistrement international ayant effet dans un État membre, qui détient une marque communautaire identique pour des produits ou des services identiques à ceux pour lesquels la marque antérieure a été enregistrée ou contenus dans ceux-ci, peut se prévaloir de l'ancienneté de la marque antérieure en ce qui concerne l'État membre dans lequel ou pour lequel elle a été enregistrée.
L’ancienneté peut être revendiquée à tout moment après l’enregistrement de la marque communautaire.
6.2 Effet juridique
L’ancienneté a pour seul effet que, lorsque le titulaire d’une marque communautaire renonce à son enregistrement de marque nationale antérieure ou le laisse s’éteindre, il sera considéré qu’il continue d’avoir les mêmes droits que si la marque antérieure était toujours enregistrée.
Cela signifie que la marque communautaire constitue une prolongation des enregistrements nationaux antérieurs. Si un titulaire revendique l’ancienneté d’une ou de plusieurs marques nationales antérieures enregistrées, il peut décider de ne pas renouveler les enregistrements nationaux antérieurs tout en restant dans la même situation que si la marque antérieure était toujours enregistrée dans les États membres dans lesquels les marques antérieures étaient enregistrées. L’Office recommande au titulaire d’attendre d’avoir reçu la confirmation de la recevabilité de sa revendication de l’ancienneté avant de permettre l’extinction de la marque nationale (voir également ci- dessous le paragraphe 6.4.2 Triple identité).
Il est possible de revendiquer non seulement l’ancienneté des enregistrements nationaux antérieurs, mais également celle d’un enregistrement international désignant un pays de l’UE. Il n’est toutefois pas possible de revendiquer l’ancienneté d’un enregistrement de marque communautaire antérieur ou d’enregistrements locaux, même si le territoire concerné fait partie de l’Union européenne (par exemple, Gibraltar).
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6.3 Conditions de forme
6.3.1 Forme
Règles 79, 79 bis, 80 et 82 du REMC Décision nº EX-11-03 du Président de l’Office
La revendication de l’ancienneté doit être déclarée par écrit à l’Office. Les règles générales concernant les communications avec l’Office sont applicables (voir les directives, partie A, Dispositions générales, section 1, Moyens de communication, Délais).
L’Office a mis à la disposition du public, à titre gracieux, un formulaire de demande d’inscription des revendications de l’ancienneté après l’enregistrement. Ce formulaire intitulé «Demande d’inscription» peut être téléchargé à partir du site internet de l’Office (http://oami.europa.eu).
6.3.2 Langue
Règle 95, point b), du REMC
La revendication de l’ancienneté doit être déposée dans l’une des cinq langues de l’Office.
6.3.3 Taxes
La demande en revendication de l’ancienneté n’est pas subordonnée au paiement d’une taxe.
6.3.4 Renseignements obligatoires
Règle 28 du REMC Décision nº EX-05-5 du 01/06/2005
La demande doit comporter les renseignements suivants:
le numéro d’enregistrement de la marque communautaire;
les nom et adresse du titulaire de la marque communautaire, conformément à la règle 1, paragraphe 1, point b), du REMC; si le titulaire s’est déjà vu attribuer par l’OHMI un numéro d’identification, il suffit d’indiquer ce dernier ainsi que le nom du titulaire;
le nom de l’État membre ou des États membres de l’Union européenne dans lesquels ou pour lesquels la marque antérieure, pour laquelle l’ancienneté est revendiquée, est enregistrée;
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le numéro d’enregistrement et la date de dépôt du ou des enregistrements antérieurs correspondants.
Conformément à la décision nº EX-05-5 du 01/06/2005, le titulaire n’est pas tenu de déposer une copie de l’enregistrement si l’Office peut disposer les informations requises auprès du site internet de l’Office national concerné. Si la copie de l’enregistrement n’a pas été produite, l’Office cherchera dans un premier temps les informations requises sur le site internet concerné. Ce n’est que si ces informations ne s’y trouvent pas qu’il demandera au titulaire de fournir une copie. Conformément à l’article 3 de la décision nº EX-03-5, la copie de l’enregistrement concerné doit être une copie (de simples photocopies suffisent) du certificat d’enregistrement et/ou de renouvellement, un extrait du registre, un extrait du journal officiel national pertinent ou un extrait ou une impression d’une base de données. Parmi les extraits qui ne sont pas acceptés, citons notamment ceux de DEMAS, MARQUESA, COMPUSERVE, THOMSON, OLIVIA, PATLINK ou COMPUMARK, SAEGIS.
6.4 Examen
6.4.1 Examen sur le fond
L’ancienneté ne peut être revendiquée qu’à partir d’un enregistrement antérieur, et non pas à partir d’une demande antérieure. La date de la marque antérieure doit être antérieure aux dates respectives de la marque communautaire (la date de dépôt ou, si elle est disponible, la date de priorité).
L’examinateur doit vérifier non seulement que la marque antérieure était enregistrée mais aussi qu’elle ne s’était pas éteinte au moment de la présentation de la revendication (en ce qui concerne la durée de protection des marques nationales, voir les directives, partie C, Opposition, section 1, Questions de procédure, paragraphe 4.2.3.4).
Si l’enregistrement antérieur s’est éteint au moment de la présentation de la revendication, il n’est pas possible de revendiquer l’ancienneté, même si le droit régissant la marque nationale pertinente prévoit un délai de grâce de six mois aux fins du renouvellement. Bien que certaines législations nationales admettent un délai de «grâce», si les taxes de renouvellement ne sont pas payées, la marque est réputée s’être éteinte le jour auquel elle devait être renouvelée. Partant, la revendication de l’ancienneté n’est recevable que si le requérant prouve qu’il a renouvelé le ou les enregistrement(s) antérieur(s).
Dans le contexte de l’élargissement de l’UE, il convient de garder à l’esprit les remarques suivantes. Lorsqu’une marque nationale d’un nouvel État membre ou un enregistrement international valable dans un nouvel État membre était enregistré(e) avant la présentation de la revendication de l’ancienneté, l’ancienneté peut être revendiquée même si la date de priorité, de dépôt ou d’enregistrement de la marque communautaire sur laquelle porte la revendication de l’ancienneté est antérieure à la date de priorité, de dépôt ou d’enregistrement de la marque nationale/l’enregistrement international en vigueur dans le nouvel État membre. Cela est dû au fait que la marque communautaire en question est en vigueur dans le nouvel État membre uniquement à compter de la date d’adhésion. La marque nationale/l’enregistrement international en vigueur dans le nouvel État membre et dont l’ancienneté est revendiquée est donc «antérieur(e)» à la marque communautaire au
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sens de l’article 35 du RMC, dès lors que la marque nationale/l’enregistrement international en vigueur dans le nouvel État membre dispose d’une date de priorité, de dépôt ou d’enregistrement antérieure à la date d’adhésion (voir les directives, partie A, Dispositions générales, section 9, Élargissement, annexe 1).
Exemples de revendications de l’ancienneté recevables pour les nouveaux États membres
Marque communautaire Date de dépôt
Pays de la revendication de
l’ancienneté
Date d’adhésion Date de dépôt du droit antérieur
2 094 860 TESTOCAPS 20/02/2001 Chypre
01/05/2004 28/02/2001
2 417 723 PEGINTRON 19/10/2001 Hongrie
01/05/2004 08/11/2001
352 039 REDIPEN 02/04/1996 Bulgarie 01/01/2007 30/04/1996
7 073 307 HydroTac 17/07/2008 Croatie 01/07/2013 13/10/2009
Explication: Dans tous ces cas de figure, bien que la date de dépôt de la demande de marque communautaire soit antérieure à la date de dépôt de la marque dont l’ancienneté est revendiquée, tous les pays concernés ont adhéré à l’Union européenne après la date de dépôt de la demande de marque communautaire. Or, c’est à partir de la date d’adhésion que la demande de marque communautaire jouit d’une protection dans ces États membres. Partant, il est possible de revendiquer l’ancienneté de toute marque nationale déposée avant la date d’adhésion.
Si la revendication de l’ancienneté est régulière, l’Office l’accepte et, une fois la demande de marque communautaire enregistrée, en informe le ou les services centraux de la propriété industrielle pertinents du ou des États membres concernés (règle 8, paragraphe 3, du REMC).
6.4.2 Triple identité
Pour être recevable, une revendication de l’ancienneté nécessite une triple identité:
la marque enregistrée et la marque communautaire doivent être identiques;
les produits et services de la marque communautaire doivent être identiques à, ou contenus dans, ceux pour lesquels la marque est enregistrée;
le titulaire doit être le même.
(voir l’arrêt du 19/01/2012, «Justing», T-103/11.)
L’examen des revendications de l’ancienneté est limité aux conditions de forme et à l’identité des marques (voir la communication du Président nº 2/00 du 25/02/2000).
Il appartient au titulaire de s’assurer que l’exigence de triple identité est satisfaite. L’Office examinera généralement seulement si les marques sont identiques. L’identité du titulaire, des produits ou des services ne sera pas examinée.
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En ce qui concerne l’identité des marques, le type de caractère utilisé dans lequel les marques verbales sont enregistrées n’est généralement pas pris en compte. Lorsqu’il examine l’identité des marques verbales, l’Office ne formule pas d’objection si, par exemple, une marque est en lettres majuscules et l’autre en minuscules. L’adjonction ou la suppression d’une simple lettre dans une marque verbale est suffisante pour que ces marques ne soient pas considérées comme identiques. En ce qui concerne les marques figuratives, le Tribunal a considéré ce qui suit:
En effet, même si les objectifs de l’article 8, paragraphe 1, point a), et de l’article 34 dudit règlement [le RMC] ne sont pas les mêmes, ils posent tous les deux comme condition de leur application l’identité des marques en cause …
…
Or, il y a lieu d’affirmer d’emblée que le fait qu’une marque soit enregistrée dans une couleur ou, au contraire, ne désigne pas une couleur en particulier ne peut pas être considéré comme un élément négligeable aux yeux d’un consommateur. En effet, l’impression laissée par une marque est différente selon que celle-ci est en couleur ou ne désigne aucune couleur en particulier.
(Voir l’arrêt du 20/02/2013, «Medinet», T-378/11, points 40 et 52).
Pour des informations détaillées sur la pratique de l’Office en matière d’identité des marques déposées en noir et blanc et/ou en nuances de gris par comparaison avec celles qui sont déposées en couleur aux fins de revendications d’ancienneté, veuillez vous référer aux Directives, Partie B, Examen, Section 2, Formalités, paragraphe 14.2.1, en rapport avec les revendications de priorité qui s’appliquent par analogie.
Si la revendication de l’ancienneté ne satisfait pas aux conditions de forme ou si les marques ne sont pas identiques, l’Office notifie le titulaire et lui accorde un délai de deux mois pour remédier à l’irrégularité ou déposer ses observations.
S’il n’est pas remédié à l’irrégularité, l’Office informe le titulaire que le droit de revendiquer l’ancienneté a été refusé.
Des exemples de revendications de l’ancienneté recevables et irrecevables sont cités dans les Directives, Partie B, Examen, Section 2, Formalités, paragraphe 16.6.
6.4.3 Harmonisation des informations relatives à l’ancienneté
Afin de gérer comme il se doit les anciennetés, toutes les anciennetés doivent être enregistrées dans le système sous le même format que celui utilisé dans les bases de données des offices nationaux.
Pour renforcer l’harmonisation entre l’OHMI et les offices de la PI participants, une liste indiquant le format requis des anciennetés a été créée. Cette liste comprend une description du ou des formats utilisés au sein de chacun des offices nationaux, dans la mesure où cela a été déterminé.
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Par conséquent, lorsqu’ils examinent les revendications de l’ancienneté, les examinateurs doivent vérifier que le format de l’ancienneté dans le système de l’Office correspond à celui utilisé au niveau national.
6.5 Enregistrement et publication
Règle 84, paragraphe 3, point f), du REMC
Si la revendication de l’ancienneté est régulière, l’Office enregistre et en informe le ou les services centraux de la propriété industrielle pertinents du ou des États membres concernés (règle 8, paragraphe 3, du REMC).
La revendication de l’ancienneté sera publiée au Bulletin des marques communautaires.
La publication contiendra les données suivantes:
le numéro d’enregistrement de la marque communautaire; les détails relatifs à la revendication de l’ancienneté: pays, numéro
d’enregistrement, date de dépôt; la date et le numéro de l’inscription de la revendication de l’ancienneté; la date de la publication au Bulletin des marques communautaires de l’inscription.
La publication pourrait également contenir la date d'enregistrement et la date de priorité de la revendication de l’ancienneté.
La règle 84, paragraphe 3, point f), du REMC prévoit que la revendication de l’ancienneté soit enregistrée avec les éléments visés à la règle 84, paragraphe 2.
6.6 Annulation des revendications de l’ancienneté
Le titulaire d’une marque communautaire peut à tout moment demander, de sa propre initiative, que la revendication de l’ancienneté soit radiée du registre.
Les revendications de l’ancienneté peuvent être annulées par décision d’une juridiction nationale (voir l’article 14 de la directive 2008/95/CE).
L’annulation de la revendication de l’ancienneté sera publiée au Bulletin des marques communautaires. La règle 84, paragraphe 3, point r), du REMC prévoit que l’annulation de l’ancienneté soit enregistrée avec les éléments visés à la règle 84, paragraphe 2.
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7 Remplacement d’un enregistrement de marque communautaire par un enregistrement international
Article 157 du RMC Règle 84, paragraphe 2, du REMC Article 4 bis du PM Règle 21 du règlement d’exécution commun à l’Arrangement de Madrid et au Protocole relatif à l’Arrangement de Madrid
Conformément à l’article 4 bis de l’Arrangement de Madrid et du Protocole y relatif, le titulaire d’un enregistrement international désignant l’Union européenne peut demander à l’Office de prendre note, dans son registre, du remplacement d’un enregistrement de marque communautaire par un enregistrement international correspondant. Les droits du titulaire au sein de l’UE seront réputés prendre effet à la date d’enregistrement de la marque communautaire antérieure. Ce faisant, l’Office inscrira au registre qu’une marque communautaire a été remplacée par une désignation de l’UE via un enregistrement international et l’inscription sera publiée au Bulletin des marques communautaires.
Pour tout complément d’information sur le remplacement, voir les directives, partie M, Marques internationales.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 3
LA MARQUE COMMUNAUTAIRE EN TANT QU’OBJET DE PROPRIÉTÉ
CHAPITRE 1
TRANSFERT
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Table des matières
1 Introduction................................................................................................ 4 1.1 Transferts....................................................................................................5
1.1.1 Cession........................................................................................................... 5 1.1.2 Héritage .......................................................................................................... 5 1.1.3 Fusion ............................................................................................................. 5 1.1.4 Droit applicable ............................................................................................... 6
1.2 Demande d’enregistrement d’un transfert................................................ 6
2 Transferts et modifications de nom......................................................... 6 2.1 Requête erronée en enregistrement d’une modification de nom............8 2.2 Demande erronée d’enregistrement d’un transfert..................................8
3 Conditions de forme et de fond pour le dépôt d’une demande d’enregistrement d’un transfert ............................................................... 8 3.1 Langues ......................................................................................................9 3.2 Demande d’enregistrement d’un transfert pour plus d’une marque..... 10 3.3 Parties à la procédure .............................................................................. 10 3.4 Conditions de forme................................................................................. 10
3.4.1 Mention du numéro de l’enregistrement....................................................... 11 3.4.2 Renseignements détaillés sur le nouveau titulaire ....................................... 11 3.4.3 Nom et adresse du représentant .................................................................. 11 3.4.4 Signatures..................................................................................................... 12
3.5 Preuve du transfert................................................................................... 13 3.6 Conditions de fond................................................................................... 15 3.7 Procédure de correction des irrégularités.............................................. 15
4 Transferts partiels ................................................................................... 15 4.1 Règles relatives à la répartition des listes de produits et des services16 4.2 Objections................................................................................................. 17 4.3 Création d’une nouvelle demande ou d’un nouvel enregistrement de
marque communautaire ........................................................................... 18
5 Transfert au cours d’une autre procédure et taxes afférentes ............ 18 5.1 Questions spécifiques aux transferts partiels ....................................... 19 5.2 Transfert et procédure inter partes ......................................................... 20
6 Inscription au registre, notification et publication ............................... 21 6.1 Inscription au registre.............................................................................. 21 6.2 Notification................................................................................................ 21 6.3 Publication................................................................................................ 22
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7 Transferts de dessins et modèles communautaires enregistrés ........ 23 7.1 Droits fondés sur une utilisation antérieure d’un dessin ou modèle
communautaire......................................................................................... 23 7.2 Taxes......................................................................................................... 23
8 Transferts de marques internationales.................................................. 24
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1 Introduction
Article 1, paragraphe 2, article 17, paragraphe 1, et article 24 du RMC Article 28 du RDC Article 23 du REDC
Un transfert est le changement de titulaire des droits de propriété sur un enregistrement ou une demande de marque communautaire d’une entité à une autre. Les enregistrements et les demandes de marques communautaires peuvent être transférés d’un ancien titulaire à un nouveau, essentiellement par cession ou succession légale. Le transfert peut être limité à une partie des produits et des services pour lesquels une marque est enregistrée ou déposée (transfert partiel). À la différence d’une licence ou d’une transformation, un transfert de marque communautaire ne peut affecter le caractère unitaire de la marque communautaire. Par conséquent, une marque communautaire ne peut être «partiellement» transférée pour certains territoires ou États membres.
Les dispositions contenues dans le RDC et le REDC en matière de transfert de dessins et modèles sont quasiment identiques aux dispositions correspondantes du RMC et du REMC, respectivement. En conséquence, ce qui suit s’applique mutatis mutandis aux dessins et modèles communautaires, sous réserve des quelques exceptions et spécificités exposées au point 7 ci-dessous.
Article 16, article 17, paragraphes 5, 6 et 8, et articles 24 et 87 du RMC Règle 31, paragraphe 8, et règle 84, paragraphe 3, point g), du REMC
Sur demande, les transferts des enregistrements de marques communautaires sont inscrits au registre et les transferts des demandes de marques communautaires sont notés dans les dossiers.
Les règles relatives à l’inscription des transferts et aux effets juridiques des transferts s’appliquent à la fois aux enregistrements et aux demandes de marques communautaires. La différence essentielle est que les règlements précisent que lorsqu’une demande de marque communautaire est transférée, le transfert est inscrit dans le dossier de la demande plutôt que dans le registre. Toutefois, dans la pratique, les changements de titulaire d’un enregistrement ou d’une demande de marque communautaire sont enregistrés dans la même base de données. Bien que les présentes directives n’établissent, en principe, aucune distinction entre le transfert d’un enregistrement de marque communautaire et le transfert d’une demande de marque communautaire, une mention particulière sera faite lorsque le traitement des demandes de marques communautaires diffère de celui des marques communautaires.
En vertu de l’article 17 du RMC, l’enregistrement d’un transfert n’est pas une condition de sa validité. Toutefois, si un transfert n’est pas enregistré par l’Office, le titulaire enregistré conserve la qualité pour agir, ce qui signifie, notamment, que le nouveau titulaire ne recevra pas de communications de l’Office, en particulier dans le cadre d’une procédure inter partes, ni la notification du délai de renouvellement de la marque. Par ailleurs, conformément à l’article 16 du RMC, pour tous les aspects de la marque communautaire en tant qu’objet de propriété, qui ne sont pas définis plus avant par des dispositions du RMC, l’adresse du titulaire détermine le droit national subsidiaire applicable. Pour toutes ces raisons, il est important d’enregistrer un transfert auprès de
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l’Office, afin de garantir que les droits sur les enregistrements et les demandes de marques communautaires sont clairs.
1.1 Transferts
Article 17, paragraphes 1 et 2, du RMC
Un transfert de marque communautaire comporte deux aspects, à savoir la validité du transfert entre les parties et l’effet d’un transfert sur une procédure devant l’Office, cet effet n’étant déclenché qu’après l’inscription du transfert au registre (ou dans les dossiers) (voir le point 1.2 ci-dessus).
S’agissant de la validité du transfert entre les parties, le RMC autorise le transfert d’une marque communautaire indépendamment du transfert de l’entreprise titulaire (voir également l’arrêt du 30 mars 2006, «Elizabeth Emanuel», C-259/04, points 45 et 48).
1.1.1 Cession
Article 17, paragraphe 3, du RMC
Lorsque le transfert résulte d’une cession, celle-ci doit être faite par écrit et porter la signature des deux parties au contrat, sous peine de nullité, sauf si cette cession résulte d’une décision de justice. Cette condition de forme portant sur la validité du transfert d’une marque communautaire s’applique, même lorsque la législation nationale sur les transferts de marques (nationales) n’impose pas de forme particulière à la validité d’une cession, comme la nécessité que le transfert soit fait par écrit et porte la signature des deux parties.
1.1.2 Héritage
En cas de décès du titulaire d’un enregistrement ou d’une demande de marque communautaire, les héritiers deviennent titulaires de l’enregistrement ou de la demande par succession à titre individuel ou universel. Ce cas est également régi par les règles relatives aux transferts.
1.1.3 Fusion
De même, il y a succession à titre universel en cas de fusion de deux entreprises conduisant à la création d’une nouvelle entreprise ou au rachat de l’une par l’autre. Lorsque la totalité de l’entreprise détentrice de la marque est transférée, il y a présomption de transfert de la marque, sauf s’il existe, conformément à la législation régissant les transferts, une convention contraire ou si cela ressort clairement des circonstances.
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1.1.4 Droit applicable
Article 16 du RMC
Sauf disposition contraire du RMC, les transferts sont régis par le droit national d’un État membre, en application de l’article 16 du RMC. Cette disposition prévoit l’application du droit national en général et, par conséquent, inclut le droit international privé, lequel peut se référer au droit d’un autre État.
1.2 Demande d’enregistrement d’un transfert
Article 17, paragraphes 5 à 8, du RMC Règle 31 du REMC
Pour qu’un transfert puisse être utilisé dans une procédure devant l’Office, il doit avoir fait l’objet d’une demande d’enregistrement et doit être inscrit au registre ou, s’il porte sur une demande de marque communautaire, il doit être porté dans le dossier relatif à la demande de marque communautaire.
Article 17, paragraphe 7, du RMC
Toutefois, pendant la période s’écoulant entre la date de réception par l’Office de la demande d’enregistrement et la date d’enregistrement du transfert, le nouveau titulaire peut faire à l’Office des déclarations dans le but de respecter les délais. Si, par exemple, lors de l’enregistrement du transfert d’une demande de marque communautaire, l’Office a émis des objections quant aux motifs absolus de refus, le nouveau titulaire peut y répondre (voir le paragraphe 5 ci-dessous).
La présente partie des directives traite de la procédure d’enregistrement des transferts. L’examen par l’Office d’une demande d’enregistrement d’un transfert ne porte que sur l’existence d’une preuve suffisante du transfert. L’Office n’examine pas la validité du transfert.
2 Transferts et modifications de nom
Règle 26 du REMC
Il convient de distinguer un transfert de la modification du nom du titulaire.
Les requêtes en modification du nom du titulaire d’un enregistrement ou d’une demande de marque communautaire font l’objet d’une procédure distincte. Vous trouverez plus d’informations sur les modifications de nom dans la partie B – Examen, section 2 – Formalités, point 7.3 – Modification du nom/de l’adresse, des présentes directives.
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Règle 26, paragraphe 1, du REMC
Lorsqu’une personne physique change de nom à la suite d’un mariage ou à l’issue d’une procédure officielle de changement de nom, ou lorsque le nom civil est remplacé par un pseudonyme, etc., il ne s’agit pas d’un transfert. Dans tous ces cas, l’identité du titulaire reste inchangée.
Lorsqu’une personne morale change de dénomination ou de statut, le critère qui permet de distinguer le transfert du simple changement de dénomination consiste à s’assurer que la personne morale reste la même (auquel cas la modification sera enregistrée comme un changement de dénomination) (voir la décision du 6 septembre 2010 dans l’affaire R 1232/2010-4, «Cartier», paragraphes 12 à 14). En d’autres termes, lorsque l’entité légale ne cesse pas d’exister (par exemple, en cas de fusion par acquisition, lorsqu’une entreprise est totalement absorbée par l’autre et cesse d’exister) et qu’aucune nouvelle entité légale n’est créée (par exemple, à la suite de la fusion de deux entreprises aboutissant à la création d’une nouvelle entité légale), il n’y a de changement que dans la structure formelle d’une entreprise qui existait déjà et non dans son identité réelle. Le changement sera donc enregistré comme une modification de nom, si nécessaire.
Ainsi, si une marque communautaire est enregistrée au nom de l’entreprise A et qu’à la suite d’une fusion, cette entreprise est absorbée par l’entreprise B, il y a un transfert d’actifs de l’entreprise A à l’entreprise B.
De même, en cas de division de l’entreprise A en deux entités distinctes, l’une étant l’entreprise A initiale et l’autre étant une nouvelle entreprise B, si la marque communautaire enregistrée au nom de l’entreprise A devient la propriété de l’entreprise B, il y a un transfert d’actifs.
Normalement, il n’y a pas de transfert lorsque le numéro d’enregistrement de l’entreprise au registre national des entreprises reste inchangé.
De la même façon, en principe, il y a présomption prima facie de transfert d’actifs lorsqu’il y a un changement de pays (voir, cependant, décision du 24/10/2013, R 546/2012-1 - «LOVE et al.»).
En cas de doute concernant le droit national applicable régissant la personne morale concernée, l’Office peut demander des renseignements pertinents à la personne qui demande l’enregistrement du changement de dénomination.
Par conséquent, sauf disposition contraire dans le droit national concerné, le changement de structure juridique d’une entreprise, pour autant qu’il ne soit pas accompagné d’un transfert d’actifs réalisé par le biais d’une fusion ou d’une acquisition, sera traité comme un changement de dénomination et pas comme un transfert.
Par ailleurs, si le changement de la structure juridique de l’entreprise résulte d’une fusion, d’une division ou d’un transfert d’actifs, selon que l’entreprise absorbe ou est séparée de l’autre ou qu’une entreprise transfère ses actifs à l’autre, il peut s’agir d’un transfert.
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2.1 Requête erronée en enregistrement d’une modification de nom
Article 133, paragraphe 1, du RMC Règle 26, paragraphes 1, 5 et 7, du REMC
Lorsqu’une requête en enregistrement d’une modification de nom est déposée, mais que les preuves établissent qu’il s’agit en réalité d’un transfert d’enregistrement ou de demande de marque communautaire, l’Office en informe le demandeur et l’invite à présenter une demande d’enregistrement d’un transfert, laquelle est gratuite. Ce transfert est toutefois subordonné au paiement d’une taxe lorsqu’il porte sur un dessin ou un modèle (voir point 7 ci-dessous). Cette communication fixe un délai, en général deux mois à compter de la date de sa notification. Si la personne qui introduit la demande est d’accord ou ne présente pas de preuves contraires et introduit la demande correspondante d’enregistrement d’un transfert, le transfert est enregistré. Si le demandeur ne modifie pas sa requête, c’est-à-dire insiste pour enregistrer la modification en tant que changement de nom, ou s’il ne répond pas, la requête en enregistrement d’une modification de nom est rejetée. La partie concernée peut former un recours contre cette décision (voir décision 2009-1 du 16/06/ 2009 du présidium des chambres de recours relative aux instructions aux parties à des procédures devant les chambres de recours).
Une nouvelle demande d’enregistrement du transfert peut être introduite à tout moment.
2.2 Demande erronée d’enregistrement d’un transfert
Règle 31, paragraphes 1 et 6, du REMC
Lorsqu’une demande d’enregistrement d’un transfert est déposée mais concerne en réalité une modification de nom dans l’enregistrement ou dans la demande de marque communautaire, l’Office en informe le demandeur et l’invite à autoriser l’enregistrement, au titre d’un changement de nom, des renseignements sur le titulaire dans les dossiers tenus par l’Office ou dans le registre. Cette communication fixe un délai, en général deux mois à compter de la date de sa notification. Si le demandeur est d’accord, la modification de nom est enregistrée. Si le demandeur n’est pas d’accord, c’est-à-dire insiste pour enregistrer la modification en tant que transfert, ou s’il ne répond pas, sa demande d’enregistrement d’un transfert est rejetée.
3 Conditions de forme et de fond pour le dépôt d’une demande d’enregistrement d’un transfert
L’Office recommande vivement d’utiliser le formulaire de demande d’enregistrement en ligne lors de l’introduction d’une demande d’enregistrement d’un transfert. Ce formulaire est gratuit et peut être téléchargé sur le site internet de l’Office (http://www.oami.europa.eu).
Depuis l’entrée en vigueur du règlement n° 1042/05, qui modifie le RTMC, il n’y a pas de taxe à payer pour l’enregistrement d’un transfert.
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3.1 Langues
La demande d’enregistrement d’un transfert doit être déposée:
Règle 95, points a) et b), et règle 96, paragraphe 1, du REMC
lorsque le transfert porte sur une demande de marque communautaire, dans la première ou la deuxième langue mentionnée dans ladite demande;
lorsque le transfert porte sur une marque communautaire enregistrée, dans l’une des langues de l’Office.
Lorsque la demande porte sur plusieurs demandes de marques communautaires, le demandeur doit choisir pour la demande une langue commune à toutes les demandes concernées. S’il n’y a pas de langue commune, il doit déposer des demandes de transfert séparées.
Lorsque la demande porte sur plus d’un enregistrement de marque communautaire, le demandeur doit choisir l’une des cinq langues de travail de l’Office.
Règle 76, paragraphe 3, du REMC
Sur demande expresse de l’Office, les pouvoirs peuvent être déposés dans une des langues officielles de l’Union européenne.
Règle 96, paragraphe 2, du REMC
Tout document à l’appui de la demande peut être rédigé dans l’une des langues officielles de l’Union européenne. Cette règle s’applique à tout document produit comme preuve du transfert, tel qu’un document de transfert contresigné ou un certificat de transfert, un acte de cession ou un extrait du registre du commerce, ou une déclaration d’accord sur l’enregistrement de l’ayant cause en tant que nouveau titulaire.
Règle 98 du REMC
Lorsque les pièces justificatives sont déposées dans une langue autre qu’une langue officielle de l’Union européenne ou que celle de la procédure, l’Office peut demander une traduction dans la langue de la procédure ou, au choix du demandeur de l’enregistrement, dans l’une des langues de l’Office. L’Office fixe un délai de deux mois à compter de la date de notification de la communication. Si la traduction n’est pas produite dans le délai imparti, le document ne sera pas pris en compte et sera réputé non présenté.
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3.2 Demande d’enregistrement d’un transfert pour plus d’une marque
Règle 31, paragraphe 7, du REMC
Une demande d’enregistrement d’un transfert peut être déposée pour plusieurs enregistrements ou demandes de marques communautaires, sous réserve que le titulaire initial et le nouveau titulaire soient les mêmes dans chaque cas. Une telle demande présente l’avantage que les différentes références ne doivent être fournies qu’une seule fois et qu’une seule décision doit être prise.
Lorsque le titulaire initial et le nouveau titulaire ne sont pas strictement identiques pour chacune des marques, des demandes distinctes doivent être déposées. Tel est le cas, par exemple, lorsqu’il existe un ayant cause pour la première marque et plusieurs ayants cause pour une autre marque, même si l’ayant cause de la première marque fait partie des ayants cause de l’autre marque. Il est indifférent que le représentant soit le même dans chaque cas.
Lorsqu’une seule demande est déposée dans de tels cas, l’Office envoie une lettre dénonçant cette irrégularité. Le demandeur peut remédier à cette irrégularité soit en limitant la demande aux enregistrements ou demandes de marques communautaires ayant un seul titulaire initial et un seul nouveau titulaire, soit en donnant son accord pour que sa demande fasse l’objet de deux ou plusieurs procédures distinctes. À défaut, la demande est rejetée dans son intégralité. La partie concernée peut former un recours contre cette décision.
3.3 Parties à la procédure
Article 17, paragraphe 5, du RMC Règle 31, paragraphe 5, du REMC
La demande d’enregistrement d’un transfert peut être déposée par le ou les titulaires initiaux (le ou les propriétaires de la marque communautaire figurant dans le registre ou le ou les demandeurs de la marque communautaire figurant dans le dossier de demande de marque) ou par le ou les nouveaux titulaires («ayant cause», c’est-à-dire la ou les personnes qui figureront comme titulaires une fois le transfert enregistré).
En règle générale, l’Office communique avec le ou les demandeurs d’enregistrement d’un transfert. En cas de doute, l’Office peut demander des éclaircissements à toutes les parties.
3.4 Conditions de forme
Règle 1, paragraphe 1, point b), règle 31, paragraphes 1 et 2, et règle 79 du REMC
La demande d’enregistrement d’un transfert doit contenir les informations suivantes:
le numéro de l’enregistrement ou de la demande de marque communautaire;
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les renseignements détaillés sur le nouveau titulaire; si le nouveau titulaire désigne un représentant, le nom et l’adresse
professionnelle de celui-ci; la signature du ou des demandeurs; la preuve du transfert établie conformément au paragraphe 3.5 ci-dessous.
D’autres conditions applicables en cas de transfert partiel sont décrites au paragraphe 4.
3.4.1 Mention du numéro de l’enregistrement
Règle 31, paragraphe 1, point a), du REMC
Le numéro d’enregistrement de la marque doit être mentionné.
3.4.2 Renseignements détaillés sur le nouveau titulaire
Règle 1, paragraphe 1, point b), et règle 31, paragraphe 1, point b), du REMC
Les renseignements requis concernant le nouveau titulaire sont le nom, l’adresse et la nationalité dans le cas d’une personne physique. Dans le cas d’une entité légale, le demandeur de l’inscription devra indiquer la dénomination officielle et doit inclure la forme juridique de l’entité, qui peut être abrégée sous sa forme habituelle (par example, S.L., S.A., S.A.S., S.A.R.L., etc.). Les personnes physiques et morales doivent mentionner l’État dans lequel elles sont domiciliées ou ont leur siège ou un établissement. L’Office recommande fortement d’indiquer le State of Incorporation dans le cas de sociétés américaines, le cas échéant, afin de distinguer clairement les différents titulaires dans sa base de données. Ces informations correspondent aux renseignements que doit fournir le demandeur d’une nouvelle marque communautaire. Néanmoins, lorsque l’Office a déjà attribué un numéro d’identification au nouveau titulaire, il suffit de mentionner ce numéro et le nom du nouveau titulaire.
Sur le formulaire établi par l’Office, il est également demandé d’indiquer le nom du titulaire initial. Cette mention facilite le traitement du dossier par l’Office et par les parties.
3.4.3 Nom et adresse du représentant
Règle 77 du REMC Article 93, paragraphe 1, du RMC Règle 76, paragraphes 1, 2 et 4, du REMC
Les demandes d’enregistrement de transfert peuvent être déposées et signées par des représentants agissant au nom du titulaire de la marque communautaire ou du nouveau titulaire.
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Lorsque le nouveau titulaire désigne un représentant, qui signe la demande, soit l’Office ou, dans le cas d’une procédure inter partes, l’autre partie à la procédure peut demander la production d’un pouvoir. Dans ce cas, si le représentant ne présente pas un pouvoir, la procédure se poursuit comme si aucun représentant n’avait été désigné.
Lorsque le nouveau titulaire désigne le même représentant que le titulaire initial, le représentant peut signer la demande au nom du titulaire initial et du nouveau titulaire. Le représentant peut aussi être invité à produire un pouvoir signé par le nouveau titulaire.
Article 92, paragraphe 3, et article 93, paragraphe 1, du RMC
Le paragraphe précédent s’applique non seulement aux représentants au sens de l’article 93 du RMC (avocats et mandataires agréés inscrits sur la liste tenue à cet effet par l’Office), mais également à tout employé agissant au nom de son employeur ou, dans le cadre des dispositions de l’article 92, paragraphe 3, du RMC, au nom d’une personne morale (société) ayant des liens économiques avec l’employeur.
Règle 77 et règle 83, paragraphe 1, point h), du REMC
Le pouvoir général découlant du formulaire fourni par l’Office sera considéré comme suffisant pour autoriser le mandataire à déposer et signer les demandes d’enregistrement de transferts.
En cas de pouvoir individuel, l’Office vérifie qu’il n’empêche pas le mandataire de déposer une demande d’enregistrement d’un transfert.
Article 92, paragraphe 2, du RMC
Lorsque le demandeur de l’inscription est le nouveau titulaire et ce dernier n’a ni son domicile ni son siège principal ni un établissement industriel ou commercial réel et effectif dans la Communauté, il doit, pour les besoins de la procédure d’enregistrement du transfert, être représenté par une personne habilitée à représenter des tiers devant l’Office (avocat ou mandataire agréé figurant sur la liste tenue par l’Office). Les possibilités de représentation sont détaillées dans la partie A – Règles générales, section 5 - Représentation professionnelle, des présentes directives.
3.4.4 Signatures
Règle 31, paragraphe 1, point d), règle 31, paragraphe 5, et règle 79 du REMC
Il convient de considérer les exigences relatives aux personnes habilitées à déposer et à signer la demande conjointement à celles qui concernent la production de la preuve du transfert. En principe, les signatures du ou des titulaires initiaux et du ou des nouveaux titulaires doivent figurer ensemble ou séparément sur la demande ou un document d’accompagnement. En cas de copropriété, tous les cotitulaires doivent signer ou désigner un représentant commun.
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Règle 31, paragraphe 5, point a), du REMC
Il est suffisant que la demande soit signée conjointement par le titulaire initial et le nouveau titulaire et il n’est pas nécessaire de produire d’autre preuve du transfert.
Règle 31, paragraphe 5, point b), du REMC
Lorsque la demande est déposée par le nouveau titulaire accompagnée d’une déclaration signée par le titulaire initial donnant son accord pour que l’enregistrement soit effectué au nom de l’ayant cause en tant que nouveau titulaire, il n’est pas nécessaire de produire d’autre preuve du transfert.
Lorsque le représentant du titulaire initial est également désigné comme représentant du nouveau titulaire, il peut signer la demande à la fois au nom du titulaire initial et du nouveau titulaire et il n’est pas nécessaire de produire d’autre preuve du transfert. Cependant, lorsque le représentant signant au nom du titulaire initial et du nouveau titulaire n’est pas le représentant mentionné dans le dossier (c’est-à-dire dans une demande désignant le représentant et transférant simultanément la marque communautaire), l’Office contacte le demandeur en l’invitant à produire des preuves du transfert (pouvoir signé par le titulaire initial, preuve du transfert, confirmation du transfert par le titulaire initial ou son représentant dans le dossier).
3.5 Preuve du transfert
Article 17, paragraphes 2 et 3, du RMC Règle 31, paragraphe 1, point d), règle 31, paragraphe 5, points a) à c), et règle 83, paragraphe 1, point d), du REMC
Le transfert ne peut être enregistré que lorsqu’il est dûment prouvé par des documents, comme une copie de l’acte de transfert. Toutefois, comme indiqué plus haut, il n’est pas nécessaire de produire une copie de l’acte de transfert:
lorsque le nouveau titulaire ou son représentant dépose lui-même la demande d’enregistrement du transfert et lorsque la demande est accompagnée d’une déclaration écrite signée par le titulaire initial (ou son représentant) par laquelle ce dernier donne son accord à l’enregistrement du transfert; ou
lorsque la demande d’enregistrement du transfert est signée à la fois par le titulaire initial (ou son représentant) et par le nouveau titulaire (ou son représentant); ou
lorsque la demande d’enregistrement du transfert est accompagnée d’un formulaire (d’enregistrement) de transfert complété ou par un document signé à la fois par le titulaire initial (ou son représentant) et par le nouveau titulaire (ou son représentant).
Les parties à la procédure peuvent aussi utiliser les formulaires établis au titre du traité sur le droit des marques, qui sont disponibles sur le site internet de l’OMPI (https://www.wipo.int/treaties/fr/ip/tlt/forms.html). Ces formulaires sont le document de cession – document conçu pour établir le transfert (cession) proprement dit – et le certificat de cession – document par lequel les parties au transfert déclarent qu’un
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transfert a eu lieu. L’un ou l’autre de ces documents, dûment complétés, constitue une preuve suffisante du transfert.
Toutefois, d’autres moyens de preuve ne sont pas exclus. Ainsi, l’accord (acte de cession) proprement dit ou tout autre document attestant le transfert sont recevables.
Lorsque la marque a fait l’objet de transferts et/ou de changements successifs et multiples portant sur le nom du titulaire, mais que ceux-ci n’ont pas été préalablement inscrits au registre, il suffit de présenter la chaîne de preuves montrant les événements qui ont conduit à la relation entre l’ancien et le nouveau titulaire sans qu’il soit nécessaire de déposer des demandes distinctes d’inscription individuelle pour chaque changement.
Lorsque le transfert de la marque résulte du transfert de la totalité de l’entreprise du titulaire initial, et sauf production d’une des preuves décrites précédemment, le document attestant le transfert ou la cession de l’entreprise dans sa totalité doit être produit.
Lorsque le transfert est dû à une fusion ou à une autre succession à titre universel, le titulaire initial n’a plus la possibilité de signer la demande. Dans ce cas, la demande doit être accompagnée de documents attestant la fusion ou la succession à titre universel, tels que des extraits du registre du commerce, etc. L’Office ne peut pas réclamer de preuve supplémentaire s’il dispose déjà des informations nécessaires fournies dans le cadre, par exemple, de procédures parallèles.
Lorsque le transfert de la marque est la conséquence d’un droit réel, d’une exécution forcée ou d’une procédure d’insolvabilité, le titulaire initial ne sera pas en mesure de signer la demande. Dans de tels cas, la demande doit être accompagnée d’un jugement ayant force de chose jugée transférant la propriété de la marque au bénéficiaire.
Il n’est pas nécessaire de faire certifier les pièces justificatives, ni de produire des originaux. Les documents originaux sont intégrés dans le dossier et ne peuvent donc être renvoyés à l’expéditeur. De simples photocopies suffisent.
Si l’Office a des raisons de douter de l’exactitude ou de l’authenticité d’un document, il peut exiger la production d’une preuve supplémentaire.
L’Office examine les pièces produites uniquement dans le but de vérifier qu’elles prouvent les informations contenues dans la demande, à savoir l’identité des marques concernées, l’identité des parties et si la demande implique un transfert. L’Office n’examine ni ne statue sur des questions contractuelles ou juridiques relevant du droit national (voir l’arrêt du 9 septembre 2011, «Craic», T-83/09, point 27). En cas de doute, il appartient au juge national de se prononcer sur la légalité du transfert.
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3.6 Conditions de fond
Article 17, paragraphe 4, du RMC
L’Office refuse d’enregistrer le transfert lorsque les documents de transfert font apparaître de façon manifeste qu’en raison du transfert, la marque communautaire sera de nature à induire le public en erreur sur la nature, la qualité ou la provenance géographique des produits ou des services pour lesquels elle est enregistrée, à moins que le nouveau titulaire n’accepte de limiter l’enregistrement de la marque communautaire à des produits ou à des services pour lesquels elle ne sera pas trompeuse.
. Pour de plus amples informations sur la pratique de l’Office concernant l’article 7, paragraphe 1, point g), du RMC, voir les Directives Partie B, Section 4, Motifs absolus de refus.
3.7 Procédure de correction des irrégularités
Article 17, paragraphe 7, du RMC Règle 31, paragraphe 6, et règle 67, paragraphe 1, du RMC
Lorsqu’une des irrégularités précédemment décrites est constatée, l’Office invite le demandeur à y remédier dans un délai de deux mois à compter de la date de la notification. La notification est adressée à la personne qui a demandé l’enregistrement du transfert ou à son représentant, si celle-ci a désigné un représentant. L’Office n’informe pas systématiquement l’autre partie au transfert, sauf si les circonstances l’exigent.
Lorsque le demandeur ne remédie pas aux irrégularités ou ne fournit pas la preuve supplémentaire requise, ou s’il ne parvient pas à convaincre l’Office que les objections qui lui sont opposées sont infondées, l’Office rejette la demande. La partie concernée peut former un recours contre cette décision.
4 Transferts partiels
Article 17, paragraphe 1, du RMC Règle 32 du REMC
Le transfert partiel ne s’applique qu’à une partie des produits et services visés par l’enregistrement ou la demande de marque communautaire. Il implique une répartition de la liste originale des produits et services entre l’enregistrement ou la demande de marque maintenu et le nouvel enregistrement ou la nouvelle demande. Dans le cas de transferts partiels, l’Office utilise une terminologie spécifique pour identifier les marques. Au début de la procédure, il y a la marque «originale», c’est-à-dire la marque pour laquelle un transfert partiel est demandé. Après l’enregistrement du transfert, il y a deux marques: la première est la marque qui couvre désormais moins de produits et de services et est appelée la marque «maintenue» et la seconde est une «nouvelle» marque qui couvre certains produits et services de la marque originale. La marque
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«maintenue» conserve le numéro de marque communautaire de la marque «originale», tandis que la «nouvelle» marque se voit attribuer un nouveau numéro de marque communautaire.
Un transfert ne peut modifier le caractère unitaire de la marque communautaire. Une marque communautaire ne peut donc pas être transférée «partiellement» pour certains territoires.
En cas de doute sur le caractère partiel ou non du transfert, l’Office en informe le demandeur et l’invite à apporter les éclaircissements nécessaires.
Il peut également y avoir des transferts partiels lorsque la demande concerne plus d’un enregistrement ou demande de marque communautaire. Les règles suivantes s’appliquent alors à chaque demande ou enregistrement de marque visé dans la demande de transfert.
4.1 Règles relatives à la répartition des listes de produits et des services
Article 43 du RMC Règle 2 et règle 32, paragraphe 1, du REMC
La demande d’enregistrement d’un transfert partiel doit mentionner les produits et services concernés par le transfert (liste des produits et des services du «nouvel» enregistrement). Les produits et les services doivent être répartis entre l’enregistrement ou la demande de marque communautaire original et le nouvel enregistrement ou la nouvelle demande de marque communautaire de façon à éviter tout chevauchement. Les deux spécifications réunies ne doivent pas comporter plus d’éléments que la spécification d’origine.
Par conséquent, les informations doivent être claires, précises et sans équivoque. Par exemple, lorsqu’une marque communautaire désigne des produits ou services appartenant à plusieurs classes et que le «découpage» entre l’ancien et le nouvel enregistrement concerne des classes entières, il suffit d’indiquer les classes concernées par le nouvel enregistrement et celles concernées par l’enregistrement maintenu.
Lorsque la demande de transfert partiel concerne des produits et des services clairement identifiés dans la liste originale des produits et services, l’Office conserve automatiquement les produits et services qui ne sont pas mentionnés dans la demande de transfert pour l’enregistrement ou la demande original de marque communautaire. Ainsi, si la liste originale contient les produits A, B et C et que la demande de transfert concerne les produits C, l’Office conserve les produits A et B dans l’enregistrement original et crée un nouvel enregistrement pour les produits C.
Conformément à la communication n° 2/12 du président de l’Office du 20 juin 2012, les marques communautaires déposées avant le 21 juin 2012 utilisant un intitulé de classe particulier sont réputées couvrir tous les produits et services répertoriés dans la liste alphabétique de cette classe dans l’édition de la classification de Nice en vigueur à la date de dépôt de la demande (voir les points V et VI de la communication n° 2/12).
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Lorsque la demande de transfert partiel porte sur des produits ou services qui ne figurent pas expressément dans la liste originale, mais sont couverts par le sens littéral d’une indication générique de cette liste, ils peuvent être admis à condition de ne pas étendre la liste. Pour déterminer si la liste est réduite ou étendue, les règles d’usage dans ces situations sont applicables (voir la partie B – Examen, section 3 – Classification, des présentes directives).
Toutefois, les marques déposées à partir du 21 juin 2012 n’utilisant que les indications génériques d’un intitulé de classe particulier seront réputées couvrir le sens littéral de cet intitulé de classe et ne peuvent faire l’objet d’un transfert partiel que dans cette mesure (voir les points VII et VIII de la communication n° 2/12).
Les marques déposées après le 21 juin 2012, utilisant les indications générales d’un intitulé de classe particulier et la liste alphabétique, seront réputées couvrir le sens littéral de cet intitulé de classe et de la liste alphabétique des produits et services concernés de cette classe dans l’édition de la classification de Nice en vigueur à la date de dépôt et ne peuvent faire l’objet d’un transfert partiel que dans cette mesure (voir les points VII et VIII de la communication n° 2/12).
En tout état de cause, il est fortement recommandé de présenter une liste claire et précise des produits et services à transférer ainsi qu’une liste claire et précise des produits et services à conserver dans l’enregistrement original. De plus, la liste d’origine doit être clarifiée. Par exemple, si la liste d’origine fait référence à des «boissons alcooliques» et que le transfert porte sur du «whisky» et du «gin», la liste originale doit être modifiée pour se limiter à des «boissons alcooliques, à l’exception du whisky et du gin».
4.2 Objections
Règle 31, paragraphe 6, et règle 32, paragraphe 3, du REMC
Lorsque la demande n’est pas conforme aux règles précédemment exposées, l’Office invite le demandeur à remédier à l’irrégularité constatée. Si celui-ci ne s’exécute pas, l’Office rejette la demande. La partie concernée peut former un recours contre cette décision.
Lorsqu’un échange de communications fait apparaître une différence entre la liste des produits et services de l’enregistrement maintenu et celle contenue dans la demande de marque communautaire lors de son dépôt, l’Office en informe non seulement le nouveau titulaire, s’il est partie à la demande d’enregistrement du transfert partiel, mais également le titulaire initial, qui reste la personne pouvant disposer à son gré de la liste des produits et services figurant dans l’enregistrement original. L’Office peut modifier la liste originale des produits et des services avec l’accord du titulaire initial. Si cet accord ne parvient pas à l’Office dans le délai imparti, la demande d’enregistrement du transfert est rejetée. La partie concernée peut frmer un recourscontre cette décision.
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4.3 Création d’une nouvelle demande ou d’un nouvel enregistrement de marque communautaire
Article 88 du RMC Règle 32, paragraphe 4, et règles 88 et 89 du REMC
Le transfert partiel conduit à la création d’une nouvelle demande ou d’un nouvel enregistrement de marque communautaire. Pour cette création, l’Office ouvre un dossier distinct, qui contiendra une copie complète du fichier électronique de la demande ou de l’enregistrement de marque original, la demande d’enregistrement d’un transfert ainsi que l’ensemble de la correspondance relative à cette demande de transfert. La nouvelle demande ou le nouvel enregistrement de marque se verra attribuer un nouveau numéro de dossier. Il aura la même date de dépôt et, le cas échéant, la même date de priorité que celles de la demande ou de l’enregistrement original de marque communautaire. Si le transfert partiel concerne une demande de marque communautaire, la nouvelle demande de marque sera soumise aux dispositions relatives à l’inspection publique des dossiers, prévue à l’article 88 du RMC.
En ce qui concerne la demande ou l’enregistrement original de marque communautaire, l’Office conserve dans ses dossiers une copie de la demande d’enregistrement du transfert, mais ne conserve généralement pas de copie de la correspondance ultérieure relative à cette demande.
5 Transfert au cours d’une autre procédure et taxes afférentes
Article 17, paragraphes 6 et 7, du RMC
Sans préjudice de la qualité pour agir à partir de la date de réception par l’Office de la demande d’enregistrement d’un transfert lorsque des délais doivent être observés, le nouveau titulaire devient automatiquement partie à toute procédure impliquant la marque en cause à compter de l’enregistrement du transfert.
Le dépôt d’une demande d’enregistrement d’un transfert est sans effet sur les délais qui courent déjà ou qui ont déjà été fixés par l’Office, notamment les délais pour le paiement des taxes. Aucun nouveau délai ne sera fixé pour le paiement. À compter de la date d’enregistrement du transfert, le nouveau titulaire est redevable de toute taxe due.
Par conséquent, au cours de la période séparant la date de dépôt de la demande d’enregistrement du transfert et la confirmation par l’Office de son inscription effective dans le registre ou dans le dossier, il convient que le titulaire initial et le nouveau titulaire collaborent activement et se communiquent les délais et la correspondance reçue dans le cadre de procédures inter partes.
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5.1 Questions spécifiques aux transferts partiels
Règle 32, paragraphe 5, du REMC
En cas de transfert partiel, le nouvel enregistrement ou la nouvelle demande de marque communautaire est réputé se situer à la même étape de la procédure que la demande ou l’enregistrement de marque initial (maintenu). Tout délai non encore expiré pour la demande ou l’enregistrement de marque communautaire original est réputé pendant aussi bien pour l’enregistrement ou la demande initial que pour le nouvel enregistrement et la nouvelle demande. Une fois le transfert enregistré, l’Office traite ces demandes ou enregistrements séparément et prend une décision distincte dans chaque cas.
Lorsqu’une demande ou un enregistrement de marque communautaire donne lieu au paiement de taxes qui ont été acquittées par le titulaire initial, le nouveau titulaire n’est redevable d’aucune taxe supplémentaire au titre de la nouvelle demande ou du nouvel enregistrement. La date pertinente étant celle de l’inscription du transfert dans le registre ou dans les dossiers, lorsque la taxe au titre de la demande ou l’enregistrement original pendant est acquittée après le dépôt de la demande d’enregistrement du transfert, mais avant l’enregistrement proprement dit, aucune taxe supplémentaire n’est due.
Article 26, paragraphe 2, du RMC Règle 4 et règle 9, paragraphes 3 et 5, du REMC Article 2, paragraphes 2 et 4, du RTMC
Lorsque le transfert partiel concerne une demande de marque communautaire et que les taxes par classe n’ont pas encore été acquittées ou l’ont été partiellement, l’Office procède à l’enregistrement du transfert dans les dossiers de la demande de marque communautaire maintenue et crée une nouvelle marque communautaire comme indiqué plus haut.
Lorsque la demande de marque communautaire portait, à l’origine, sur plus de trois classes, donnant lieu au paiement d’une taxe supplémentaire par classe, l’examinateur traite ces cas après l’inscription de l’enregistrement dans les dossiers et la création d’une nouvelle demande de marque communautaire, selon la procédure décrite ci- après.
Lorsque les taxes supplémentaires par classe sont payées avant l’enregistrement du transfert et qu’aucune taxe supplémentaire n’est due étant donné que la demande de marque communautaire maintenue ne comporte pas plus de trois classes, aucun remboursement n’est effectué du fait que les taxes ont été dûment payées à la date de paiement fixée.
Dans tous les autres cas, l’examinateur traite la demande de marque communautaire maintenue et la nouvelle demande séparément, mais sans réclamer une nouvelle taxe de base au titre de la nouvelle demande. Les taxes par classe pour la demande maintenue et la nouvelle demande sont déterminées en fonction de la situation existant après l’enregistrement du transfert. Si, par exemple, la demande initiale portait sur sept classes alors que la demande maintenue n’en comporte plus que trois et la nouvelle demande quatre, aucune taxe supplémentaire par classe n’est due pour la demande maintenue et une taxe sera due pour une seule classe pour la nouvelle demande.
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Lorsque plusieurs produits et services d’une classe particulière sont transférés alors que d’autres ne le sont pas, la classe en question devient payable tant pour la demande maintenue que pour la nouvelle demande. Le délai de paiement de la taxe supplémentaire ayant déjà été fixé et n’ayant pas expiré, il est suspendu par l’Office afin de lui permettre de déterminer le montant à payer compte tenu de la situation après l’enregistrement du transfert.
Article 47, paragraphes 1, 3 et 4, du RMC Règle 30, paragraphes 2 et 4, du REMC
Lorsque la demande d’enregistrement d’un transfert partiel porte sur un enregistrement de marque communautaire à renouveler, c’est-à-dire dans les six mois avant et après l’expiration de l’enregistrement initial, l’Office enregistre le transfert et procède au renouvellement et à la perception des taxes de renouvellement selon la procédure décrite ci-après.
Lorsqu’aucune demande de renouvellement n’a été déposée et qu’aucune taxe n’a été payée à ce titre avant l’enregistrement du transfert, les règles générales, en particulier celles relatives au paiement des taxes, s’appliquent à la fois à l’enregistrement maintenu et au nouvel enregistrement (demandes séparées, paiements séparés, si nécessaire).
Lorsque la demande de renouvellement a été déposée avant l’enregistrement du transfert, cette demande reste valable pour la nouvelle marque communautaire. Toutefois, bien que le titulaire initial reste partie à la procédure de renouvellement de l’enregistrement maintenu, le nouveau titulaire devient automatiquement partie à la procédure de renouvellement du nouvel enregistrement.
Dans ces cas, lorsque la demande de renouvellement a été déposée mais que les taxes afférentes n’ont pas été acquittées avant l’enregistrement du transfert, le montant des taxes dues est déterminé en fonction de la situation après l’enregistrement du transfert. En d’autres termes, le titulaire de la marque maintenue et le titulaire de la nouvelle marque sont tous deux tenus de payer la taxe de base pour le renouvellement ainsi que toute taxe supplémentaire par classe.
Lorsqu’une demande de renouvellement a été déposée avant l’enregistrement du transfert et que toutes les taxes de renouvellement applicables ont été acquittées avant cette date, aucune taxe de renouvellement supplémentaire n’est due après l’enregistrement du transfert. D’autre part, aucun remboursement n’est effectué au titre d’une taxe par classe déjà acquittée.
5.2 Transfert et procédure inter partes
Lorsqu’une demande d’enregistrement d’un transfert est déposée durant une procédure inter partes, plusieurs situations différentes peuvent se présenter. En ce qui concerne les enregistrements ou demandes de marque antérieurs sur lesquels l’opposition ou la requête en nullité est fondée, le nouveau titulaire ne devient partie à la procédure (ou ne fait valoir des observations) qu’après réception de la demande d’enregistrement du transfert par l’Office. Le principe de base est que le nouveau titulaire se substitue au titulaire initial dans la procédure. La pratique de l’Office en ce qui concerne les transferts dans les procédures d’opposition est décrite dans la
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partie C – Opposition, section 1 – Questions procédurales, point 6.5 – Changement des parties, des présentes directives.
6 Inscription au registre, notification et publication
6.1 Inscription au registre
Article 17, paragraphe 5, du RMC Règle 31, paragraphe 8, et règle 84, paragraphe 3, point g), du REMC
Lorsque la demande d’enregistrement d’un transfert satisfait toutes les conditions, le transfert est inscrit au registre s’il porte sur une marque communautaire enregistrée, ou dans le dossier correspondant, s’il porte sur une demande de marque communautaire.
L’inscription au registre comporte les renseignements suivants:
la date d’enregistrement du transfert; les nom et adresse du nouveau titulaire; les nom et adresse du représentant du nouveau titulaire, le cas échéant.
En cas de transfert partiel, l’inscription comporte également les informations suivantes:
une référence au numéro de l’enregistrement initial et le numéro du nouvel enregistrement;
la liste des produits et services maintenus dans l’enregistrement initial; et la liste des produits et services du nouvel enregistrement.
6.2 Notification
L’Office notifie l’enregistrement du transfert au demandeur.
Si la demande d’enregistrement d’un transfert porte également sur au moins une demande de marque communautaire, la notification fait référence à l’inscription correspondante du transfert dans les dossiers tenus par l’Office.
S’agissant de la notification à l’autre partie, il convient de distinguer entre les transferts complets et les transferts partiels.
Article 17, paragraphe 5, du RMC Règle 84, paragraphe 5, du REMC
En cas de transfert complet, la notification est adressée à la partie qui a présenté la demande d’enregistrement du transfert, c’est-à-dire le demandeur.
L’autre partie ne sera pas informée:
si le représentant du titulaire initial est également désigné pour représenter le nouveau titulaire (dans ce cas, le représentant recevra une communication au nom des deux parties); ou
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si le titulaire initial n’existe plus (décès, fusion).
Dans tous les autres cas, l’autre partie est informée du résultat de la procédure, c’est- à-dire l’enregistrement du transfert. L’autre partie ne reçoit pas d’information durant la procédure, sauf si des doutes sérieux se posent au sujet de la légalité de la demande d’enregistrement du transfert ou du transfert proprement dit.
Règle 32, paragraphes 3 et 4, du REMC
En cas de transfert partiel, le titulaire de la marque maintenue et le titulaire de la nouvelle marque doivent tous deux recevoir une notification, car deux demandes ou enregistrement de marques sont nécessairement concernés. Ainsi, une notification séparée est adressée au nouveau demandeur pour chaque demande de marque communautaire ayant fait l’objet d’un transfert partiel. En cas de transfert partiel, l’Office adresse une notification au nouveau titulaire de chaque enregistrement, qui contient, selon les cas, des indications relatives au paiement des taxes de renouvellement. Une notification séparée est adressée au titulaire de l’enregistrement maintenu.
Par ailleurs, lorsque, en cas de transfert partiel, il convient de clarifier ou de modifier la liste des produits et services maintenus dans la demande ou dans l’enregistrement de marque communautaire initial, la modification ou l’éclaircissement doit recevoir l’accord du titulaire de la demande ou de l’enregistrement maintenu (voir le point 4.2 ci-dessus).
6.3 Publication
Article 17, paragraphe 5, du RMC Règle 84, paragraphe 3, point g), et règle 85, paragraphe 2, du REMC
En ce qui concerne les enregistrements de marques communautaires, l’Office publie l’inscription au registre des transferts dans la partie C du Bulletin des marques communautaires.
Article 39 du RMC Règle 12 et règle 31, paragraphe 8, du REMC
Lorsque la demande d’enregistrement d’un transfert porte sur une demande de marque communautaire publiée en vertu de l’article 39 du RMC et de la règle 12 du REMC, la publication de l’enregistrement de la marque et l’inscription au registre mentionnent d’emblée le nouveau titulaire. La publication de l’enregistrement fait référence à la publication antérieure.
Article 39 du RMC Règle 12 du REMC
Lorsque le transfert concerne une demande de marque communautaire non encore publiée, la publication au titre de l’article 39 du RMC et de la règle 12 du REMC mentionne le nom du nouveau titulaire sans préciser que la demande a fait l’objet d’un
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transfert. Ceci s’applique également en cas de transfert partiel d’une demande de marque communautaire non publiée.
7 Transferts de dessins et modèles communautaires enregistrés
Article 1, paragraphe 3, articles 27, 28, 33, 34 et article 107, paragraphe 2, point f), du RDC Article 23, article 61, paragraphe 2, article 68, paragraphe 1, point c), et article 69, paragraphe 2, point i), du REDC Annexes 16 et 17 du RTDC
Les dispositions contenues dans le RDC, le REDC et le RTDC au sujet des transferts correspondent aux dispositions du RMC, du REMC et du RTMC.
Par conséquent, les principes de droit et la procédure applicables à l’enregistrement des transferts de marque s’appliquent, mutatis mutandis, aux dessins et modèles communautaires.
Il n’existe que quelques exceptions et spécificités, qui sont détaillées ci-après.
7.1 Droits fondés sur une utilisation antérieure d’un dessin ou modèle communautaire
Article 22, paragraphe 4, du RDC
Le droit fondé sur une utilisation antérieure d’un dessin ou modèle communautaire ne peut pas être transféré, à l’exception du cas où le tiers, qui était titulaire du droit avant la date de dépôt ou de priorité de la demande de dessin ou modèle communautaire, est une entreprise, pour la partie de l’activité dans le cadre de laquelle l’utilisation a été faite ou les préparatifs réalisés.
7.2 Taxes
Annexes 16 et 17 du RTDC
Une taxe de 200 EUR pour l’enregistrement d’un transfert est appliquée par dessin ou modèle et non par demande multiple. La même règle s’applique pour le plafond de 1 000 EUR en cas de demandes multiples.
Exemple 1: Dans une demande multiple concernant 10 dessins ou modèles, 6 sont transférés au même ayant cause. La taxe s’élève à 1 000 EUR à condition qu’une seule demande d’enregistrement soit déposée pour les 6 transferts ou que plusieurs demandes d’enregistrement de transfert soient déposées le même jour.
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Exemple 2: Dans une demande multiple concernant 10 dessins ou modèles, 5 sont transférés au même ayant cause. Le transfert porte également sur un autre dessin ou modèle ne figurant pas dans cette demande multiple. La taxe s’élève à 1 000 EUR à condition:
qu’une seule demande d’enregistrement soit déposée pour ces 6 transferts ou que plusieurs demandes soient déposées le même jour; et
que le titulaire du dessin ou modèle communautaire et l’ayant cause soient les mêmes dans les 6 cas.
8 Transferts de marques internationales
Le système de Madrid autorise le «changement de propriété» d’un enregistrement international. Toutes les demandes d’enregistrement d’un changement de propriété doivent être présentées sur un formulaire MM5 soit directement au Bureau international par le titulaire enregistré, soit à l’office national du nouveau titulaire (cessionnaire). La demande d’enregistrement d’un transfert ne peut pas être directement présentée au Bureau international par le nouveau titulaire. Le formulaire de demande d’enregistrement de l’OHMI ne doit pas être utilisé à cet effet.
Des informations détaillées sur les changements de propriété peuvent être consultées aux points B.II.60.01 à 67.02 du Guide pour l’enregistrement international des marques en vertu de l’arrangement de Madrid et du Protocole de Madrid (www.wipo.int/madrid/fr/guide/).
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 3
LA MARQUE COMMUNAUTAIRE EN TANT QU’OBJET DE PROPRIÉTÉ
CHAPITRE 2
LICENCES
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Table des matières
1 Introduction................................................................................................ 4 1.1 Contrats de licence .................................................................................... 4 1.2 Droit applicable .......................................................................................... 4 1.3 Avantages de l’enregistrement d’une licence ..........................................5
2 Enregistrement d’une licence pour une marque communautaire ou une demande de marque communautaire............................................... 6 2.1 Formulaire et demandes relatives à plusieurs licences .......................... 6 2.2 Langues ......................................................................................................6 2.3 Taxes...........................................................................................................7 2.4 Demandeurs et contenu obligatoire de la demande ................................ 7
2.4.1 Demandeurs ................................................................................................... 7 2.4.2 Indications obligatoires concernant la marque communautaire concédée
en licence et le licencié................................................................................... 8 2.4.3 Conditions à remplir par le demandeur – signature, preuve de la licence,
représentation................................................................................................. 8 2.4.4 Représentation ............................................................................................. 11
2.5 Contenu facultatif de la demande ........................................................... 11 2.6 Examen de la demande d’enregistrement .............................................. 12
2.6.1 Taxes ............................................................................................................ 12 2.6.2 Examen des formalités obligatoires ............................................................. 12 2.6.3 Examen des éléments facultatifs.................................................................. 14
2.7 Procédure d’enregistrement et publications .......................................... 15
3 Radiation ou modification d’une licence concernant une marque communautaire ou une demande de marque communautaire............ 16 3.1 Compétence, langues, présentation de la demande.............................. 16 3.2 Demandeur................................................................................................ 16
3.2.1 Radiation d’une licence ................................................................................ 17 3.2.2 Modification d’une licence ............................................................................ 17
3.3 Contenu de la demande ........................................................................... 18 3.4 Taxes......................................................................................................... 18
3.4.1 Radiation d’une licence ................................................................................ 18 3.4.2 Modification d’une licence ............................................................................ 19
3.5 Examen de la demande............................................................................ 19 3.5.1 Taxes ............................................................................................................ 19 3.5.2 Examen par l’Office ...................................................................................... 19
3.6 Enregistrement et publication ................................................................. 20
4 Transfert d’une licence concernant une marque communautaire ou demande de marque communautaire .................................................... 20 4.1 Définition du transfert d’une licence....................................................... 20
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4.2 Règles applicables ................................................................................... 20
5 Enregistrement de licences concernant des dessins et modèles communautaires enregistrés.................................................................. 21 5.1 Dessins et modèles communautaires enregistrés................................. 21 5.2 Demande d’enregistrement multiple de dessins ou modèles
communautaires....................................................................................... 21
6 Enregistrement de licences concernant des marques internationales ......................................................................................... 22
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1 Introduction
Articles 22, 23 et 24 du RMC Articles 27, 32 et 33 du RDC
Les marques communautaires enregistrées et les demandes de marques communautaires peuvent faire l’objet de contrats de licence (licences).
Les dessins et modèles communautaires enregistrés et les demandes d’enregistrement d’un dessin ou modèle communautaire peuvent faire l’objet de licences.
Les paragraphes 1 à 4 ci-dessous examinent les licences de marques afférentes aux marques communautaires enregistrées et aux demandes de marques communautaires. Les dispositions contenues dans le RDC et le REDC traitant des licences de dessins et modèles sont pratiquement identiques aux dispositions équivalentes respectives du RMC et du REMC. Dès lors, l’exposé qui suit s’applique mutatis mutandis aux dessins et modèles communautaires. Les exceptions et spécificités propres aux dessins et modèles communautaires sont détaillées au paragraphe 5 ci-dessous. Les exceptions et spécificités propres aux marques internationales sont énoncées au paragraphe 6 ci-dessous.
1.1 Contrats de licence
Une licence de marque est un contrat en vertu duquel le titulaire ou demandeur (ci-après dénommé le «titulaire») d’une marque (le concédant), tout en conservant son droit de propriété, autorise un tiers (le licencié) à utiliser la marque dans la vie des affaires, conformément aux modalités et conditions exposées dans le contrat.
Une licence renvoie à une situation dans laquelle les droits du licencié afférents à une marque communautaire découlent de rapports contractuels avec le titulaire. Le consentement du titulaire à l’utilisation de la marque par un tiers, ou la tolérance du titulaire à cet égard, ne constitue pas une licence.
1.2 Droit applicable
Article 16 du RMC
Le RMC n’a pas la compétence pour établir des dispositions complètes et unifiées applicables aux licences de marques communautaires ou de demandes de marques communautaires. Ainsi, l’article 16 du RMC fait référence au droit d’un État membre en ce qui concerne l’acquisition, la validité et l’opposabilité de la marque communautaire en tant qu’objet de propriété. À cette fin, une licence concernant une marque communautaire est assimilée dans sa totalité et pour l’ensemble du territoire de l’Union européenne à une licence concernant une marque enregistrée dans l’État membre dans lequel le titulaire ou demandeur de la marque communautaire a son siège ou son domicile. Si le titulaire n’a pas de siège ou de domicile dans un État membre, elle est traitée comme une licence concernant une marque enregistrée dans l’État membre dans lequel le titulaire dispose d’un établissement ou, à défaut, comme une licence concernant une marque enregistrée en Espagne.
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Cette règle ne s’applique toutefois que dans la mesure où les articles 17 à 24 du RMC ne prévoient pas de dispositions contraires.
L’article 16 du RMC se limite à l’opposabilité d’une licence en tant qu’objet de propriété et ne s’étend pas au droit des contrats. L’article 16 du RMC ne régit pas le droit applicable ou la validité d’un contrat de licence. Dès lors, la liberté des parties contractantes de soumettre le contrat de licence à une législation nationale donnée n’est pas affectée par le RMC.
1.3 Avantages de l’enregistrement d’une licence
Article 22, paragraphe 5, article 23, paragraphes 1 et 2, et article 50, paragraphe 3, du RMC
La demande d’inscription au registre d’un contrat de licence n’est pas obligatoire. En outre, si une partie à une procédure devant l’Office doit apporter la preuve de l’usage d’une marque communautaire, dès lors qu’un tel usage a été fait par un licencié, il n’est pas nécessaire que la licence ait été inscrite au registre pour que ledit usage soit considéré comme ayant reçu le consentement du titulaire conformément à l’article 15, paragraphe 2, du RMC. Cependant, cet enregistrement présente certains avantages.
a) Compte tenu de la disposition de l’article 23, paragraphe 1, du RMC, lorsque des tiers sont susceptibles d’avoir acquis des droits ou d’avoir inscrit au registre des droits sur la marque qui sont incompatibles avec la licence enregistrée, le licencié peut se prévaloir des droits conférés par cette licence uniquement:
si la licence a été inscrite au registre des marques communautaires, ou
en l’absence d’inscription de la licence, si le tiers a acquis ses droits ultérieurement à tout acte légal visé aux articles 17, 19 et 22 du RMC (notamment transfert, droit réel ou licence antérieure) en ayant connaissance de l’existence de la licence.
b) Dans le cas où une licence de marque communautaire est inscrite au registre, la renonciation totale ou partielle à cette marque par son titulaire n’est inscrite au registre que si le titulaire justifie qu’il a informé le licencié de son intention d’y renoncer.
Le titulaire d’une licence enregistrée est par conséquent en droit d’être préalablement informé par le titulaire de la marque de son intention de renoncer à la marque.
c) Dans le cas où une licence pour une marque communautaire est inscrite au registre, l’Office notifie au licencié au moins six mois avant l’expiration de l’enregistrement que l’enregistrement est en passe d’expirer. L’Office notifie également au licencié toute perte de droits et l’expiration de l’enregistrement, le cas échéant.
d) L’enregistrement de licences et leur modification et/ou radiation sont importants pour maintenir la véracité du registre, notamment dans le cas de procédures inter partes.
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2 Enregistrement d’une licence pour une marque communautaire ou une demande de marque communautaire
Article 22, paragraphe 5, du RMC Règles 33, 34 et règle 84, paragraphe 3, point j), du REMC
Une licence peut être enregistrée tant pour les demandes de marques communautaires que pour les marques communautaires enregistrées.
La demande d’enregistrement d’une licence doit réunir les conditions suivantes.
2.1 Formulaire et demandes relatives à plusieurs licences
Règle 83, paragraphe 1, point e), et règle 95, points a) et b), du REMC
Il est vivement recommandé de déposer la demande d’enregistrement d’une licence concernant une marque communautaire au moyen du formulaire de demande d’inscription de l’Office. Ce formulaire peut être obtenu gratuitement dans les langues officielles de l’Union européenne. Il peut être téléchargé depuis le site internet de l’OHMI.
Toutes les versions linguistiques de ce formulaire peuvent être utilisées, pour autant qu’il soit rempli dans l’une des langues mentionnées au paragraphe 2.2 ci-dessous. Cela concerne notamment la liste des produits et services et/ou le territoire.
Règle 31, paragraphe 7, et règle 33, paragraphe 1, du REMC
Il est possible de ne présenter qu’une seule demande d’enregistrement d’une licence concernant deux ou plusieurs marques communautaires enregistrées ou demandes de marques communautaires si le titulaire et le licencié enregistrés sont identiques et si les contrats ont les mêmes clauses, limitations et modalités dans tous les cas (voir paragraphe 2.5 ci-dessous).
2.2 Langues
Règle 95, point a), du REMC
La demande d’enregistrement d’une licence concernant une demande de marque communautaire peut être effectuée dans la première ou deuxième langue de la demande de marque communautaire.
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Règle 95, point b), du REMC
La demande d’enregistrement d’une licence concernant une marque communautaire enregistrée doit être effectuée dans l’une des cinq langues de l’Office, à savoir l’anglais, le français, l’allemand, l’italien ou l’espagnol.
2.3 Taxes
Article 162, paragraphe 2, points c) et d), du RMC Règle 33, paragraphes 1 et 4, du REMC Article 2, paragraphe 23, du RTMC
La demande d’enregistrement d’une licence n’est réputée effectuée qu’après paiement de la taxe. Cette taxe s’élève à 200 EUR pour chaque marque communautaire pour laquelle l’enregistrement d’une licence est demandé.
Toutefois, si plusieurs enregistrements de licences ont été sollicités dans une seule et même demande, si le titulaire enregistré et le licencié sont identiques, et si les clauses contractuelles sont les mêmes dans tous les cas, la taxe est plafonnée à 1 000 EUR.
Le même plafond s’applique si plusieurs enregistrements de licences sont demandés simultanément, alors qu’ils auraient pu faire l’objet d’une seule et même demande, et si le titulaire enregistré et le licencié sont identiques dans tous les cas. En outre, les clauses contractuelles doivent être les mêmes. Par exemple, une licence exclusive et une licence non exclusive ne peuvent pas être sollicitées dans la même demande, même si elles concernent les mêmes parties.
Une fois la taxe correspondante payée, celle-ci n’est pas remboursée si la demande d’enregistrement de la licence est rejetée ou retirée.
2.4 Demandeurs et contenu obligatoire de la demande
2.4.1 Demandeurs
Article 22, paragraphe 5, du RMC
La demande d’enregistrement d’une licence peut être déposée auprès de l’Office par:
a) le ou les titulaires de la marque communautaire, ou
b) le ou les titulaires de la marque communautaire conjointement avec le ou les licenciés, ou
c) le ou les licenciés.
Les conditions formelles auxquelles la demande doit répondre dépendent du statut du demandeur. La première et la deuxième alternative sont recommandées, car elles permettent un traitement plus rapide et plus aisé de la demande d’enregistrement de la licence.
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2.4.2 Indications obligatoires concernant la marque communautaire concédée en licence et le licencié
Règle 31 et règle 33, paragraphe 1, du REMC
La demande d’enregistrement d’une licence doit contenir les informations suivantes:
Règle 31, paragraphe 1, point a), et règle 33, paragraphe 1, du REMC
a) le numéro d’enregistrement de la marque communautaire concernée. Si la demande concerne plusieurs marques communautaires, chacun des numéros doit être indiqué.
Règle 1, paragraphe 1, point b), règle 31, paragraphe 1, point b) et règle 33, paragraphe 1, du REMC
b) le nom, l’adresse et la nationalité du licencié et l’État dans lequel il a son domicile, son siège ou un établissement.
Règle 1, paragraphe 1, point e), règle 31, paragraphe 2, et règle 33, paragraphe 1, du REMC
c) si le licencié désigne un représentant, les nom et numéro d’identification attribués au représentant par l’Office doivent être indiqués. Si le représentant n’a pas encore reçu de numéro d’identification, l’adresse professionnelle doit être indiquée.
2.4.3 Conditions à remplir par le demandeur – signature, preuve de la licence, représentation
Règle 79 et règle 82, paragraphe 3, du REMC
Les exigences concernant la signature, la preuve de la licence et la représentation varient selon le demandeur. Lorsqu’une signature est exigée, dans les communications électroniques, l’indication du nom de l’expéditeur vaut signature.
2.4.3.1 Demande effectuée par le seul titulaire de la marque communautaire
Règle 1, paragraphe 1, point b), et règle 33, paragraphe 1, du REMC
Lorsqu’une demande est effectuée par le seul titulaire de la marque communautaire, elle doit être signée par celui-ci. En cas de copropriété, tous les cotitulaires doivent signer la demande ou désigner un représentant commun.
Aucune preuve de la licence n’est nécessaire.
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L’Office n’informe pas le licencié de la demande d’enregistrement de la licence. Toutefois, il informe le licencié de l’inscription de la licence au registre.
Si le licencié dépose auprès de l’Office une déclaration dans laquelle il s’oppose à l’enregistrement de la licence, l’Office transmet la déclaration au titulaire de la marque communautaire à titre purement informatif. L’Office ne donne pas suite à la déclaration mais enregistre la licence. Tout licencié qui est en désaccord avec l’enregistrement de la licence après que celui-ci a été effectué peut utiliser la procédure de demande de radiation ou modification de la licence (voir paragraphe 3 ci-dessous).
L’Office ne tient pas compte du fait que les parties, bien qu’ayant conclu un contrat de licence, aient convenu ou non de l’enregistrer auprès de l’Office. Tout litige sur la question de savoir si et comment la licence doit être enregistrée est résolu entre les parties concernées conformément au droit national applicable (article 16 du RMC).
2.4.3.2 Demande déposée conjointement par le titulaire de la marque communautaire et le licencié
Lorsque la demande est effectuée conjointement par le titulaire de la marque communautaire et son licencié, elle doit être signée à la fois par le titulaire de la marque communautaire et par le licencié. En cas de copropriété, tous les cotitulaires doivent signer la demande ou désigner un représentant commun
Dans ce cas, la signature des deux parties constitue la preuve de la licence.
En cas d’irrégularité de forme concernant la signature du licencié ou le représentant, la demande est acceptée dans la mesure où elle serait également recevable si elle était déposée par le seul titulaire de la marque communautaire.
Il en va de même en cas d’irrégularité concernant la signature ou le représentant du titulaire de la marque communautaire, dans la mesure où la demande serait recevable si elle était effectuée par le seul licencié.
2.4.3.3 Demande effectuée par le seul licencié
La demande peut aussi être effectuée par le seul licencié. Dans ce cas, elle doit être signée par le licencié.
En outre, une preuve de la licence doit être fournie.
2.4.3.4 Preuve de la licence
La preuve de la licence est suffisante si la demande d’enregistrement de la licence est accompagnée de l’un des éléments suivants.
Une déclaration, signée par le titulaire de la marque communautaire ou son représentant, donnant son accord à l’enregistrement de la licence.
Conformément à la règle 31, paragraphe 5, point a), du REMC, la preuve est également jugée suffisante si la demande d’enregistrement de la licence est
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signée par les deux parties. Ce cas a déjà été examiné au paragraphe 2.4.3.2 ci-dessus.
Le contrat de licence, ou un extrait de celui-ci, sur lequel figurent les parties et la marque communautaire concédée en licence, ainsi que les signatures des parties.
Il suffit que le contrat de licence ait été déposé. Souvent, les parties au contrat de licence ne souhaitent pas divulguer tous les détails du contrat qui peut contenir des informations confidentielles concernant les redevances ou d’autres modalités ou conditions de la licence. Dans de tels cas, il suffit de fournir une partie ou un extrait du contrat de licence, à condition que ladite partie ou ledit extrait identifie les parties au contrat de licence, précise que la marque communautaire en question fait l’objet d’une licence et porte les signatures des deux parties. Tous les autres éléments peuvent être omis ou masqués.
Une déclaration de licence non certifiée sur la base du formulaire international type complet de demande d’inscription de licence de l’OMPI (joint en annexe à la recommandation commune concernant les licences de marques adoptée par l’Assemblée de l’Union de Paris et l’Assemblée générale de l’OMPI les 25 septembre et 3 octobre 2000). Le formulaire doit être signé par le titulaire de la marque communautaire ou son représentant et par le licencié ou son représentant. Il est disponible à l’adresse:
https://www.wipo.int/export/sites/www/about-ip/fr/development_iplaw/pdf/pub835a.pdf
Le dépôt d’une déclaration de licence non certifiée sur un formulaire type de l’OMPI est suffisant.
Les documents originaux font partie intégrante du dossier et ne peuvent donc pas être renvoyés à la personne qui les a déposés. De simples photocopies suffisent. Il n’est pas nécessaire que les originaux ou les photocopies soient certifiés conformes ou authentifiés.
Règle 95, points a) et b), et règle 96, paragraphe 2, du REMC
La preuve de la licence doit être:
a) dans la langue de l’Office qui est devenue la langue de la procédure d’enregistrement de la licence, voir paragraphe 2.1 ci-dessus;
b) dans l’une des langues officielles de l’Union européenne autre que celle de la procédure; dans ce cas, l’Office peut exiger qu’une traduction du document soit produite dans une langue de l’Office dans un délai imparti par l’Office.
Lorsque les documents justificatifs ne sont pas présentés soit dans l’une des langues officielles de l’Union européenne, soit dans la langue de la procédure, l’Office peut exiger une traduction dans la langue de la procédure ou, au choix de la partie qui demande l’enregistrement de la licence, dans toute langue de travail de l’Office. Pour la remise de cette traduction, l’Office fixe un délai de deux mois à compter de la date de notification de cette communication. Si la traduction n’est pas présentée dans ce délai, le document n’est pas pris en compte et il est réputé n’être jamais parvenu.
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2.4.4 Représentation
Article 92, paragraphe 2, et article 93, paragraphe 1, du RMC
Les règles générales relatives à la représentation s’appliquent (voir Directives, Partie A, Dispositions générales, Chapitre 5, Représentation professionnelle).
Lorsque le demandeur de l’inscription n’a ni domicile, ni siège, ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne et a effectué seul la demande, le fait de ne pas satisfaire à l’exigence de représentation empêche le traitement de la demande. Le demandeur de l’inscription est notifié sous forme de lettre d’information et toutes les taxes sont remboursées. Le demandeur de l’inscription est alors libre de soumettre une nouvelle demande.
2.5 Contenu facultatif de la demande
Règle 34 du REMC
Selon la nature de la licence, la demande d’enregistrement peut contenir la demande d’enregistrement de la licence ainsi que d’autres indications, à savoir celles visées aux points a) à e) ci-dessous. Ces indications peuvent être individuelles ou associées, porter sur une licence (par ex. une licence exclusive limitée dans le temps) ou sur plusieurs licences (par ex. une licence exclusive pour A concernant l’État membre X et une autre pour B concernant l’État membre Y). Elles ne sont inscrites au registre par l’Office que si cela est précisé expressément dans la demande d’enregistrement de la licence. À défaut d’une telle demande explicite, l’Office n’inscrit pas au registre des indications figurant dans le contrat de licence qui sont soumises comme preuve de la licence, par exemple.
Cependant, s’il est demandé qu’une ou plusieurs de ces indications soient inscrites au registre, les précisions suivantes doivent être apportées.
Règle 34, paragraphe 1, point c), et règle 34, paragraphe 2, du REMC
a) Si la demande d’enregistrement concerne une licence limitée à certains produits et services, les produits ou services pour lesquels la licence a été accordée doivent être indiqués.
Règle 34, paragraphe 1, point d), et règle 34, paragraphe 2, du REMC
b) Si la demande porte sur l’enregistrement de la licence comme une licence territorialement limitée, la demande doit indiquer la partie de l’Union européenne pour laquelle la licence a été accordée. Une partie de l’Union européenne peut correspondre à un ou plusieurs États membres ou à une ou plusieurs régions administratives dans un État membre.
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Article 22, paragraphe 1, du RMC Règle 34, paragraphe 1, point a), du REMC
c) Si la demande porte sur l’enregistrement d’une licence exclusive, une déclaration à cet effet doit être jointe à la demande d’enregistrement.
Règle 34, paragraphe 1, point e), du REMC
d) Si la demande porte sur l’enregistrement d’une licence accordée pour une période limitée, la date d’expiration de la licence doit être précisée. En outre, la date de début de la licence peut être indiquée.
Règle 34, paragraphe 1, point b), du REMC
e) Si la licence est accordée par un licencié dont la licence est déjà inscrite au registre des marques communautaires, la demande d’enregistrement peut indiquer qu’il s’agit d’une sous-licence. Les sous-licences ne peuvent être enregistrées sans enregistrement préalable de la licence principale.
2.6 Examen de la demande d’enregistrement
2.6.1 Taxes
Règle 33, paragraphe 2, du REMC
Lorsque la taxe requise n’a pas été perçue, l’Office notifie au demandeur que la demande est réputée ne pas avoir été déposée parce que la taxe en question n’a pas été payée. Toutefois, une nouvelle demande peut être déposée à tout moment, pour autant que la taxe correcte soit payée d’emblée.
2.6.2 Examen des formalités obligatoires
Règle 33, paragraphe 3, du REMC
L’Office vérifie si la demande d’enregistrement de la licence remplit les conditions de forme visées au paragraphe 2.4 ci-dessus [indication du (des) numéros(s) de marque communautaire, des informations requises concernant le licencié ou son représentant le cas échéant].
La validité du contrat de licence n’est pas examinée.
Article 93, paragraphe 1, du RMC Règles 33, 76 et 77 du REMC
L’Office vérifie si la demande d’enregistrement de la licence a été dûment signée. Lorsqu’elle est signée par le représentant du licencié, un pouvoir peut être exigé par l’Office ou, dans le cas d’une procédure inter partes, par l’autre partie à cette procédure. À défaut de présentation de ce pouvoir, la procédure se poursuit comme si
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aucun représentant n’avait été désigné. Lorsque la demande d’enregistrement de la licence est signée par le représentant du titulaire qui a déjà été désigné comme représentant pour la marque communautaire en question, les conditions relatives à la signature et aux pouvoirs sont remplies.
Articles 92, paragraphe 2, et 93, paragraphe 1, du RMC
L’examen consiste notamment à déterminer si le demandeur de l’inscription (à savoir le titulaire de la marque communautaire ou le licencié) a l’obligation d’être représenté devant l’Office (voir paragraphe 2.4.4 ci-dessus).
Règle 33, paragraphe 3, du REMC
L’Office informe le demandeur de l’inscription par écrit de toute irrégularité constatée dans la demande. S’il n’est pas remédié à ces irrégularités dans le délai fixé dans la communication en question, qui est généralement de deux mois à compter de la date de notification de ladite communication, l’Office rejette la demande d’enregistrement de la licence. La partie concernée peut former un recours contre cette décision (voir décision 2009-1 du 16/06/2009 du présidium des chambres de recours relative aux instructions aux parties à des procédures devant les chambres de recours).
Lorsque la demande est déposée conjointement par le titulaire de la marque communautaire et le licencié, l’Office informe le titulaire de la marque communautaire et transmet une copie au licencié.
Dans la mesure où le licencié a également déposé et signé la demande, celui-ci n’est pas autorisé à contester l’existence ou la portée de la licence.
Lorsque la demande d’enregistrement de la licence est déposée par le seul titulaire de la marque communautaire, l’Office n’informe pas le licencié. L’examen de la preuve de la licence est réalisé d’office. L’Office ne tient pas compte des déclarations ou allégations du licencié concernant l’existence ou la portée de la licence ou son enregistrement; le licencié ne peut s’opposer à l’enregistrement d’une licence.
Règle 33, paragraphe 3, du REMC
Dans le cas où la demande est déposée par le licencié sur la base d’une copie du contrat de licence et si l’Office a des motifs raisonnables de douter de la véracité des documents, il invite, par écrit, le licencié à lever ces doutes. Dans ce cas, le licencié a la charge de la preuve de l’existence de la licence, à savoir qu’il est tenu de convaincre l’Office de la véracité des documents. En pareil cas, l’Office peut, dans les limites de son examen d’office (article 76, paragraphe 1, du RMC), inviter le titulaire de la marque communautaire à faire part de ses observations. Si ce dernier déclare que les documents sont falsifiés, cela suffit pour que l’Office rejette l’enregistrement d’une licence, sauf si le licencié produit une ordonnance d’une juridiction d’un État membre de l’Union européenne en sa faveur. Dans tous les cas, si ces doutes ne peuvent être levés, l’enregistrement de la licence est rejeté. Dans ces circonstances, la procédure demeure toujours ex parte même si le titulaire de la marque communautaire est entendu; il n’est pas partie à la procédure.
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2.6.3 Examen des éléments facultatifs
Règle 34 du REMC
Si la licence doit être enregistrée comme l’une des licences suivantes:
une licence exclusive, une licence temporaire, une licence territorialement limitée, une licence limitée à certains produits ou services, ou une sous-licence,
l’Office vérifie si les éléments énoncés au paragraphe 2.4 ci-dessus sont indiqués.
Règle 34, paragraphes 1 et 2, du REMC
S’agissant de l’indication «licence exclusive», l’Office accepte uniquement ce terme et refuse toute autre formulation. Si la mention «licence exclusive» n’est pas expressément indiquée, l’Office considère la licence comme non exclusive.
Si la demande d’enregistrement précise qu’il s’agit d’une licence limitée à certains produits et services couverts par la marque communautaire, l’Office vérifie si les produits et services sont correctement groupés et effectivement couverts par la marque communautaire.
Règle 34, paragraphe 1, point b), du REMC
S’agissant d’une sous-licence, l’Office vérifie si elle a été accordée par un licencié dont la licence a déjà été inscrite au registre. L’Office refuse l’enregistrement d’une sous- licence si la licence principale n’a pas été inscrite au registre. Toutefois, l’Office ne vérifie pas la validité de la demande d’enregistrement d’une sous-licence comme licence exclusive si la licence principale n’est pas une licence exclusive. De même, il ne vérifie pas si le contrat de licence principal exclut la concession de sous-licences.
Il appartient au concédant de veiller à ne pas conclure et enregistrer de contrats incompatibles et de radier ou de modifier les inscriptions qui ne sont plus valables. Par exemple, si une licence exclusive a été enregistrée sans limitation quant aux produits et au territoire, et si l’enregistrement d’une autre licence exclusive est demandé, l’Office enregistre cette seconde licence, quand bien même les deux licences semblent incompatibles au premier abord. Il convient de supposer que le second contrat de licence est compatible avec le premier d’emblée (et l’inscription n’est simplement pas assez précise quant au territoire ou aux produits) ou suite à une évolution de la situation contractuelle qui n’a pas été communiquée au registre des marques communautaires.
Les parties sont toutefois encouragées à mettre régulièrement et rapidement à jour leurs informations du registre au moyen d’une radiation ou d’une modification de licences existantes (voir paragraphe 3 ci-dessous).
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Article 22, paragraphe 1, du RMC Règles 33, paragraphe 3, et r34, du REMC
Si les éléments visés au paragraphe 2.5 ne sont pas indiqués, l’Office invite le demandeur de l’enregistrement de la licence à soumettre les informations complémentaires. Si le demandeur ne répond pas à cette communication, l’Office ne tient pas compte de ces éléments et enregistre la licence sans les mentionner. Le demandeur est notifié par une décision susceptible de recours.
2.7 Procédure d’enregistrement et publications
Règle 33, paragraphe 4, du REMC
S’agissant des demandes de marque communautaire, la licence est mentionnée dans le dossier de la demande de marque communautaire concernée qui est tenu par l’Office.
Règle 84, paragraphe 3, point j), et règle 85, paragraphe 2, du REMC
Si la marque est enregistrée, la licence est publiée au Bulletin des marques communautaires et inscrite au registre des marques communautaires.
Règle 84, paragraphe 5, du REMC
L’Office notifie aux deux parties que la licence a été inscrite dans les dossiers tenus par l’Office. Si les deux parties ont désigné un représentant commun, celui-ci est informé.
Article 22, paragraphe 5, du RMC Règle 84, paragraphe 3, point j), et règle 85, paragraphe 2, du REMC
S’agissant des marques communautaires, l’Office inscrit la licence au registre des marques communautaires et publie cette inscription au Bulletin des marques communautaires.
Le cas échéant, l’inscription dans le registre mentionne que la licence est:
une licence exclusive, une licence temporaire, une licence territorialement limitée, une sous-licence, ou une licence limitée à certains produits ou services couverts par la marque
communautaire.
Seuls ces simples faits sont mentionnés. Les détails suivants ne sont pas publiés:
la période de validité d’une licence temporaire, le territoire couvert par un contrat territorialement limité, les produits et services couverts par une licence partielle.
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L’accès à ces informations peut être obtenu par l’inspection publique (voir Directives, Partie E, Opérations d’enregistrement, Section 5, Inspection publique).
Les licences sont publiées dans la Partie C.4 du Bulletin.
Règle 84, paragraphe 5, du REMC
L’Office informe le demandeur de l’inscription que la licence est enregistrée. Lorsque la demande d’enregistrement de la licence a été déposée par le licencié, l’Office informe également le titulaire de la marque communautaire de l’enregistrement.
3 Radiation ou modification d’une licence concernant une marque communautaire ou une demande de marque communautaire
Règle 35, paragraphe 1, du REMC
L’enregistrement d’une licence peut faire l’objet d’une radiation ou d’une modification à la demande de l’une des parties intéressées, à savoir le demandeur ou titulaire de la marque communautaire ou le licencié enregistré.
L’Office refuse la radiation, le transfert et/ou la modification d’une licence ou sous-licence si la licence principale n’a pas été inscrite au registre.
3.1 Compétence, langues, présentation de la demande
Article 133 du RMC Règle 35, paragraphes 3, 6 et 7, du REMC
Les paragraphes 2.1 et 2.2 ci-dessus sont applicables.
Il est vivement recommandé de déposer la demande de radiation d’une licence au moyen du formulaire de demande d’inscription de l’Office. Ce formulaire peut être obtenu gratuitement dans les langues officielles de l’Union européenne. Il peut être téléchargé depuis le site internet de l’OHMI. Les parties à la procédure peuvent également utiliser le formulaire international type n° 1 de l’OMPI, Requête en modification/radiation d’inscription de licence, qui peut être téléchargé depuis l’adresse https://www.wipo.int/export/sites/www/about-ip/fr/development_iplaw/pdf/pub835a.pdf, ou un formulaire au contenu et format similaires.
3.2 Demandeur
Règle 35, paragraphe 1, du REMC
La demande de radiation ou de modification de l’enregistrement d’une licence peut être déposée par:
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a) le demandeur ou titulaire de la marque communautaire conjointement avec le licencié,
b) le demandeur ou titulaire de la marque communautaire, ou
c) le licencié enregistré.
3.2.1 Radiation d’une licence
Règle 35, paragraphe 4, du REMC
Si le demandeur ou titulaire de la marque communautaire et le licencié déposent une demande commune ou si le licencié seul présente une demande, aucune preuve de la radiation de la licence n’est exigée puisque la demande elle-même sous-entend une déclaration du licencié par laquelle il consent à la radiation de l’enregistrement de la licence. Lorsque la demande de radiation est déposée par le seul demandeur ou titulaire de la marque communautaire, elle doit être accompagnée de preuves établissant que la licence enregistrée n’existe plus ou d’une déclaration du licencié par laquelle celui-ci consent à la radiation.
Lorsque seul le licencié enregistré présente la demande de radiation, le demandeur ou titulaire de la marque communautaire n’est pas informé de cette demande. Toutes observations déposées par le titulaire sont transmises au licencié mais n’empêchent pas la radiation de la licence. Le paragraphe 2.4.3.1 s’applique mutatis mutandis.
Si le titulaire de la marque communautaire accuse le licencié de fraude, il doit présenter une ordonnance du tribunal à cet effet. Il n’appartient pas à l’Office de conduire une enquête à cet égard.
Lorsque l’enregistrement de plusieurs licences a été demandé simultanément, il est possible de radier l’une de ces licences individuellement. En pareil cas, un nouveau numéro d’inscription est créé pour la licence radiée.
L’inscription au registre de licences limitées dans le temps, c’est-à-dire de licences temporaires, n’expire pas automatiquement mais doit faire l’objet d’une radiation du registre.
3.2.2 Modification d’une licence
Règle 35, paragraphe 6, du REMC
Si le demandeur ou titulaire de la marque communautaire et le licencié déposent une demande commune, aucune preuve supplémentaire n’est requise pour la modification de la licence.
Si la demande est déposée par le demandeur ou titulaire de la marque communautaire, une preuve de la modification de la licence n’est exigée que lorsque la modification pour laquelle une inscription au registre est demandée est de nature à réduire les droits du licencié enregistré au titre de la licence. Ceci est notamment le cas, par exemple, si le nom du licencié est modifié, si une licence exclusive devient
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une licence non exclusive ou si une licence est restreinte quant à sa portée territoriale, la durée pour laquelle elle est accordée ou les produits ou services auxquels elle s’applique.
Si la demande est déposée par le licencié enregistré, une preuve de la modification de la licence n’est exigée que lorsque la modification pour laquelle une inscription au registre est demandée est de nature à étendre les droits du licencié enregistré au titre de la licence. Ceci est notamment le cas, par exemple, si une licence non exclusive devient une licence exclusive ou si des restrictions enregistrées applicables à la licence quant à sa portée territoriale, la durée pour laquelle elle est accordée ou les produits ou services auxquels elle s’applique sont totalement ou partiellement annulées.
Lorsqu’une preuve de la modification de la licence est nécessaire, il suffit de présenter l’un des documents mentionnés ci-dessus au paragraphe 2.4.3.4, sous réserve des conditions suivantes.
L’accord écrit doit être signé par l’autre partie au contrat de licence et doit porter sur l’enregistrement de la modification de la licence tel que demandé.
La demande de modification/radiation d’une licence doit indiquer comment la licence a été modifiée.
La copie ou l’extrait du contrat de licence doit attester de la licence dans sa forme modifiée.
3.3 Contenu de la demande
Règle 26 et 35 du REMC
Le paragraphe 2.4 s’applique, à l’exception des informations concernant le licencié, qui ne sont pas exigées, sauf dans le cas d’une modification du nom du licencié enregistré.
Le paragraphe 2.5 s’applique si une modification de la portée de la licence est demandée, par exemple si une licence devient une licence temporaire ou si l’étendue géographique de la licence est modifiée.
3.4 Taxes
3.4.1 Radiation d’une licence
Article 162, paragraphe 2, du RMC Règle 35, paragraphe 3, du REMC Article 2, paragraphe 24, du RTMC
La demande de radiation de l’enregistrement d’une licence n’est réputée déposée qu’après paiement de la taxe prescrite. Celle-ci s’élève à 200 EUR pour chaque marque communautaire pour laquelle la radiation est demandée. Si plusieurs radiations ont été sollicitées simultanément ou dans une seule et même demande et si
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le demandeur ou titulaire de la marque communautaire et le licencié sont identiques dans tous les cas, la taxe est plafonnée à 1 000 EUR.
Une fois la taxe correspondante payée, celle-ci n’est pas remboursée si la demande est rejetée ou retirée.
3.4.2 Modification d’une licence
Règle 35, paragraphe 6, du REMC
La modification de l’enregistrement d’une licence n’est pas soumise à une taxe.
3.5 Examen de la demande
3.5.1 Taxes
Règle 35, paragraphe 3, du REMC
Lorsque la taxe prescrite pour la demande de radiation d’une licence n’a pas été perçue, l’Office notifie au demandeur que la demande est réputée ne pas avoir été déposée.
3.5.2 Examen par l’Office
Règle 35, paragraphes 2 et 4, du REMC
S’agissant des éléments obligatoires de la demande, le paragraphe 2.6.2 s’applique mutatis mutandis, y compris en ce qui concerne la preuve de la licence, dans la mesure où cette preuve est exigée.
L’Office notifie toute irrégularité éventuelle au demandeur de l’inscription en fixant un délai de deux mois pour y remédier. S’il n’est pas remédié à ces irrégularités, l’Office rejette la demande de radiation ou de modification.
Règle 35, paragraphe 6, et règle 84, paragraphe 5, du REMC
Le paragraphe 2.6.3 s’applique dans la mesure où la modification de la licence affecterait sa nature ou sa limitation à une partie des produits et services couverts par la marque communautaire/demande de marque communautaire.
L’inscription de la radiation ou de la modification de la licence est notifiée au demandeur; si la demande est déposée par le licencié, le demandeur ou titulaire de la marque communautaire reçoit une copie de cette communication.
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3.6 Enregistrement et publication
Règle 84, paragraphe 3, point s), et règle 85, paragraphe 2, du REMC
Dans le cas d’une marque communautaire enregistrée, la création, la radiation ou la modification est inscrite au registre des marques communautaires et publiée au Bulletin des marques communautaires sous C.4.
Dans le cas d’une demande de marque communautaire, la radiation ou la modification de la licence est mentionnée dans les dossiers de la demande de marque communautaire concernée. Lorsque l’enregistrement de la marque communautaire est publié, les licences radiées ne sont pas publiées, et dans le cas de la modification de la licence, les données telles que modifiées sont publiées sous C.4.
4 Transfert d’une licence concernant une marque communautaire ou demande de marque communautaire
4.1 Définition du transfert d’une licence
Article 22, paragraphe 5, du RMC
Une licence concernant une demande de marque communautaire ou une marque communautaire peut être transférée. Le transfert d’une licence est différent de celui d’une sous-licence en ce sens que l’ancien licencié perd l’ensemble de ses droits au titre de la licence et qu’il est remplacé par un nouveau licencié, tandis que dans le cas d’un transfert d’une sous-licence, la licence principale reste en vigueur. De même, le transfert d’une licence est différent d’un changement de nom du titulaire dès lors qu’il n’implique aucun changement de propriété (voir les Directives, Partie E, Section 3, Les marques communautaires en tant qu’objets de propriété, Chapitre 1, Transfert).
4.2 Règles applicables
Règle 33, paragraphe 1, du REMC
La procédure d’enregistrement du transfert d’une licence est identique à celle de l’enregistrement d’une licence, qui est exposée aux paragraphes 2 et 3 ci-dessus.
Règle 33, paragraphes 1 et 4, du REMC Article 2, paragraphe 23, point b), du RTMC
Le transfert d’une licence est subordonné au paiement d’une taxe. Le paragraphe 2.3. ci-dessus s’applique mutatis mutandis.
Dans la mesure où une déclaration ou une signature du demandeur ou titulaire de la marque communautaire est exigée conformément à ces règles, ladite déclaration ou signature doit être remplacée par une déclaration ou signature du licencié enregistré (le licencié précédent).
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5 Enregistrement de licences concernant des dessins et modèles communautaires enregistrés
Articles 27, 32, 33 et article 51, paragraphe 4, du RDC Articles 24, 25, 26 et article 27, paragraphe 2, du REDC Annexes 18 et 19 du RTDC
Les dispositions légales contenues dans le RDC, le REDC et le RTDC concernant les licences correspondent aux dispositions respectives du RMC, du REMC et du RTMC.
En conséquence, les principes juridiques et la procédure concernant l’enregistrement, la radiation ou la modification de licences de marques s’appliquent mutatis mutandis aux dessins et modèles communautaires, à l’exception des procédures spécifiques suivantes.
5.1 Dessins et modèles communautaires enregistrés
Le droit relatif aux dessins et modèles communautaires n’impose pas d’usage, de sorte que la question de savoir si un usage par un licencié est un usage avec le consentement du titulaire du droit ne se pose pas.
Le RDC et le REDC exigent d’indiquer les produits sur lesquels le dessin ou modèle doit être intégré ou appliqué.
Il est impossible d’enregistrer une licence pour un dessin ou modèle communautaire enregistré pour une partie seulement des produits couverts.
Une telle limitation de l’étendue de la licence ne sera pas prise en compte par l’Office et la licence sera enregistrée comme si la restriction n’existait pas.
5.2 Demande d’enregistrement multiple de dessins ou modèles communautaires
Article 37 du RDC Article 24, paragraphe 1, du REDC
Une demande d’enregistrement de dessin ou modèle communautaire peut être déposée sous la forme d’une demande multiple contenant plusieurs dessins ou modèles.
Aux fins de l’effet juridique des licences et de leur procédure d’enregistrement, les différents dessins ou modèles inclus dans une demande multiple sont traités comme des demandes séparées et ce même après l’enregistrement des dessins ou modèles contenus dans la demande multiple.
En d’autres termes, chaque dessin ou modèle inclus dans une demande multiple peut faire l’objet d’une licence indépendamment des autres.
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Les indications optionnelles relatives au type de licence et la procédure d’examen visées aux paragraphes 2.5 et 2.6.1 (à l’exception d’une licence limitée à certains produits, pour laquelle ce n’est pas possible) s’appliquent à chaque dessin ou modèle individuel mentionné dans une demande multiple séparément et indépendamment.
Annexes 18 et 19 du RTDC
La taxe de 200 EUR pour l’inscription, le transfert ou la radiation d’une licence s’applique par dessin ou modèle et non par demande multiple. Il en va de même du plafond de 1 000 EUR lorsque des demandes multiples sont présentées.
Exemple 1: sur 10 dessins ou modèles figurant dans une demande multiple, 6 font l’objet d’une licence en faveur du même licencié. La taxe s’élève à 1 000 EUR à condition qu’une seule et même demande soit présentée pour l’enregistrement de ces six licences ou que plusieurs demandes soient déposées le même jour. La demande peut indiquer que, pour trois de ces six dessins ou modèles, la licence est une licence exclusive, sans que cela n’affecte les taxes dues.
Exemple 2: sur 10 dessins ou modèles figurant dans une demande multiple, 5 font l’objet d’une licence en faveur du même licencié. Une licence est aussi accordée pour un autre dessin ou modèle ne figurant pas dans cette demande multiple. La taxe s’élève à 1 000 EUR à condition que
une seule et même demande soit présentée pour l’enregistrement de ces six licences ou que plusieurs demandes soient déposées le même jour, et
le titulaire de la marque communautaire et le licencié soient identiques dans les six cas.
6 Enregistrement de licences concernant des marques internationales
Le système de Madrid autorise l’inscription de licences contre un enregistrement international. Toutes les demandes doivent être déposées sur un formulaire MM13, soit directement auprès du Bureau international par le titulaire ou auprès de l’Office du titulaire enregistré, soit auprès de l’Office d’une partie contractante à laquelle la licence est accordée ou auprès de l’Office du licencié. La demande ne peut pas être déposée directement auprès du Bureau international par le licencié. La demande d’inscription de l’Office ne doit pas être utilisée.
Des informations détaillées sur l’enregistrement de licences sont disponibles dans la Partie B, Chapitre II, paragraphes 93.01 à 99.04 du Guide pour l’enregistrement international des marques en vertu de l’arrangement de Madrid et du Protocole de Madrid (www.wipo.int/madrid/fr/guide/). Pour de plus amples informations sur les marques internationales, veuillez-vous reporter aux Directives, Partie M.
Droits réels
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 3
MARQUES COMMUNAUTAIRES EN TANT QU’OBJETS DE PROPRIÉTÉ
CHAPITRE 3
DROITS RÉELS
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Table des matières
1 Introduction................................................................................................ 4 1.1 Droit applicable.............................................................................................. 4 1.2 Avantages résultant de l’enregistrement d’un droit réel ............................ 5
2 Exigences relatives à la demande d’enregistrement d’un droit réel ..... 6 2.1 Formulaire de demande et demandes relatives à plusieurs droits
réels.............................................................................................................6 2.2 Langues..........................................................................................................6 2.3 Taxes...........................................................................................................7 2.4 Demandeurs et contenu obligatoire de la demande ................................ 7
2.4.1 Demandeurs ................................................................................................... 7 2.4.2 Indications obligatoires concernant la marque communautaire et le
créancier gagiste ............................................................................................ 8 2.4.3 Conditions à remplir par le demandeur – signature, preuve du droit réel,
représentation................................................................................................. 8 2.4.3.1 Demande déposée par le seul titulaire de la marque communautaire.........8 2.4.3.2 Demande déposée conjointement par le titulaire de la marque
communautaire et le créancier gagiste........................................................9 2.4.3.3 Demande déposée par le seul créancier gagiste ........................................9 2.4.3.4 Preuve du droit réel .....................................................................................9
2.4.4 Représentation ............................................................................................. 10
2.5 Examen de la demande d’enregistrement .............................................. 11 2.5.1 Taxes ............................................................................................................ 11 2.5.2 Examen des formalités obligatoires ............................................................. 11
2.6 Procédure d’enregistrement et publications .......................................... 12
3 Procédure de radiation ou de modification de l’enregistrement d’un droit réel ................................................................................................... 13 3.1 Compétence, langues, présentation de la demande.............................. 13 3.2 Demandeur................................................................................................ 14
3.2.1. Radiation de l’enregistrement d’un droit réel................................................ 14 3.2.2. Modification de l’enregistrement d’un droit réel ............................................ 14
3.3 Contenu de la demande ........................................................................... 15 3.4 Taxes......................................................................................................... 15
3.4.1. Radiation de l’enregistrement d’un droit réel................................................ 15 3.4.2. Modification de l’enregistrement d’un droit réel ............................................ 16
3.5 Examen de la demande............................................................................ 16 3.5.1 Taxes ............................................................................................................ 16 3.5.2 Examen par l’Office ...................................................................................... 16
3.6 Enregistrement et publication ................................................................. 16
4 Procédure dans le cas du transfert d’un droit réel ............................... 17 4.1 Disposition relative au transfert d’un droit réel ..................................... 17 4.2 Règles applicables ................................................................................... 17
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5 Droits réels sur des dessins ou modèles communautaires enregistrés ............................................................................................... 17 5.1 Demande d’enregistrement multiple de dessins ou modèles
communautaires....................................................................................... 18
6 Droits réels sur des marques internationales....................................... 18
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1 Introduction
Article 19 du RMC Règles 33, règle 35 du REMC Article 24 du RDC
Les marques communautaires enregistrées, de même que les demandes de marques communautaires, peuvent faire l’objet de droits réels.
Les dessins et modèles communautaires enregistrés, de même que les demandes d’enregistrement d’un dessin ou modèle communautaire, peuvent faire l’objet de droits réels.
Les paragraphes 1 à 4 du présent chapitre examinent les droits réels afférents aux marques communautaires enregistrées et aux demandes de marques communautaires. Les dispositions contenues dans le RDC et le REDC traitant des droits réels sur les dessins et modèles sont pratiquement identiques aux dispositions équivalentes respectives du RMC et du REMC. Dès lors, l’exposé qui suit s’applique mutatis mutandis aux dessins et modèles communautaires. Les procédures propres aux dessins et modèles communautaires sont détaillées au paragraphe 5 ci-dessous. Les procédures propres aux marques internationales sont détaillées au paragraphe 6 ci-dessous.
Un «droit réel» est un droit de propriété limité qui constitue un droit absolu. Les droits réels renvoient à une action en justice touchant à la propriété plutôt qu’à une personne; ils donnent la possibilité au titulaire du droit de recouvrer ou de posséder un objet spécifique ou encore d’en jouir. Ces droits peuvent s’appliquer aux marques, dessins ou modèles. Ils peuvent notamment prendre la forme de droits d’utilisation, d’usufruit ou de gage. La notion de droits «réels» diffère de celle des droits «personnels», cette dernière désignant une personne spécifique.
Les gages ou garanties constituent les droits réels les plus courants en matière de marques ou de dessins ou modèles. Ils garantissent le remboursement de la dette contractée par le titulaire de la marque ou du dessin ou modèle (à savoir, le débiteur). Ainsi, si le débiteur ne peut pas s’acquitter de sa dette, le créancier (à savoir le titulaire du gage ou de la garantie) peut obtenir le remboursement de la dette, par exemple, moyennant la vente de la marque ou dessin ou modèle. Ces droits sont également appelés en allemand: Pfand, Hypothek; en anglais: Guarantees, Warranties, Bails and Sureties; en espagnol: Hipoteca; en français: Nantissement, Gage, Hypothèque, Garantie, Caution; et en italien: Pegno, Ipoteca.
Le demandeur peut demander à faire noter dans le dossier ou à faire inscrire au registre deux types de droit réel:
les droits réels servant à garantir des sûretés (gage, redevance, etc.) les droits réels qui ne servent pas de garantie (usufruit).
1.1 Droit applicable
Article 16 du RMC
Le RMC n’établit pas de dispositions complètes et unifiées applicables aux droits réels sur les marques communautaires ou sur les demandes de marques communautaires.
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Ainsi, l’article 16 du RMC fait référence au droit d’un État membre en ce qui concerne l’acquisition, la validité et l’opposabilité de la marque communautaire en tant qu’objet de propriété. À cette fin, un droit réel sur une marque communautaire est assimilé en sa totalité et pour l’ensemble du territoire de la Communauté à un droit réel sur une marque nationale enregistrée dans l’État membre dans lequel le titulaire ou demandeur de la marque communautaire a son siège ou son domicile ou, si ce n’est pas le cas, à un droit réel sur une marque enregistrée dans l’État membre dans lequel le titulaire a un établissement ou, à défaut, à un droit réel sur une marque enregistrée en Espagne (État membre dans lequel le siège de l’Office est établi).
Cette règle ne s’applique toutefois que dans la mesure où les articles 17 à 24 du RMC ne prévoient pas de dispositions contraires.
L’article 16 du RMC se limite à l’opposabilité d’un droit réel en tant qu’objet de propriété et ne s’étend pas au droit des contrats. L’article 16 du RMC ne régit pas le droit applicable ou la validité d’un contrat de droit réel. Dès lors, la liberté des parties contractantes de soumettre le contrat de droit réel à une législation nationale donnée n’est pas affectée par le RMC.
1.2 Avantages résultant de l’enregistrement d’un droit réel
Articles 19, paragraphe 2, article 23, paragraphe 1, du RMC
L’enregistrement de droits réels n’est ni une obligation, ni une condition pour considérer que l’utilisation d’une marque par un créancier gagiste selon les termes du contrat de droit réel a été faite avec le consentement du titulaire conformément à l’article 15, paragraphe 2, du RMC. Cependant, cet enregistrement présente certains avantages.
a) Compte tenu de la disposition de l’article 23, paragraphe 1, du RMC, lorsque des tiers sont susceptibles d’avoir acquis des droits ou d’avoir inscrit au registre des droits sur la marque qui sont incompatibles avec le droit réel enregistré, le créancier gagiste peut se prévaloir des droits conférés par ce droit réel uniquement:
si le droit réel a été inscrit au registre des marques communautaires, ou
en l’absence d’enregistrement du droit réel, si le tiers a acquis ses droits après la date d’acquisition du droit réel en ayant connaissance de l’existence de ce droit.
b) Dans le cas où un droit réel sur une marque communautaire est inscrit au registre, la renonciation à cette marque par son titulaire n’est inscrite au registre que si le titulaire justifie qu’il a informé le créancier gagiste de son intention d’y renoncer.
Le créancier gagiste d’un droit réel enregistré est, par conséquent, en droit d’être préalablement informé par le titulaire de la marque de son intention de renoncer à la marque.
c) Dans le cas où un droit réel sur une marque communautaire est inscrit au registre, l’Office notifie au créancier gagiste au moins six mois avant l’expiration de l’enregistrement que l’enregistrement est en passe d’expirer. L’Office notifie
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également au créancier gagiste toute perte de droits et l’expiration de l’enregistrement, le cas échéant.
d) L’enregistrement des droits réels est important pour maintenir la véracité du registre, notamment dans le cas de procédures inter partes.
2 Exigences relatives à la demande d’enregistrement d’un droit réel
Article 19, paragraphe 2, du RMC Règle 33, règle 84, paragraphe 3, point h, du REMC
Un droit réel peut être enregistré tant pour les demandes de marques communautaires que pour les marques communautaires enregistrées.
La demande d’enregistrement d’un droit réel doit réunir les conditions suivantes.
2.1 Formulaire de demande et demandes relatives à plusieurs droits réels
Règle 95, points a) et b), du REMC
Il est vivement recommandé de déposer la demande d’enregistrement d’un droit réel sur une marque communautaire au moyen du formulaire de demande d’inscription. Ce formulaire peut être obtenu gratuitement dans les langues officielles de l’Union européenne. Il peut être téléchargé depuis le site internet de l’OHMI.
Toutes les versions linguistiques de ce formulaire peuvent être utilisées, pour autant qu’il soit rempli dans l’une des langues mentionnées au paragraphe 2.2 ci-dessous.
Règle 31, paragraphe 7, règle 33, paragraphe 1, du REMC
Il est possible de ne présenter qu’une seule demande en enregistrement d’un droit réel sur deux ou plusieurs marques communautaires enregistrées ou demandes de marques communautaires si le titulaire enregistré et le créancier gagiste sont identiques dans tous les cas.
2.2 Langues
Règle 95, point a), du REMC
La demande d’enregistrement d’un droit réel sur une demande de marque communautaire peut être effectuée dans la première ou deuxième langue de la demande de marque communautaire.
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Règle 95, point b), du REMC
La demande d’enregistrement d’un droit réel sur une marque communautaire doit être déposée dans l’une des cinq langues de l’Office, à savoir le français, l’anglais, l’allemand, l’italien ou l’espagnol.
2.3 Taxes
Article 162, paragraphe 2, points c) et d), du RMC Règle 33, paragraphes 1 et 4, du REMC Article 2, paragraphe 23, du RTMC
La demande d’enregistrement d’un droit réel n’est réputée déposée qu’après paiement de la taxe. Cette taxe s’élève à 200 euros pour chaque marque communautaire pour laquelle l’enregistrement d’un droit réel est demandé.
Toutefois, si plusieurs enregistrements de droits réels ont été sollicités dans une seule et même demande et si le titulaire enregistré et le créancier gagiste sont identiques dans tous les cas, la taxe est plafonnée à 1 000 euros.
Le même plafond s’applique si plusieurs enregistrements de droits réels sont demandés simultanément, alors qu’ils auraient pu faire l’objet d’une seule et même demande, et si le titulaire enregistré et le créancier gagiste sont identiques dans tous les cas.
Une fois la taxe correspondante payée, celle-ci n’est pas remboursée si la demande d’enregistrement du droit réel est rejetée ou retirée (affaire classée).
2.4 Demandeurs et contenu obligatoire de la demande
2.4.1 Demandeurs
Article 19, paragraphe 2, du RMC
L’enregistrement d’un droit réel peut être demandé par:
a) le/les titulaire(s) de la marque communautaire, ou
b) le/les titulaire(s) de la marque communautaire conjointement avec le/les créancier(s) gagiste(s), ou
c) le/les créancier(s) gagiste(s).
Les conditions formelles auxquelles la demande doit répondre dépendent du statut du demandeur. La première ou la deuxième alternative sont recommandées, car elles permettent un traitement plus rapide et plus aisé de la demande d’enregistrement du droit réel.
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2.4.2 Indications obligatoires concernant la marque communautaire et le créancier gagiste
Règle 31, règle 33, paragraphe 1, du REMC
La demande d’enregistrement d’un droit réel doit contenir les informations suivantes.
Règle 31, paragraphe 1, point a), règle 33, paragraphe 1, du REMC
a) Le numéro d’enregistrement de la marque communautaire concernée. Si la demande concerne plusieurs marques communautaires, chacun des numéros doit être indiqué.
Règle 1, paragraphe 1, point b), règle 31, paragraphe 1, point b), règle 33, paragraphe 1, du REMC
b) Le nom, l’adresse et la nationalité du créancier gagiste et l’État dans lequel il a son domicile ou son siège ou un établissement.
Règle 1, paragraphe 1, point e), règle 31, paragraphe 2, règle 33, paragraphe 1, du REMC
c) Si le créancier gagiste désigne un représentant, les nom et adresse professionnelle de ce dernier doivent être indiqués; l’adresse peut être remplacée par le numéro d’identification attribué par l’Office.
2.4.3 Conditions à remplir par le demandeur – signature, preuve du droit réel, représentation
Règle 79, règle 82, paragraphe 3, du REMC
Les exigences concernant la signature, la preuve du droit réel et la représentation varient selon le demandeur. Lorsqu’une signature est exigée, conformément à la règle 79 et à la règle 82, paragraphe 3, du REMC, dans les communications électroniques, l’indication du nom de l’expéditeur vaut signature.
2.4.3.1 Demande déposée par le seul titulaire de la marque communautaire
Règle 1, paragraphe 1, point b), règle 33, paragraphe 1, du REMC
Lorsqu’une demande est déposée au nom du seul titulaire de la marque communautaire, elle doit être signée par le titulaire de la marque communautaire. En cas de copropriété, tous les cotitulaires doivent signer la demande ou désigner un représentant commun.
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Une preuve du droit réel n’est pas nécessaire.
L’Office n’informe pas le créancier gagiste de la demande d’enregistrement du droit réel. Toutefois, il informe le créancier gagiste de l’inscription du droit réel au registre.
Si le créancier gagiste dépose auprès de l’Office une déclaration dans laquelle il s’oppose à l’enregistrement du droit réel, l’Office transmet la déclaration au titulaire de la marque communautaire à titre purement informatif. L’Office ne donne pas suite à ce type de déclaration. Tout créancier gagiste qui est en désaccord avec l’enregistrement du droit réel après que celui-ci a été effectué peut demander la radiation ou la modification de l’enregistrement du droit réel (voir paragraphe 3 ci-dessous).
L’Office ne tient pas compte du fait que les parties aient convenu ou non d’enregistrer un droit réel auprès de l’Office. Tout litige sur la question de savoir si et comment un droit réel doit être enregistré est résolu entre les parties concernées conformément au droit national applicable (article 16 du RMC).
2.4.3.2 Demande déposée conjointement par le titulaire de la marque communautaire et le créancier gagiste
Lorsque la demande est déposée conjointement par le titulaire de la marque communautaire et le créancier gagiste, elle doit être signée par les deux parties. En cas de copropriété, tous les cotitulaires doivent signer la demande ou désigner un représentant commun.
Dans ce cas, la signature des deux parties constitue la preuve du droit réel.
En cas d’irrégularité de forme concernant la signature ou le représentant du créancier gagiste, la demande est acceptée dans la mesure où elle serait également recevable si elle était déposée par le seul titulaire de la marque communautaire.
Il en va de même en cas d’irrégularité concernant la signature ou le représentant du titulaire de la marque communautaire, dans la mesure où la demande serait recevable si elle était déposée par le seul créancier gagiste.
2.4.3.3 Demande déposée par le seul créancier gagiste
La demande peut également être déposée par le seul créancier gagiste. Dans ce cas, elle doit être signée par le créancier gagiste.
La preuve du droit réel doit en outre être fournie.
2.4.3.4 Preuve du droit réel
La preuve du droit réel est suffisante si la demande d’enregistrement du droit réel est accompagnée de l’un des éléments suivants.
Une déclaration, signée par le titulaire de la marque communautaire ou son représentant, donnant son accord à l’enregistrement du droit réel.
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Conformément à la règle 31, paragraphe 5, point a), du REMC, la preuve est également jugée suffisante si la demande d’enregistrement est signée par les deux parties. Ce cas a déjà été examiné au paragraphe 2.4.3.2 ci-dessus.
Le contrat réel, ou un extrait de celui-ci, sur lequel figurent les parties et la marque communautaire en question, ainsi que les signatures des parties.
La présentation du contrat réel constitue une preuve suffisante. Souvent, les parties au contrat réel ne souhaitent pas divulguer tous les détails du contrat qui peut contenir des informations confidentielles concernant les conditions du gage. Dans de tels cas, il suffit de fournir une partie ou un extrait du contrat réel, à condition que ladite partie ou ledit extrait identifie les parties au contrat réel et la marque communautaire faisant l’objet du droit réel, et porte les signatures des deux parties. Tous les autres éléments peuvent être omis ou masqués.
Une déclaration du droit réel non certifiée signée par le titulaire de la marque communautaire et par le créancier gagiste.
Les documents originaux deviennent partie intégrante du dossier et ne peuvent donc être renvoyés à la personne qui les a présentés. De simples photocopies suffisent. Il n’est pas nécessaire que les originaux ou les photocopies soient certifiés conformes ou authentifiés sauf si l’Office a des motifs raisonnables de douter de la véracité des documents.
Règle 95, points a) et b), règle 96, paragraphe 2, du REMC
La preuve du droit réel doit être produite:
a) dans la langue de l’Office qui est devenue la langue de la procédure d’enregistrement du droit réel, voir paragraphe 2.2 ci-dessus;
b) dans l’une des langues officielles de la Communauté autre que celle de la procédure; dans ce cas, l’Office peut exiger qu’une traduction du document soit produite dans une langue de l’Office dans un délai imparti par l’Office.
Lorsque les documents justificatifs ne sont pas présentés soit dans l’une des langues officielles de l’Union européenne, soit dans la langue de la procédure, l’Office peut exiger une traduction dans la langue de la procédure ou, au choix de la partie requérant l’enregistrement du droit réel, dans toute langue de l’Office. Pour la remise de cette traduction, l’Office fixe un délai de deux mois à compter de la date de notification de cette communication. Si la traduction n’est pas présentée dans ce délai, le document n’est pas pris en compte et est réputé n’être jamais parvenu.
2.4.4 Représentation
Article 92, paragraphe 2, article 93, paragraphe 1, du RMC
Les règles générales relatives à la représentation s’appliquent (voir Directives, Partie A, Dispositions générales, Chapitre 5, Représentation professionnelle).
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2.5 Examen de la demande d’enregistrement
2.5.1 Taxes
Règle 33, paragraphe 2, du REMC
Lorsque la taxe prescrite n’a pas été perçue, l’Office notifie au demandeur de l’inscription que la demande est réputée ne pas avoir été déposée parce que la taxe en question n’a pas été payée. Toutefois, une nouvelle demande peut être déposée à tout moment à condition que la taxe correcte soit payée d’emblée.
2.5.2 Examen des formalités obligatoires
Règle 33, paragraphe 3, du REMC
L’Office vérifie si la demande d’enregistrement du droit réel remplit les conditions de forme énoncées au paragraphe 2.4 ci-dessus (indication du(des) numéros(s) de marque communautaire, des informations requises concernant le créancier gagiste ou son représentant le cas échéant).
La validité du contrat réel n’est pas examinée.
Article 93, paragraphe 1, du RMC Règle 33, règle 76 et règle 77, du REMC
L’Office vérifie si la demande d’enregistrement du droit réel est dûment signée. Lorsqu’elle est signée par le représentant du créancier gagiste, un pouvoir peut être exigé par l’Office ou, dans le cas d’une procédure inter partes, par l’autre partie à cette procédure. À défaut de présentation de ce pouvoir, la procédure se poursuit comme si aucun représentant n’avait été désigné. Lorsque la demande d’enregistrement du droit réel est signée par le représentant du titulaire qui a déjà été désigné comme représentant pour la marque communautaire en question, les conditions relatives à la signature et aux pouvoirs sont remplies.
Article 92, paragraphe 2, article 93, paragraphe 1, du RMC
L’examen consiste notamment à déterminer si le demandeur de l’inscription (à savoir le titulaire de la marque communautaire ou le créancier gagiste) a l’obligation d’être représenté devant l’Office (voir paragraphe 2.4.4 ci-dessus).
Règle 33, paragraphe 3, du REMC
L’Office informe le demandeur de l’inscription par écrit de toute irrégularité constatée dans la demande. S’il n’est pas remédié à ces irrégularités dans le délai fixé dans la communication en question, qui est généralement de deux mois à compter de la date de notification de ladite communication, l’Office rejette la demande d’enregistrement du droit réel. La partie concernée peut former un recours contre cette décision (voir
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décision 2009-1 du 16/06/2009 du présidium des chambres de recours relative aux instructions aux parties à des procédures devant les chambres de recours).
Lorsque la demande est déposée conjointement par le titulaire de la marque communautaire et le créancier gagiste, l’Office informe le titulaire de la marque communautaire et transmet une copie au créancier gagiste.
Dans la mesure où le créancier gagiste a également déposé et signé la demande, celui-ci n’est pas autorisé à contester l’existence ou la portée du contrat réel.
Lorsque la demande d’enregistrement du droit réel est déposée par le seul titulaire de la marque communautaire, l’Office n’informe pas le créancier gagiste. L’examen de la preuve du droit réel est réalisé d’office. L’Office ne tient pas compte des déclarations ou allégations du créancier gagiste concernant l’existence ou la portée du droit réel ou son enregistrement; le créancier gagiste ne peut s’opposer à l’enregistrement d’un droit réel.
Règle 33, paragraphe 3, du REMC
Dans le cas où la demande est déposée par le créancier gagiste sur la base d’une copie du contrat réel et que l’Office a des motifs raisonnables de douter de la véracité des documents, il invite le créancier gagiste par écrit à lever ces doutes. Dans ce cas, le créancier gagiste a la charge de la preuve de l’existence du droit réel, à savoir qu’il est tenu de convaincre l’Office de la véracité des documents. En pareil cas, l’Office peut, dans les limites de son examen d’office (article 76, paragraphe 1, du RMC), inviter le titulaire de la marque communautaire à faire part de ses observations. Si ce dernier déclare que les documents sont falsifiés, cela suffit pour que l’Office rejette l’enregistrement du droit réel sauf si le créancier gagiste produit une ordonnance d’un tribunal d’un État membre de l’Union européenne en sa faveur. Dans tous les cas, si ces doutes ne peuvent être levés, l’enregistrement du droit réel est rejeté. Dans ces circonstances, la procédure demeure toujours ex parte même si le titulaire de la marque communautaire est entendu; il n’est pas partie à la procédure. La partie concernée peut former un recours contre cette décision.
2.6 Procédure d’enregistrement et publications
Règle 33, paragraphe 4, du REMC
Le droit réel sur la demande de marque communautaire est mentionné dans le dossier de la demande de marque communautaire concernée qui est tenu par l’Office.
Règle 84, paragraphe 3, point h), règle 85, paragraphe 2, du REMC
Si la marque est enregistrée, le droit réel est publié au Bulletin des marques communautaires et inscrit au registre des marques communautaires.
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Règle 84, paragraphe 5, du REMC
L’office notifie au demandeur de l’inscription que le droit réel a été inscrit dans les dossiers tenus par l’Office. Le cas échéant, le demandeur de la marque communautaire en est également informé.
Article 22, paragraphe 5, du RMC Règle 84, paragraphe 3, point h), règle 85, paragraphe 2, du REMC
Pour les marques communautaires, l’Office inscrit le droit réel au registre des marques communautaires et publie cette inscription au Bulletin des marques communautaires.
L’accès à ces informations peut être obtenu par l’inspection publique (voir les Directives, Partie E, Opérations d’enregistrement, Section 5, Inspection publique).
Les droits réels sont publiés dans la Partie C.5. du Bulletin.
Règle 84, paragraphe 5, du REMC
L’Office informe le demandeur de l’inscription que le droit réel a été inscrit. Lorsque la demande d’enregistrement du droit réel est déposée par le créancier gagiste, l’Office informe également le titulaire de la marque communautaire de l’enregistrement.
3 Procédure de radiation ou de modification de l’enregistrement d’un droit réel
Règle 35, paragraphe 1, du REMC
L’enregistrement d’un droit réel peut faire l’objet d’une radiation ou d’une modification à la demande de l’une des parties intéressées, à savoir le demandeur ou titulaire de la marque communautaire ou le créancier gagiste enregistré.
3.1 Compétence, langues, présentation de la demande
Article 133 du RMC Règle 35, paragraphes 3, 6 et 7, du REMC
Les paragraphes 2.1 et 2.2 ci-dessus s’appliquent.
Il n’existe pas de formulaire de l’Office pour l’inscription de la radiation ou de la modification d’un droit réel.
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3.2 Demandeur
Règle 35, paragraphe 1, du REMC
La demande de radiation ou de modification de l’enregistrement du droit réel peut être déposée par:
a) le demandeur ou titulaire de la marque communautaire et le créancier gagiste conjointement,
b) le demandeur ou titulaire de la marque communautaire, ou
c) le créancier gagiste enregistré.
3.2.1. Radiation de l’enregistrement d’un droit réel
Règle 35, paragraphe 4, du REMC
Si le demandeur ou titulaire de la marque communautaire et le créancier gagiste déposent une demande commune ou si le créancier gagiste seul présente une demande, aucune preuve de la radiation du droit réel n’est exigée puisque la demande elle-même sous-entend une déclaration du créancier gagiste par laquelle il consent à la radiation de l’enregistrement de ce droit. Lorsque la demande de radiation est déposée par le demandeur ou titulaire de la marque communautaire, elle doit être accompagnée de preuves établissant que le droit réel enregistré n’existe plus ou d’une déclaration du créancier gagiste par laquelle celui-ci consent à la radiation du droit réel.
Lorsque le créancier gagiste enregistré dépose lui-même la demande de radiation, le demandeur ou titulaire de la marque communautaire n’est pas informé de cette demande. Toutes observations déposées par le titulaire sont transmises au créancier gagiste mais n’empêchent pas la radiation de l’enregistrement du droit réel. Le paragraphe 2.4.3.1 ci-dessus s’applique mutatis mutandis.
Si le titulaire de la marque communautaire accuse le créancier gagiste de fraude, il doit présenter une ordonnance du tribunal à cet effet. Il n’appartient pas à l’Office de conduire une enquête à cet égard.
Lorsque l’enregistrement de plusieurs droits réels a été demandé simultanément, il est possible de radier l’un de ces enregistrements individuellement. En pareil cas, un nouveau numéro d’inscription est créé pour le droit réel radié.
3.2.2. Modification de l’enregistrement d’un droit réel
Règle 35, paragraphe 6, du REMC
Si le demandeur ou titulaire de la marque communautaire et le créancier gagiste présentent une demande commune, aucune autre preuve n’est exigée pour la modification de l’enregistrement du droit réel.
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Si la demande est déposée par le demandeur ou titulaire de la marque communautaire, une preuve de la modification de l’enregistrement du droit réel n’est exigée que lorsque la modification est de nature à réduire les droits du créancier gagiste enregistré au titre de ce droit réel. Ce serait par exemple le cas si le nom du créancier gagiste devait changer.
Si la demande est déposée par le créancier gagiste enregistré, une preuve de la modification de l’enregistrement du droit réel n’est exigée que lorsque la modification est de nature à étendre les droits du créancier gagiste enregistré au titre de ce droit réel.
Lorsqu’une preuve de la modification de l’enregistrement du droit réel est nécessaire, il suffit de présenter l’un des documents mentionnés ci-dessus au paragraphe 2.4. 3.4, sous réserve des conditions suivantes.
l’accord écrit doit être signé par l’autre partie au contrat réel et doit porter sur l’inscription de la modification du droit réel tel que demandé.
La demande en modification ou radiation de l’enregistrement du droit réel doit attester le droit réel dans sa forme modifiée.
La copie ou l’extrait du contrat réel doit attester le droit réel dans sa forme modifiée.
3.3 Contenu de la demande
Règle 26, règle 35, du REMC
Le paragraphe 2.4 ci-dessus s’applique, à l’exception des informations concernant le créancier gagiste, qui ne sont pas exigées, sauf dans le cas d’une modification du nom du créancier gagiste enregistré.
3.4 Taxes
3.4.1. Radiation de l’enregistrement d’un droit réel
Article 162, paragraphe 2, du RMC Règle 35, paragraphe 3, du REMC Article 2, paragraphe 24, du RTMC
La demande de radiation de l’enregistrement du droit réel n’est réputée déposée qu’après paiement de la taxe de 200 euros par radiation. Toutefois, si plusieurs radiations ont été sollicitées simultanément dans une seule et même demande et si le demandeur ou titulaire de la marque communautaire et le créancier gagiste sont identiques dans tous les cas, la taxe est plafonnée à 1 000 euros.
Une fois la taxe correspondante payée, celle-ci n’est pas remboursée si la demande est rejetée ou retirée.
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3.4.2. Modification de l’enregistrement d’un droit réel
Règle 35, paragraphe 6, du REMC
La modification de l’enregistrement du droit réel n’est pas soumise à une taxe.
3.5 Examen de la demande
3.5.1 Taxes
Règle 35, paragraphe 3, du REMC
Lorsque la taxe prescrite pour la demande de radiation de l’enregistrement d’un droit réel n’a pas été perçue, l’Office notifie au demandeur de l’inscription que la demande est réputée ne pas avoir été déposée.
3.5.2 Examen par l’Office
Règle 35, paragraphes 2 et 4, du REMC
Le paragraphe 2.5.2 s’applique mutatis mutandis aux éléments obligatoires de la demande, même pour la preuve du droit réel, dans la mesure où cette preuve est exigée.
L’Office notifie toute irrégularité éventuelle au demandeur de l’inscription en fixant un délai de deux mois pour y remédier. S’il n’est pas remédié à ces irrégularités, l’Office rejette la demande d’inscription de la radiation ou de la modification.
Règle 35, paragraphe 6, règle 84, paragraphe 5, du REMC
L’inscription de la radiation ou de la modification du droit réel est notifiée au demandeur; si la demande est déposée par le créancier gagiste, le demandeur ou titulaire de la marque communautaire reçoit une copie de cette communication.
3.6 Enregistrement et publication
Règle 84, paragraphe 3, point s), règle 85, paragraphe 2, du REMC
Dans le cas d’une marque communautaire enregistrée, la création, la radiation ou la modification de l’enregistrement d’un droit réel est inscrite au registre des marques communautaires et publiée au Bulletin des marques communautaires sous C.5.
Dans le cas d’une demande de marque communautaire, la radiation ou la modification du droit réel est mentionnée dans les dossiers de la demande de marque communautaire concernée. Lorsque l’enregistrement de la marque communautaire est publié, les droits réels radiés ne sont pas publiés, et dans le cas de la modification d’un droit réel, les données telles que modifiées sont publiées sous C.5.
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4 Procédure dans le cas du transfert d’un droit réel
4.1 Disposition relative au transfert d’un droit réel
Règle 33, paragraphe 1, du REMC
Un droit réel peut être transféré.
4.2 Règles applicables
Règle 33, paragraphe 1, du REMC
La procédure d’enregistrement du transfert d’un droit réel est identique à celle de l’enregistrement d’un droit réel, qui est exposée au paragraphe 2 ci-dessus.
Règle 33, paragraphes 1 et 4, du REMC Article 2, paragraphe 23, point b), du RTMC
Le transfert d’un droit réel est subordonné au paiement d’une taxe. Le paragraphe 2.3 ci-dessus s’applique mutatis mutandis.
Dans la mesure où une déclaration ou une signature du demandeur ou titulaire de la marque communautaire est exigée conformément à ces règles, ladite déclaration ou signature doit être remplacée par une déclaration ou signature du créancier gagiste enregistré (le créancier gagiste précédent).
5 Droits réels sur des dessins ou modèles communautaires enregistrés
Articles 27, 29 et 33, article 51, paragraphe 4, du RDMC Articles 24 et 26, article 27, paragraphe 2, du REDC Annexe, paragraphes 18 et 19, du RTDC
Les dispositions légales contenues dans le RDC, le REDC et le RTDC concernant les droits réels correspondent aux dispositions respectives du RMC, du REMC et du RTMC.
Par conséquent, les principes juridiques et la procédure concernant l’enregistrement, la radiation ou la modification de droits réels sur des marques s’appliquent mutatis mutandis aux dessins et modèles communautaires, à l’exception des procédures spécifiques suivantes.
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5.1 Demande d’enregistrement multiple de dessins ou modèles communautaires
Article 37 du RDC Article 24, paragraphe 1, du REDC
Une demande d’enregistrement de dessin ou modèle communautaire peut être déposée sous la forme d’une demande multiple, portant sur plusieurs dessins ou modèles.
Aux fins de l’effet juridique des droits réels et de leur procédure d’enregistrement, les différents dessins ou modèles inclus dans une demande multiple sont traités comme des demandes séparées et ce, même après l’enregistrement des dessins ou modèles contenus dans la demande multiple.
En d’autres termes, chaque dessin ou modèle inclus dans une demande multiple peut faire l’objet d’un gage indépendamment des autres.
Annexe, paragraphes 18 et 19, du RTDC
La taxe de 200 euros pour l’inscription ou la radiation d’un droit réel s’applique par dessin ou modèle et non par demande multiple. Il en va de même du plafond de 1 000 euros lorsque des demandes multiples sont présentées.
Exemple 1
Sur 10 dessins ou modèles inclus dans une demande multiple, 6 font l’objet d’un gage en faveur du même créancier gagiste. La taxe s’élève à 1 000 euros à condition qu’une seule et même demande soit présentée pour l’enregistrement de ces six droits réels ou que plusieurs demandes soient déposées le même jour.
Exemple 2
Sur 10 dessins ou modèles inclus dans une demande multiple, 5 font l’objet d’un gage en faveur du même créancier gagiste. L’inscription d’un droit réel est également sollicitée pour un autre dessin ou modèle non contenu dans cette demande multiple. La taxe s’élève à 1 000 euros, à condition:
qu’une seule et même demande soit présentée pour l’enregistrement de ces six droits réels ou que plusieurs demandes soient déposées le même jour, et
que le titulaire du dessin ou modèle communautaire et le créancier gagiste soient identiques dans les six cas.
6 Droits réels sur des marques internationales
Le système de Madrid autorise l’inscription de droits réels sur un enregistrement international (voir règle 20 des Règles communes de l’Arrangement de Madrid concernant l’enregistrement international de marques et le protocole relatif à cet arrangement). Par souci de commodité, les utilisateurs peuvent recourir au formulaire
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MM19 pour demander l’inscription d’une restriction du droit de disposition du titulaire au registre international. L’utilisation de ce formulaire est vivement recommandée pour éviter des irrégularités. Les demandes doivent être déposées soit directement auprès du Bureau international par le titulaire ou auprès de l’Office national de propriété intellectuelle du titulaire ou auprès de l’Office d’une partie contractante à laquelle le droit réel est accordé ou auprès de l’Office du créancier gagiste. La demande ne peut pas être déposée directement auprès du Bureau international par le créancier gagiste. La demande d’inscription de l’OHMI ne doit pas être utilisée.
Des informations détaillées sur l’enregistrement de droits réels sont disponibles dans la Partie B, Chapitre II, paragraphes 92.01 à 92.04 du Guide pour l’enregistrement international des marques en vertu de l’arrangement de Madrid et du Protocole de Madrid (www.wipo.int/madrid/fr/guide). Pour de plus amples informations sur les marques internationales, veuillez vous reporter aux Directives, Partie M, Marques internationales.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 3
MARQUES COMMUNAUTAIRES EN TANT QU’OBJETS DE PROPRIÉTÉ
CHAPITRE 4
EXÉCUTION FORCÉE
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Table des matières
1 Introduction................................................................................................ 4 1.1 Droit applicable .......................................................................................... 4 1.2 Avantages de l’enregistrement d’une exécution forcée .......................... 5
2 Exigences relatives à la demande d’enregistrement d’une exécution forcée.......................................................................................................... 5 2.1 Formulaire de demande et demandes relatives à plusieurs
exécutions forcées..................................................................................... 6 2.2 Langues ......................................................................................................6 2.3 Taxes...........................................................................................................6 2.4 Demandeurs et contenu obligatoire de la demande ................................ 7
2.4.1 Demandeurs ................................................................................................... 7 2.4.2 Indications obligatoires concernant la marque communautaire et le
bénéficiaire ..................................................................................................... 7 2.4.3 Conditions à remplir par le demandeur – signature, preuve de l’exécution
forcée, représentation..................................................................................... 8 2.4.3.1 Demande déposée par le titulaire de la marque communautaire ................8 2.4.3.2 Demande déposée par le bénéficiaire .........................................................9 2.4.3.3 Demande déposée par un tribunal ou une autorité .....................................9 2.4.3.4 Preuve de l’exécution forcée .......................................................................9
2.4.4 Représentation ............................................................................................. 10
2.5 Examen de la demande d’enregistrement .............................................. 10 2.5.1 Taxes ............................................................................................................ 10 2.5.2 Examen des formalités obligatoires ............................................................. 10
2.6 Procédure d’enregistrement et publications .......................................... 11
3 Procédure de radiation ou de modification de l’enregistrement d’une exécution forcée............................................................................ 12 3.1 Compétence, langues, présentation de la demande.............................. 12 3.2 Demandeur................................................................................................ 12
3.2.1 Radiation de l’enregistrement d’une exécution forcée ................................. 12 3.2.2 Modification de l’enregistrement d’une exécution forcée ............................. 13
3.3 Contenu de la demande ........................................................................... 13 3.4 Taxes......................................................................................................... 13
3.4.1 Radiation de l’enregistrement d’une exécution forcée ................................. 13 3.4.2 Modification de l’enregistrement d’une exécution forcée ............................. 13
3.5 Examen de la demande............................................................................ 14 3.5.1 Taxes ............................................................................................................ 14 3.5.2 Examen par l’Office ...................................................................................... 14
3.6 Enregistrement et publication ................................................................. 14
4 Exécution forcée sur des dessins ou modèles communautaires enregistrés ............................................................................................... 15
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4.1 Demande d’enregistrement multiple de dessins ou modèles communautaires....................................................................................... 15
5 Exécution forcée sur des marques internationales.............................. 16
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1 Introduction
Article 20 du RMC Règle 33, règle 35 du REMC Article 29 du RDC
Les marques communautaires enregistrées, ainsi que les demandes de marques communautaires peuvent faire l’objet d’une exécution forcée.
Les dessins et modèles communautaires enregistrés, ainsi que les demandes d’enregistrement d’un dessin ou modèle communautaire peuvent faire l’objet d’une exécution forcée.
Les paragraphes 1 à 3 du présent chapitre examinent les exécutions forcées sur les marques communautaires enregistrées et sur les demandes de marques communautaires. Les dispositions contenues dans le RDC et le REDC traitant de l’exécution forcée sur les dessins et modèles sont pratiquement identiques aux dispositions équivalentes respectives du RMC et du REMC. Dès lors, l’exposé qui suit s’applique mutatis mutandis aux dessins et modèles communautaires. Les procédures propres aux dessins et modèles communautaires sont détaillées au paragraphe 4 ci-dessous. Les procédures propres aux marques internationales sont détaillées au paragraphe 5 ci-dessous.
Une exécution forcée est un acte par lequel un greffier s’approprie la propriété d’un débiteur, à la suite d’un jugement de mise en possession obtenu par un plaignant devant un tribunal. De cette façon, un créancier peut recouvrer sa créance sur tous les biens du débiteur, en ce compris sur ses droits de marque.
1.1 Droit applicable
Article 16 du RMC
Le RMC n’établit pas de dispositions complètes et unifiées applicables à l’exécution forcée sur les marques communautaires ou sur les demandes de marques communautaires. Ainsi, l’article 16 du RMC renvoie au droit d’un État membre en ce qui concerne la procédure relative à l’exécution forcée. À cette fin, une exécution forcée sur une marque communautaire est assimilée en sa totalité et pour l’ensemble du territoire de la Communauté à une exécution forcée sur une marque nationale enregistrée dans l’État membre dans lequel le titulaire ou demandeur de la marque communautaire a son siège ou son domicile ou, si ce n’est pas le cas, à une exécution forcée sur une marque enregistrée dans l’État membre dans lequel le titulaire a un établissement ou, à défaut, à une exécution forcée sur une marque enregistrée en Espagne (État membre dans lequel le siège de l’Office est établi).
Cette règle ne s’applique toutefois que dans la mesure où les articles 17 à 24 du RMC ne prévoient pas de dispositions contraires.
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1.2 Avantages de l’enregistrement d’une exécution forcée
Article 20, paragraphe 2, article 50, paragraphe 3, article 23, paragraphe 3, du RMC Règle 36, paragraphe 2, du REMC
Si l’inscription d’une exécution forcée n’est pas obligatoire, elle présente cependant certains avantages:
a) Compte tenu de la disposition de l’article 23, paragraphe 3, du RMC, lorsque des tiers sont susceptibles d’avoir acquis des droits ou d’avoir inscrit au registre des droits sur la marque qui sont incompatibles avec l’exécution forcée enregistrée, le bénéficiaire peut se prévaloir des droits conférés par cette exécution forcée si le droit national l’autorise, uniquement:
si l’exécution forcée a été inscrite au registre des marques communautaires, ou
en l’absence d’inscription de l’exécution forcée, si le tiers a acquis ses droits après la date d’attribution de l’exécution forcée en ayant connaissance de l’existence de cette exécution forcée.
b) Dans le cas où une exécution forcée sur une marque communautaire est inscrite au registre, la renonciation à cette marque par son titulaire n’est inscrite au registre que si le titulaire démontre qu'il a informé le bénéficiaire de son intention de renoncer.
Le bénéficiaire d’une exécution forcée enregistrée est par conséquent en droit d’être préalablement informé par le titulaire de la marque de son intention de renoncer à la marque.
c) Dans le cas où une exécution forcée sur une marque communautaire est inscrite au registre, l’Office notifie au bénéficiaire au moins six mois avant l’expiration de l’enregistrement que l’enregistrement est en passe d’expirer. L’Office notifie également au bénéficiaire toute perte de droits et l’expiration de l’enregistrement, le cas échéant.
d) L’enregistrement d’une exécution forcée est important pour maintenir la véracité du registre, notamment dans le cas de procédures inter partes.
2 Exigences relatives à la demande d’enregistrement d’une exécution forcée
Article 20, paragraphe 3, du RMC Règle 33, règle 84, paragraphe 3, point i), du REMC
Une exécution forcée peut être enregistrée tant pour les demandes de marques communautaires que pour les marques communautaires enregistrées.
La demande d’enregistrement d’une exécution forcée doit réunir les conditions suivantes.
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2.1 Formulaire de demande et demandes relatives à plusieurs exécutions forcées
Règle 95, point a) et b), du REMC
Il est vivement recommandé de déposer la demande d’enregistrement d’une exécution forcée sur une marque communautaire au moyen du formulaire de demande d’inscription. Ce formulaire peut être obtenu gratuitement dans les langues officielles de l’Union européenne. Il peut être téléchargé depuis le site internet de l’OHMI.
Toutes les versions linguistiques de ce formulaire peuvent être utilisées, pour autant qu’il soit rempli dans l’une des langues mentionnées au paragraphe 2.2 ci-dessous.
Règle 31, paragraphe 7, règle 33, paragraphe 1, du REMC
Il est possible de ne présenter qu’une seule demande d’enregistrement d’une exécution forcée sur deux ou plusieurs marques communautaires enregistrées ou demandes de marques communautaires si le titulaire et le bénéficiaire enregistrés sont identiques dans tous les cas.
2.2 Langues
Règle 95, point a), du REMC
La demande d’enregistrement d’une exécution forcée sur une demande de marque communautaire peut être effectuée dans la première ou deuxième langue de la demande de marque communautaire.
Règle 95, point b), du REMC
La demande d’enregistrement d’une exécution forcée sur une marque communautaire doit être déposée dans l’une des cinq langues de l’Office, à savoir le français, l’anglais, l’allemand, l’italien ou l’espagnol.
2.3 Taxes
Article 162, paragraphe 2, points c) et d), du RMC Règle 33, paragraphes 1 et 4, du REMC Article 2, paragraphe 23, du RTMC
La demande d’enregistrement d’une exécution forcée n’est réputée déposée qu’après paiement de la taxe. Cette taxe s’élève à 200 euros pour chaque marque communautaire pour laquelle l’enregistrement d’une exécution forcée est demandé.
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Toutefois, si plusieurs enregistrements d’exécution forcée ont été sollicités dans une seule et même demande et si le titulaire enregistré et le bénéficiaire sont identiques dans tous les cas, la taxe est plafonnée à 1 000 euros.
Le même plafond s’applique si plusieurs enregistrements d’exécution forcée sont demandés simultanément, alors qu’ils auraient pu faire l’objet d’une seule et même demande, et si le titulaire enregistré et le bénéficiaire sont identiques dans tous les cas.
Une fois la taxe correspondante payée, celle-ci n’est pas remboursée si la demande d’enregistrement de l’exécution forcée est rejetée ou retirée (affaire classée).
Lorsque le demandeur de l’inscription (voir paragraphe 2.4.1 ci-dessous) est un tribunal ou une autorité, aucune taxe ne doit être payée et la coopération administrative s’applique.
2.4 Demandeurs et contenu obligatoire de la demande
2.4.1 Demandeurs
Article 20, paragraphe 3, du RMC
L’enregistrement d’une exécution forcée peut être demandée par:
b) le(s) titulaire(s) de la marque communautaire,
b) le bénéficiaire de l’exécution forcée,
c) un tribunal ou une autorité.
Les conditions formelles auxquelles la demande doit répondre dépendent du statut du demandeur.
2.4.2 Indications obligatoires concernant la marque communautaire et le bénéficiaire
Règle 31, règle 33, paragraphe 1, du REMC
La demande d’enregistrement d’une exécution forcée doit contenir les informations suivantes.
Règle 31, paragraphe 1, point a), règle 33, paragraphe 1, du REMC
a) Le numéro d’enregistrement de la marque communautaire concernée. Si la demande concerne plusieurs marques communautaires, chacun des numéros doit être indiqué.
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Règle 1, paragraphe 1, point b), règle 31, paragraphe 1, point b), règle 33, paragraphe 1, du REMC
b) Le nom, l’adresse et la nationalité du bénéficiaire et l’État dans lequel il a son domicile ou son siège ou un établissement.
Règle 1, paragraphe 1, point e), règle 31, paragraphe 2, règle 33, paragraphe 1, du REMC
c) Si le bénéficiaire désigne un représentant, les nom et adresse professionnelle de ce dernier doivent être indiqués; l’adresse peut être remplacée par le numéro d’identification attribué par l’Office.
2.4.3 Conditions à remplir par le demandeur – signature, preuve de l’exécution forcée, représentation
Règle 79, règle 82, paragraphe 3, du REMC
Les exigences concernant la signature, la preuve de l’exécution forcée et la représentation varient selon le demandeur. Lorsqu’une signature est exigée, conformément à la règle 79 et à la règle 82, paragraphe 3 du REMC, dans les communications électroniques, l’indication du nom de l’expéditeur vaut signature.
2.4.3.1 Demande déposée par le titulaire de la marque communautaire
Règle 1, paragraphe 1, point b), règle 33, paragraphe 1, du REMC
Lorsqu’une demande est déposée au nom du titulaire de la marque communautaire, elle doit être signée par le titulaire de la marque communautaire. Lorsque la marque a plusieurs titulaires, tous les cotitulaires doivent signer la demande ou désigner un représentant commun.
L’Office n’informe pas le bénéficiaire de la demande d’enregistrement de l’exécution forcée. Toutefois, il informe le bénéficiaire de l’inscription de l’exécution forcée au registre.
Si le bénéficiaire dépose auprès de l’Office une déclaration dans laquelle il s’oppose à l’enregistrement de l’exécution forcée, l’Office transmet la déclaration au titulaire de la marque communautaire à titre purement informatif. L’Office ne donne pas suite à ce type de déclaration. Tout bénéficiaire qui est en désaccord avec l’enregistrement de l’exécution forcée après que celui-ci a été effectué peut demander la radiation ou la modification de l’enregistrement de l’exécution forcée (voir paragraphe 3 ci-dessous).
Tout litige sur la question de savoir si et comment une exécution forcée doit être enregistrée est résolu entre les parties concernées conformément au droit national applicable (article 16 du CTMR).
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2.4.3.2 Demande déposée par le bénéficiaire
La demande peut également être déposée par le bénéficiaire. Dans ce cas, elle doit être signée par le bénéficiaire.
La preuve de l’exécution forcée doit en outre être fournie.
2.4.3.3 Demande déposée par un tribunal ou une autorité
La demande peut également être déposée par le tribunal ou l’autorité ayant rendu le jugement. Dans ce cas, elle doit être signée par le tribunal ou l’autorité.
La preuve de l’exécution forcée doit en outre être fournie.
2.4.3.4 Preuve de l’exécution forcée
La preuve de l’exécution forcée est suffisante si la demande d’enregistrement de l’exécution forcée est accompagnée du jugement du tribunal.
Souvent, les parties à la procédure en exécution forcée ne souhaitent pas divulguer tous les détails du jugement qui peut contenir des informations confidentielles. Dans de tels cas, il suffit de fournir une partie ou un extrait du jugement concerné, à condition que ladite partie ou ledit extrait identifie les parties à la procédure en exécution forcée et la marque communautaire faisant l’objet de l’exécution forcée et que ce jugement présente un caractère définitif. Tous les autres éléments peuvent être omis ou masqués.
Les documents originaux deviennent partie intégrante du dossier et ne peuvent donc être renvoyés à la personne qui les a présentés. De simples photocopies suffisent. Il n’est pas nécessaire que les originaux ou les photocopies soient certifiés conformes ou authentifiés sauf si l’Office a des motifs raisonnables de douter de la véracité des documents.
Règle 95, points a) et b), règle 96, paragraphe 2, du REMC
La preuve de l’exécution forcée doit être produite:
a) dans la langue de l’Office qui est devenue la langue de la procédure d’enregistrement de l’exécution forcée, voir paragraphe 2.2 ci-dessus.
b) dans l’une des langues officielles de la Communauté autre que celle de la procédure; dans ce cas, l’Office peut exiger qu’une traduction du document soit produite dans une langue de l’Office dans un délai imparti par l’Office.
Lorsque les documents justificatifs ne sont pas présentés soit dans l’une des langues officielles de l’Union européenne, soit dans la langue de la procédure, l’Office peut exiger une traduction dans la langue de la procédure ou, au choix de la partie requérant l’enregistrement de l’exécution forcée, dans toute langue de l’Office. Pour la remise de cette traduction, l’Office fixe un délai de deux mois à compter de la date de notification de cette communication. Si la traduction n’est pas présentée dans ce délai, le document n’est pas pris en compte et est réputé n’être jamais parvenu.
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2.4.4 Représentation
Article 92, paragraphe 2, article 93, paragraphe 1, du RMC
Les règles générales relatives à la représentation s’appliquent (voir Directives, Partie A, Dispositions générales, Chapitre 5, Représentation professionnelle).
2.5 Examen de la demande d’enregistrement
2.5.1 Taxes
Règle 33, paragraphe 2, du REMC
Lorsque la taxe prescrite n’a pas été perçue, l’Office notifie au demandeur (sauf si le demandeur est un tribunal ou une autorité, auquel cas aucune taxe n’est exigée, voir paragraphe 2.3 ci-dessus) que la demande est réputée ne pas avoir été déposée parce que la taxe en question n’a pas été payée. Toutefois, une nouvelle demande peut être déposée en tout temps à condition que la taxe correcte soit payée d’emblée.
2.5.2 Examen des formalités obligatoires
Règle 33, paragraphe 3, du REMC
L’Office vérifie si la demande d’enregistrement de l’exécution forcée remplit les conditions de forme énoncées au paragraphe 2.4 ci-dessus (indication du(des) numéros(s) de marque communautaire, des informations requises concernant le bénéficiaire ou son représentant le cas échéant).
La validité du jugement d’exécution forcée n’est pas examinée.
Article 93, paragraphe 1, du RMC Règle 33, règle 76 et règle 77 du REMC
L’Office vérifie si la demande d’enregistrement de l’exécution forcée est dûment signée. Lorsqu’elle est signée par le représentant du bénéficiaire, un pouvoir peut être exigé par l’Office ou, dans le cas d’une procédure inter partes, par l’autre partie à cette procédure. À défaut de présentation de ce pouvoir, la procédure se poursuit comme si aucun représentant n’avait été désigné. Lorsque la demande d’enregistrement de l’exécution forcée est signée par le représentant du titulaire qui a déjà été désigné comme représentant pour la marque communautaire en question, les conditions relatives à la signature et aux pouvoirs sont remplies.
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Article 92, paragraphe 2, article 93, paragraphe 1, du RMC
L’examen consiste notamment à déterminer si le demandeur de l’inscription (à savoir le titulaire de la marque communautaire ou le bénéficiaire) a l’obligation d’être représenté devant l’Office (voir paragraphe 2.4.4 ci-dessus).
Règle 33, paragraphe 3, du REMC
L’Office informe le demandeur de l’inscription par écrit de toute irrégularité constatée dans la demande. S’il n’est pas remédié à ces irrégularités dans le délai fixé dans la communication en question, qui est généralement de deux mois à compter de la date de notification de ladite communication, l’Office rejette la demande d’enregistrement de l’exécution forcée. La partie concernée peut former un recours contre cette décision (voir décision 2009-1 du 16 juin 2009 du présidium des chambres de recours relative aux instructions aux parties à des procédures devant les chambres de recours).
Lorsque la demande d’enregistrement de l’exécution forcée est déposée par le seul titulaire de la marque communautaire, l’Office n’informe pas le bénéficiaire. L’examen de la preuve de l’exécution forcée est réalisé d’office. L’Office ne tient pas compte des déclarations ou allégations du bénéficiaire concernant l’existence ou la portée de l’exécution forcée ou son enregistrement; le bénéficiaire ne peut s’opposer à l’enregistrement d’une exécution forcée.
2.6 Procédure d’enregistrement et publications
Règle 33, paragraphe 4, règle 84, paragraphe 5, du REMC
L’enregistrement de l’exécution forcée sur la demande de marque communautaire est mentionné dans le dossier de la demande de marque communautaire concernée qui est tenu par l’Office.
L’office notifie au demandeur de l’inscription que l’exécution forcée est inscrite dans les dossiers tenus par l’Office. Le cas échéant, le demandeur de la marque communautaire en est également informé.
Règle 84, paragraphe 3, point i), règle 85, paragraphe 2, du REMC
Si la marque est enregistrée, l’exécution forcée est publiée au Bulletin des marques communautaires et inscrite au registre des marques communautaires. L’Office informe le demandeur de l’inscription que l’exécution forcée est enregistrée. Le cas échéant, le titulaire de la marque communautaire en est également informé.
L’accès à ces informations peut être obtenu par l’inspection publique (voir les Directives, Partie E, Opérations d’enregistrement, Section 5, Inspection publique).
Les exécutions forcées sont publiées dans la Partie C.7. du Bulletin.
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3 Procédure de radiation ou de modification de l’enregistrement d’une exécution forcée
Règle 35, paragraphe 1, du REMC
L’enregistrement d’une exécution forcée peut faire l’objet d’une radiation ou d’une modification à la demande de l’une des parties intéressées, à savoir le demandeur ou titulaire de la marque communautaire ou le bénéficiaire enregistré.
3.1 Compétence, langues, présentation de la demande
Article 133 du RMC Règle 35, paragraphes 3, 6 et 7, du REMC
Les paragraphes 2.1 et 2.2 ci-dessus s’appliquent.
Il n’existe pas de formulaire de l’Office pour l’inscription de la radiation ou de la modification d’une exécution forcée.
3.2 Demandeur
Règle 35, paragraphe 1, du REMC
La demande de radiation ou de modification de l’enregistrement d’une exécution forcée peut être déposée par:
a) le demandeur ou titulaire de la marque communautaire et le bénéficiaire conjointement,
b) le demandeur ou titulaire de la marque communautaire, ou
c) le bénéficiaire enregistré.
3.2.1 Radiation de l’enregistrement d’une exécution forcée
Règle 35, paragraphe 4, du REMC
La demande de radiation de l’enregistrement d’une exécution forcée doit être accompagnée de la preuve établissant que l’exécution forcée enregistrée n’existe plus. Cette preuve est constituée par le jugement définitif du tribunal.
Lorsque seul le bénéficiaire enregistré dépose la demande de radiation, le demandeur ou titulaire de la marque communautaire n’est pas informé de cette demande. Toutes observations déposées par le titulaire sont transmises au bénéficiaire mais n’empêchent pas la radiation de l’enregistrement de l’exécution forcée. Le paragraphe 2.4.3.1 ci-dessus s’applique mutatis mutandis.
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Lorsque l’enregistrement de plusieurs exécutions forcées a été demandé simultanément, il est possible de radier l’un de ces enregistrements individuellement. En pareil cas, un nouveau numéro d’inscription est créé pour l’exécution forcée radiée.
3.2.2 Modification de l’enregistrement d’une exécution forcée
Règle 35, paragraphe 6, du REMC
Une exécution forcée peut être modifiée sur présentation du jugement du tribunal correspondant qui atteste une telle modification.
3.3 Contenu de la demande
Règle 35 du REMC
Le paragraphe 2.4 ci-dessus s’applique, à l’exception des informations concernant le bénéficiaire, qui ne sont pas exigées, sauf dans le cas d’une modification du nom du bénéficiaire enregistré.
3.4 Taxes
3.4.1 Radiation de l’enregistrement d’une exécution forcée
Article 162, paragraphe 2, du RMC Règle 35, paragraphe 3, du REMC Article 2, paragraphe 24, du RTMC
La demande de radiation de l’enregistrement d’une exécution forcée n’est réputée déposée qu’après paiement de la taxe de 200 euros par radiation (sauf si le demandeur est un tribunal ou une autorité, auquel cas aucune taxe n’est due, voir paragraphe 2.3 ci-dessus). Toutefois, si plusieurs radiations ont été sollicitées simultanément dans une seule et même demande et si le demandeur ou titulaire de la marque communautaire et le bénéficiaire sont identiques dans tous les cas, la taxe est plafonnée à 1 000 euros.
Une fois la taxe correspondante payée, celle-ci n’est pas remboursée si la demande est rejetée ou retirée.
3.4.2 Modification de l’enregistrement d’une exécution forcée
Règle 35, paragraphe 6, du REMC
La modification de l’enregistrement d’un droit réel n’est pas soumise à une taxe.
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3.5 Examen de la demande
3.5.1 Taxes
Règle 35, paragraphe 3, du REMC
Lorsque la taxe prescrite pour la demande de radiation de l’enregistrement d’une exécution forcée n’a pas été perçue, l’Office notifie au demandeur que la demande est réputée ne pas avoir été déposée.
3.5.2 Examen par l’Office
Règle 35, paragraphes 2 et 4, du REMC
Le paragraphe 2.5.2 s’applique mutatis mutandis aux éléments obligatoires de la demande, même pour la preuve de l’exécution forcée, dans la mesure où cette preuve est exigée.
L’Office notifie toute irrégularité éventuelle au demandeur de l’inscription en fixant un délai de deux mois pour y remédier. S’il n’est pas remédié à ces irrégularités, l’Office rejette la demande d’inscription de la radiation ou de la modification.
Règle 35, paragraphe 6, règle 84, paragraphe 5, du REMC
L’inscription de la radiation ou de la modification de l’exécution forcée est notifiée au demandeur; si la demande est déposée par le bénéficiaire, le demandeur ou titulaire de la marque communautaire reçoit une copie de cette communication.
3.6 Enregistrement et publication
Règle 84, paragraphe 3, point s), règle 85, paragraphe 2, du REMC
Dans le cas d’une marque communautaire enregistrée, la création, la radiation ou la modification de l’enregistrement d’une exécution forcée est inscrite au registre des marques communautaires et publiée au Bulletin des marques communautaires sous C.7.
Dans le cas d’une demande de marque communautaire, la radiation ou la modification de l’exécution forcée est mentionnée dans les dossiers de la demande de marque communautaire concernée. Lorsque l’enregistrement de la marque communautaire est publié, les exécutions forcées radiées ne sont pas publiées, et dans le cas de la modification d’une exécution forcée, les données telles que modifiées sont publiées sous C.7.2.
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4 Exécution forcée sur des dessins ou modèles communautaires enregistrés
Articles 27, 30 et 33, article 51, paragraphe 4, du RDMC Articles 24 et 26, article 27, paragraphe 2, du REDC Annexe, paragraphes 18 et 19, du RTDC
Les dispositions légales contenues dans le RDC, le REDC et le RTDC concernant les exécutions forcées correspondent aux dispositions respectives du RMC, du REMC et du RTMC.
Par conséquent, les principes juridiques et la procédure concernant l’enregistrement, la radiation ou la modification d’exécutions forcées sur des marques s’appliquent mutatis mutandis aux dessins et modèles communautaires, à l’exception des procédures spécifiques suivantes.
4.1 Demande d’enregistrement multiple de dessins ou modèles communautaires
Article 37 du RDC Article 24, paragraphe 1, du REDC
Une demande d’enregistrement de dessin ou modèle communautaire peut être déposée sous la forme d’une demande multiple, portant sur plusieurs dessins ou modèles.
Aux fins de l’effet juridique d’une exécution forcée et de leur procédure d’enregistrement, les différents dessins ou modèles inclus dans une demande multiple sont traités comme des demandes séparées, et ce, même après l’enregistrement des dessins ou modèles contenus dans la demande multiple.
En d’autres termes, chaque dessin ou modèle inclus dans une demande multiple peut faire l’objet d’une exécution forcée indépendamment des autres.
Annexe, paragraphes 18 et 19, du RTDC
La taxe de 200 euros pour l’inscription ou la radiation d’une exécution forcée s’applique par dessin ou modèle et non par demande multiple. Il en va de même du plafond de 1 000 euros lorsque des demandes multiples sont présentées.
Exemple 1
Sur 10 dessins ou modèles inclus dans une demande multiple, 6 font l’objet d’une exécution forcée en faveur du même bénéficiaire. La taxe s’élève à 1 000 euros à condition qu’une seule et même demande soit présentée pour l’enregistrement de ces six exécutions forcées ou que plusieurs demandes soient déposées le même jour.
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Exemple 2
Sur 10 dessins ou modèles inclus dans une demande multiple, 5 font l’objet d’une exécution forcée en faveur du même bénéficiaire. L’inscription d’une exécution forcée est également sollicitée pour un autre dessin ou modèle non contenu dans cette demande multiple. La taxe s’élève à 1 000 euros, à condition
qu’une seule et même demande soit présentée pour l’enregistrement de ces six exécutions forcées ou que plusieurs demandes soient déposées le même jour, et
que le titulaire du dessin ou modèle communautaire et le bénéficiaire soient identiques dans les six cas.
5 Exécution forcée sur des marques internationales
Le système de Madrid autorise l’inscription d’une exécution forcée contre un enregistrement international (voir règle 20 du règlement d’exécution commun à l’arrangement de Madrid concernant l’enregistrement international des marques et au protocole relatif à cet arrangement). Par souci de commodité, les utilisateurs peuvent recourir au formulaire MM19 pour demander l’inscription d’une restriction du droit de disposition du titulaire au registre international. L’utilisation de ce formulaire est vivement recommandée pour éviter des irrégularités. Les demandes doivent être déposées soit directement auprès du Bureau international par le titulaire ou auprès de l’Office national de propriété intellectuelle du titulaire enregistré ou auprès de l’Office d’une partie contractante à laquelle l’exécution forcée est accordée ou auprès de l’Office du bénéficiaire. La demande ne peut pas être déposée directement auprès du Bureau international par le bénéficiaire. La demande d’inscription de l’OHMI ne doit pas être utilisée.
Des informations détaillées sur l’enregistrement d’exécutions forcées sont disponibles dans la Partie B, Chapitre II, paragraphes 92.01 à 92.04 du Guide pour l’enregistrement international des marques en vertu de l’arrangement de Madrid et du protocole de Madrid (www.wipo.int/madrid/fr/guide). Pour de plus amples informations sur les marques internationales, veuillez vous reporter aux Directives, Partie M, Marques internationales.
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE E
INSCRIPTIONS AU REGISTRE
SECTION 3
MARQUES COMMUNAUTAIRES EN TANT QU’OBJETS DE PROPRIÉTÉ
CHAPITRE 5
PROCÉDURES D’INSOLVABILITÉ OU PROCÉDURES ANALOGUES
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Table des matières
1 Introduction................................................................................................ 3 1.1 Droit applicable .......................................................................................... 3 1.2 Avantages de l’enregistrement des procédures d’insolvabilité.............. 4
2 Exigences relatives à la demande d’enregistrement d’une procédure d’insolvabilité ou procédure analogue.................................. 5 2.1 Formulaire de demande .............................................................................5 2.2 Langues ......................................................................................................5 2.3 Taxes...........................................................................................................6 2.4 Demandeurs et contenu obligatoire de la demande ................................ 6
2.4.1 Demandeurs ................................................................................................... 6 2.4.2 Indications obligatoires concernant la marque communautaire et le
liquidateur ....................................................................................................... 6 2.4.3 Conditions à remplir par le demandeur – signature, preuve de la
désignation, représentation ............................................................................ 7 2.4.4 Représentation ............................................................................................... 8
2.5 Examen de la demande d’enregistrement ................................................ 8 2.6 Procédure d’enregistrement et publications ............................................9
3 Procédure de radiation ou de modification de l’enregistrement d’une procédure d’insolvabilité.............................................................. 10 3.1 Compétence, langues, présentation de la demande.............................. 10 3.2 Demandeur................................................................................................ 10
3.2.1 Radiation de l’enregistrement d’une procédure d’insolvabilité ..................... 10 3.2.2 Modification de l’enregistrement d’une procédure d’insolvabilité ................. 11
3.3 Contenu de la demande ........................................................................... 11 3.4 Taxes......................................................................................................... 11
3.4.1 Radiation de l’enregistrement d’une procédure d’insolvabilité ..................... 11 3.4.2 Modification de l’enregistrement d’une procédure d’insolvabilité ................. 11
3.5 Examen de la demande............................................................................ 11 3.6 Enregistrement et publication ................................................................. 12
4 Procédure d’insolvabilité portant sur des marques internationales... 12
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1 Introduction
Article 16, paragraphe 21, du RMC Règle 33, règle 35 du REMC Article 31 du RDC Règlement (CE) n° 1346/2000 du Conseil du 29 mai 2000 relatif aux procédures d’insolvabilité
Les marques communautaires enregistrées, ainsi que les demandes de marques communautaires peuvent être concernées par des procédures d’insolvabilité ou des procédures analogues.
Les dessins ou modèles communautaires enregistrés, ainsi que les demandes d’enregistrement de dessins ou modèles peuvent être concernés par des procédures d’insolvabilité ou des procédures analogues.
Les paragraphes 1 à 3 du présent chapitre traitent de l’enregistrement de procédures d’insolvabilité ou procédures analogues contre les marques communautaires enregistrées et les demandes de marques communautaires. Les dispositions contenues dans le RDC et le REDC régissant les procédures d’insolvabilité ou procédures analogues relatives à des dessins et modèles sont identiques aux dispositions équivalentes respectives du RMC et du REMC. Dès lors, l’exposé qui suit s’applique mutatis mutandis aux dessins et modèles communautaires. Les procédures propres aux marques internationales sont détaillées au paragraphe 4 ci-dessous.
Aux fins des présentes directives, les «procédures d’insolvabilité» désignent les procédures collectives qui entraînent le dessaisissement partiel ou total d’un débiteur, ainsi que la désignation d’un liquidateur. Au Royaume-Uni, par exemple, ces procédures comprennent la liquidation par le tribunal ou la liquidation sous contrôle judiciaire, la liquidation volontaire par les créanciers (qui doit être confirmée par le tribunal), l’administration, les concordats dans le cadre de la législation sur l’insolvabilité, la faillite ou la mise sous séquestre; le «liquidator» (liquidateur) désigne toute personne ou tout organe dont la fonction consiste à administrer ou à liquider des avoirs dont le débiteur a été dessaisi ou à contrôler l’administration de ses affaires. Au Royaume-Uni, par exemple, ces personnes ou organes comprennent les liquidateurs, les contrôleurs d’arrangements volontaires, les curateurs, les administrateurs judiciaires, les mandataires et les agents judiciaires; «Court» (tribunal) désigne l’organe judiciaire ou tout autre organe compétent d’un État membre habilité à ouvrir une procédure d’insolvabilité ou à prendre des décisions pendant cette procédure; «judgment» (jugement) en relation avec l’ouverture d’une procédure d’insolvabilité ou la désignation d’un liquidateur désigne également la décision de tout tribunal habilité à ouvrir une telle procédure ou à désigner un liquidateur (pour la terminologie utilisée sur d’autres territoires, veuillez vous reporter au règlement (CE) n° 1346/2000 du Conseil du 29 mai 2000 relatif aux procédures d’insolvabilité).
1.1 Droit applicable
Ces directives visent à expliquer la procédure à suivre devant l’Office pour l’enregistrement de l’ouverture, de la modification ou de la clôture de procédures d’insolvabilité ou procédures analogues. Conformément à l’article 16 du RMC, toutes autres dispositions sont couvertes par le droit national. En outre, le règlement (CE) n° 1346/2000 du Conseil du 29 mai 2000 relatif aux procédures d’insolvabilité régit les
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dispositions relatives à la juridiction, à la reconnaissance et au droit applicable en matière de procédures d’insolvabilité.
Article 21, paragraphe 1, du RMC
Le règlement stipule spécifiquement qu’une marque communautaire ne peut être incluse que dans une procédure d’insolvabilité ouverte dans l’État membre sur le territoire duquel est situé le centre des intérêts principaux du débiteur, sauf lorsque le débiteur est une entreprise d’assurance ou un établissement de crédit, auquel cas la marque communautaire ne peut être incluse que dans la procédure ouverte dans l’État membre où cette entreprise ou cet établissement a été agréé. Le «centre des intérêts principaux» doit correspondre au lieu où le débiteur gère habituellement ses intérêts et qui est donc vérifiable par les tiers.
1.2 Avantages de l’enregistrement des procédures d’insolvabilité
Article 21, paragraphe 3, article 23, paragraphe 4, du RMC
Si l’enregistrement de l’ouverture, de la modification et de la clôture d’une procédure d’insolvabilité n’est pas obligatoire, elle présente cependant certains avantages.
a) Compte tenu de la disposition de l’article 23, paragraphe 4, du RMC, lorsque des tiers sont susceptibles d’avoir acquis des droits ou d’avoir inscrit au registre des droits sur la marque qui sont incompatibles avec l’insolvabilité enregistrée, les effets de cette procédure sont régis par le droit de l’État membre dans lequel elle est engagée en premier lieu au sens du droit national ou des conventions applicables en la matière.
b) Dans le cas où une procédure d’insolvabilité contre une marque communautaire est inscrite au registre, le titulaire de la marque communautaire perd son droit d’agir et ne peut dès lors exercer aucune action devant l’Office (retrait, renonciation, transfert, opposition, action dans une procédure inter partes, etc.).
c) Dans le cas où une procédure d’insolvabilité contre une marque communautaire est inscrite au registre, l’Office notifie au liquidateur au moins six mois avant l’expiration de l’enregistrement que l’enregistrement est en passe d’expirer. L’Office notifie également au liquidateur toute perte de droits et l’expiration de l’enregistrement, le cas échéant.
d) L’enregistrement de la procédure d’insolvabilité est important pour maintenir la véracité du registre, notamment dans le cas de procédures inter partes. À cet égard, veuillez vous reporter aux Directives, Partie C, Opposition, Section 1, Questions de procédure, paragraphe 6.5.5.2.
L’Office recommande vivement que les liquidateurs procèdent au retrait, à la renonciation ou au transfert des marques communautaires ou demandes de marques communautaires faisant l’objet d’une procédure d’insolvabilité ou y renoncent avant la liquidation finale.
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2 Exigences relatives à la demande d’enregistrement d’une procédure d’insolvabilité ou procédure analogue
Article 21, paragraphe 3, article 24, du RMC Règle 33, règle 84, paragraphe 3, point i), du REMC
Une procédure d’insolvabilité peut être enregistrée tant pour les demandes de marques communautaires que pour les marques communautaires enregistrées.
La demande d’enregistrement d’une procédure d’insolvabilité doit réunir les conditions suivantes.
2.1 Formulaire de demande
Règle 95, points a) et b) du REMC
La demande doit être une demande formelle d’enregistrement d’une procédure d’insolvabilité ou procédure analogue.
Il est vivement recommandé d’introduire la demande d’enregistrement de la procédure d’insolvabilité contre une marque communautaire au moyen de la demande d’inscription en utilisant l’option «Autres» dans la section «Type d’inscription» du formulaire. Ce formulaire peut être obtenu gratuitement dans les langues officielles de l’Union européenne. Il peut être téléchargé depuis le site internet de l’OHMI.
Toutes les versions linguistiques de ce formulaire peuvent être utilisées, pour autant qu’il soit rempli dans l’une des langues mentionnées au paragraphe 2.2 ci-dessous.
2.2 Langues
Règle 95, point a), du REMC
La demande d’enregistrement d’une procédure d’insolvabilité contre une demande de marque communautaire peut être effectuée dans la première ou deuxième langue de la demande de marque communautaire.
Règle 95, point b), du REMC
La demande d’enregistrement d’une procédure d’insolvabilité contre une marque communautaire doit être déposée dans l’une des cinq langues de l’Office, à savoir le français, l’anglais, l’allemand, l’italien ou l’espagnol.
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2.3 Taxes
Article 162, paragraphe 2, points c) et d), du RMC Règle 33, paragraphes 1 et 4, du REMC Article 2, paragraphe 23, du RTMC
Aucune taxe n’est due pour l’enregistrement d’une procédure d’insolvabilité ou procédure analogue.
2.4 Demandeurs et contenu obligatoire de la demande
2.4.1 Demandeurs
Article 20, paragraphe 3, du RMC
L’enregistrement d’une procédure d’insolvabilité ou d’une procédure analogue peut être demandé par:
a) le liquidateur,
b) le tribunal,
c) le demandeur/titulaire/détenteur de la marque communautaire.
2.4.2 Indications obligatoires concernant la marque communautaire et le liquidateur
Règle 31, règle 33, paragraphe 1, du REMC
La demande d’enregistrement d’une procédure d’insolvabilité ou d’une procédure analogue doit contenir les informations suivantes.
Article 21, paragraphe 2, du RMC Règle 31, paragraphe 1, point a), règle 33, paragraphe 1, du REMC
a) Le numéro d’enregistrement de la marque communautaire concernée.
Lorsque le demandeur de l’inscription n’indique que quelques-unes des marques communautaires détenues par le titulaire, l’Office enregistre la procédure d’insolvabilité contre toutes les marques communautaires et demandes de marques communautaires liées au numéro d’identification du titulaire auprès de l’Office.
En cas de copropriété d’une marque communautaire, la procédure d’insolvabilité concerne la part du copropriétaire.
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Règle 1, paragraphe 1, point b), règle 31, paragraphe 1, point b), règle 33, paragraphe 1, du REMC
b) Le nom, l’adresse et la nationalité du liquidateur et l’État dans lequel il a son domicile ou son siège ou un établissement.
Règle 1, paragraphe 1, point e), règle 31, paragraphe 2, règle 33, paragraphe 1, du REMC
c) Si le liquidateur désigne un représentant, les nom et adresse professionnelle de ce dernier doivent être indiqués; l’adresse peut être remplacée par le numéro d’identification attribué par l’Office.
2.4.3 Conditions à remplir par le demandeur – signature, preuve de la désignation, représentation
Règle 79, règle 82, paragraphe 3, du REMC
Lorsqu’une signature est exigée, conformément à la règle 79 et à la règle 82, paragraphe 3, du REMC, dans les communications électroniques, l’indication du nom de l’expéditeur vaut signature.
La preuve de la désignation d’un liquidateur et de la procédure d’insolvabilité est suffisante si la demande d’enregistrement de la procédure d’insolvabilité est accompagnée du jugement du tribunal.
La présentation du jugement d’insolvabilité constitue une preuve suffisante. Souvent, les parties à la procédure d’insolvabilité ne souhaitent pas divulguer tous les détails du jugement qui peut contenir des informations confidentielles. Dans ce cas, il suffit de fournir une partie ou un extrait du jugement concerné, à condition que ladite partie ou ledit extrait identifie les parties à la procédure. Tous les autres éléments peuvent être omis ou masqués.
Les documents originaux deviennent partie intégrante du dossier et ne peuvent donc être renvoyés à la personne qui les a présentés. De simples photocopies suffisent. Il n’est pas nécessaire que les originaux ou les photocopies soient certifiés conformes ou authentifiés sauf si l’Office a des motifs raisonnables de douter de la véracité des documents.
Règle 95, points a) et b), règle 96, paragraphe 2, du REMC
La preuve de la procédure d’insolvabilité doit être produite:
a) dans la langue de l’Office qui est devenue la langue de la procédure d’enregistrement de l’insolvabilité, voir paragraphe 2.2 ci-dessus.
b) dans l’une des langues officielles de l’Union européenne autre que celle de la procédure; dans ce cas, l’Office peut exiger qu’une traduction du document soit produite dans une langue de l’Office dans un délai imparti par l’Office.
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Lorsque les documents justificatifs ne sont pas présentés soit dans l’une des langues officielles de l’Union européenne, soit dans la langue de la procédure, l’Office peut exiger une traduction dans la langue de la procédure ou, au choix de la partie requérant l’enregistrement de l’insolvabilité, dans toute langue de l’Office. Pour la remise de la traduction, l’Office fixe un délai de deux mois à compter de la date de notification de cette communication. Si la traduction n’est pas présentée dans ce délai, le document n’est pas pris en compte et est réputé n’être jamais parvenu.
2.4.4 Représentation
Article 92, paragraphe 2, article 93, paragraphe 1, du RMC
Les règles générales relatives à la représentation s’appliquent (voir Directives, Partie A, Dispositions générales, Chapitre 5, Représentation professionnelle).
2.5 Examen de la demande d’enregistrement
Article 21, paragraphe 1, du REMC
L’Office vérifie qu’aucune autre inscription n’est en cours et qu’aucune procédure d’insolvabilité n’a déjà été enregistrée pour le titulaire concerné. Seule une demande concernant l’État membre dans lequel la procédure d’insolvabilité ou une procédure analogue a été engagée en premier lieu peut être enregistrée.
Règle 33, paragraphe 3, du REMC
L’Office vérifie si la demande d’enregistrement de la procédure d’insolvabilité remplit les conditions de forme énoncées au paragraphe 2.4 ci-dessus (indication du(des) numéros(s) de marque communautaire, des informations requises concernant le liquidateur ou son représentant le cas échéant).
La validité du jugement d’insolvabilité n’est pas examinée.
Article 93, paragraphe 1, du RMC Règle 33, règle 76, règle 77 du REMC
L’Office vérifie si la demande d’enregistrement de la procédure d’insolvabilité est dûment signée. Lorsqu’elle est signée par le représentant du liquidateur, un pouvoir peut être exigé par l’Office ou, dans le cas d’une procédure inter partes, par l’autre partie à cette procédure. À défaut de présentation de ce pouvoir, la procédure se poursuit comme si aucun représentant n’avait été désigné.
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Article 92, paragraphe 2, article 93, paragraphe 1, du RMC
L’examen consiste notamment à déterminer si le demandeur de l’inscription (à savoir le liquidateur, le tribunal ou le demandeur/titulaire/détenteur de la marque communautaire) a l’obligation d’être représenté devant l’Office (voir paragraphe 2.4.4 ci-dessus).
Règle 33, paragraphe 3, du REMC
L’Office informe le demandeur de l’inscription par écrit de toute irrégularité constatée dans la demande. S’il n’est pas remédié à ces irrégularités dans le délai fixé dans la communication en question, qui est généralement de deux mois à compter de la date de notification de ladite communication, l’Office rejette la demande d’enregistrement de la procédure d’insolvabilité. La partie concernée peut former un recours contre cette décision (voir décision 2009-1 du 16 juin 2009 du présidium des chambres de recours relative aux instructions aux parties à des procédures devant les chambres de recours).
2.6 Procédure d’enregistrement et publications
Règle 33, paragraphe 4, règle 84, paragraphe 5, du REMC
La procédure d’insolvabilité portant sur une demande de marque communautaire est mentionnée dans le dossier de la demande de marque communautaire concernée qui est tenu par l’Office.
L’Office notifie au demandeur de l’inscription que la procédure d’insolvabilité est inscrite dans les dossiers tenus par l’Office. Le cas échéant, le demandeur de la marque communautaire en est également informé.
Règle 84, paragraphe 3, point i), règle 85, paragraphe 2, du REMC
Si la marque est enregistrée, la procédure d’insolvabilité est publiée au Bulletin des marques communautaires et inscrite au registre des marques communautaires. L’Office informe le demandeur de l’inscription que la procédure d’insolvabilité est inscrite.
Les coordonnées du liquidateur sont enregistrées en tant qu’«adresse de correspondance» du titulaire dans la base de données des titulaires et représentants de l’OHMI et les tiers peuvent consulter tous les détails de la procédure d’insolvabilité en déposant une demande d’inspection publique (voir Directives, Partie E, Opérations d’enregistrement, Section 5, Inspection publique).
Les procédures d’insolvabilité sont publiées dans la Partie C.6. du Bulletin. La publication comporte le(s) numéro(s) d’enregistrement de la marque ou des marques, le nom de l’autorité demandant l’inscription au registre, la date et le numéro de l’inscription, ainsi que la date de publication de l’inscription au Bulletin des marques communautaires.
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3 Procédure de radiation ou de modification de l’enregistrement d’une procédure d’insolvabilité
Règle 35, paragraphe 1, du REMC
L’enregistrement d’une procédure d’insolvabilité peut faire l’objet d’une radiation ou d’une modification à la demande de l’une des parties intéressées, à savoir le demandeur ou titulaire de la marque communautaire ou le liquidateur enregistré.
3.1 Compétence, langues, présentation de la demande
Article 133 du RMC Règle 35, paragraphes 3, 6 et 7, du REMC
Les paragraphes 2.1 et 2.2 ci-dessus s’appliquent.
Il n’existe pas de formulaire de l’Office pour l’inscription de la radiation ou de la modification d’une procédure d’insolvabilité.
3.2 Demandeur
Règle 35, paragraphe 1, du REMC
La demande de radiation ou de modification de l’enregistrement de la procédure d’insolvabilité peut être déposée par:
a) le liquidateur enregistré, b) le tribunal, c) le demandeur/titulaire/détenteur de la marque.
3.2.1 Radiation de l’enregistrement d’une procédure d’insolvabilité
Règle 35, paragraphe 4, du REMC
La demande de radiation de l’enregistrement d’une procédure d’insolvabilité doit être accompagnée de la preuve établissant que l’insolvabilité enregistrée n’existe plus. Cette preuve est constituée par le jugement définitif du tribunal.
Lorsque le seul liquidateur enregistré dépose la demande de radiation, le demandeur ou titulaire de la marque communautaire n’est pas informé de cette demande. Toutes observations déposées par le titulaire sont transmises au liquidateur mais n’empêchent pas la radiation de l’enregistrement de la procédure d’insolvabilité.
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3.2.2 Modification de l’enregistrement d’une procédure d’insolvabilité
Règle 35, paragraphe 6, du REMC
L’enregistrement d’une procédure d’insolvabilité peut être modifié sur présentation du jugement du tribunal correspondant qui atteste une telle modification.
3.3 Contenu de la demande
Règle 35 du REMC
Le paragraphe 2.4 ci-dessus s’applique, à l’exception des informations concernant le liquidateur, qui ne sont pas exigées, sauf dans le cas d’une modification du nom du liquidateur enregistré.
3.4 Taxes
3.4.1 Radiation de l’enregistrement d’une procédure d’insolvabilité
Article 162, paragraphe 2, du RMC Règle 35, paragraphe 3, du REMC Article 2, paragraphe 24, du RTMC
La demande de radiation de l’enregistrement d’une procédure d’insolvabilité n’est pas soumise à une taxe.
3.4.2 Modification de l’enregistrement d’une procédure d’insolvabilité
Règle 35, paragraphe 6, du REMC
La modification de l’enregistrement d’une procédure d’insolvabilité n’est pas soumise à une taxe.
3.5 Examen de la demande
Règle 35, paragraphes 2 et 4, du REMC
Le paragraphe 2.5.2 s’applique mutatis mutandis aux éléments obligatoires de la demande, même pour la preuve de la procédure d’insolvabilité.
L’Office notifie toute irrégularité éventuelle au demandeur de l’inscription en fixant un délai de deux mois pour y remédier. S’il n’est pas remédié à ces irrégularités, l’Office rejette la demande d’inscription de la radiation ou de la modification.
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Règle 35, paragraphe 6, règle 84, paragraphe 5, du REMC
L’inscription de la radiation ou de la modification de la procédure d’insolvabilité est notifiée au demandeur de l’inscription; si la demande est déposée par le liquidateur, le demandeur ou titulaire de la marque communautaire reçoit une copie de cette communication.
3.6 Enregistrement et publication
Règle 84, paragraphe 3, point s), règle 85, paragraphe 2, du REMC
Dans le cas d’une marque communautaire enregistrée, la création, la radiation ou la modification de l’enregistrement d’une procédure d’insolvabilité est inscrite au registre des marques communautaires et publiée au Bulletin des marques communautaires sous C.6.
Dans le cas d’une demande de marque communautaire, la radiation ou la modification de la procédure d’insolvabilité est mentionnée dans les dossiers de la demande de marque communautaire concernée. Lorsque l’enregistrement de la marque communautaire est publié, les procédures d’insolvabilité radiées ne sont pas publiées, et dans le cas de la modification d’une procédure d’insolvabilité, les données telles que modifiées sont publiées sous C.6.2.
4 Procédure d’insolvabilité portant sur des marques internationales
Le système de Madrid autorise l’inscription d’une procédure d’insolvabilité contre un enregistrement international (voir règle 20 du règlement d’exécution commun à l’arrangement de Madrid concernant l’enregistrement international des marques et au protocole relatif à cet arrangement). Par souci de commodité, les utilisateurs peuvent recourir au formulaire MM19 pour demander l’inscription d’une restriction du droit de disposition du titulaire au registre international. L’utilisation de ce formulaire est vivement recommandée pour éviter des irrégularités. Les demandes doivent être déposées soit directement auprès du Bureau international par le titulaire ou auprès de l’Office national de propriété intellectuelle du titulaire enregistré ou auprès de l’Office d’une partie contractante à laquelle l’insolvabilité est accordée ou auprès de l’Office du liquidateur. La demande ne peut pas être déposée directement auprès du Bureau international par le liquidateur. La demande d’inscription de l’OHMI ne doit pas être utilisée.
Des informations détaillées sur l’enregistrement des procédures d’insolvabilité sont disponibles dans la Partie B, Chapitre II, paragraphes 92.01 à 92.04 du Guide pour l’enregistrement international des marques en vertu de l’arrangement de Madrid et du protocole de Madrid (www.wipo.int/madrid/fr/guide). Pour de plus amples informations sur les marques internationales, veuillez vous reporter aux Directives, Partie M, Marques internationales.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES MARQUES COMMUNAUTAIRES
PARTIE M
MARQUES INTERNATIONALES
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Table des matières
1 Introduction................................................................................................ 4
2 L’Office comme office d’origine ............................................................... 4 2.1 Examen et transmission de demandes internationales........................... 4
2.1.1 Identification de demandes internationales .................................................... 5 2.1.2 Taxes .............................................................................................................. 5
2.1.2.1 Taxe de traitement ......................................................................................5 2.1.2.2 Taxes internationales ..................................................................................6
2.1.3 Formulaires..................................................................................................... 6 2.1.3.1 Habilitation à déposer une demande...........................................................7 2.1.3.2 Marque de base ..........................................................................................8 2.1.3.3 Revendication de priorité.............................................................................9 2.1.3.4 Parties contractantes désignées ...............................................................10 2.1.3.5 Signature ...................................................................................................10 2.1.3.6 Formulaire de désignation des États-Unis.................................................10
2.1.4 Examen de la demande internationale par l’Office....................................... 10 2.1.5 Irrégularités constatées par l’OMPI .............................................................. 11
2.2 Désignations postérieures....................................................................... 11 2.3 Notification de faits ayant une incidence sur l’enregistrement de
base........................................................................................................... 13 2.4 Communication de modifications ayant une incidence sur la marque
internationale............................................................................................ 14 2.4.1 Cas où les demandes de modifications peuvent être transmises sans
examen......................................................................................................... 15 2.4.2 Cas où les demandes de modifications sont transmises après examen ..... 15
3 L’Office en tant qu’office désigné .......................................................... 16 3.1 Vue d’ensemble ........................................................................................ 16 3.2 Représentation professionnelle .............................................................. 17 3.3 Première republication, recherches et formalités .................................. 18
3.3.1 Première republication.................................................................................. 18 3.3.2 Recherches................................................................................................... 18 3.3.3 Examen des formalités ................................................................................. 19
3.3.3.1 Langues.....................................................................................................19 3.3.3.2 Marques collectives...................................................................................20 3.3.3.3 Revendications d’ancienneté.....................................................................21 3.3.3.4 Termes vagues..........................................................................................23
3.4 Motifs absolus de refus............................................................................ 24 3.5 Observations de tiers............................................................................... 25 3.6 Opposition ................................................................................................ 25
3.6.1 Délai.............................................................................................................. 25 3.6.2 Récépissé et notification au titulaire international ........................................ 26 3.6.3 Taxes ............................................................................................................ 26 3.6.4 Contrôle de la recevabilité ............................................................................ 27 3.6.5 Langue de procédure ................................................................................... 27 3.6.6 Représentation du titulaire de l’enregistrement international ....................... 27
3.6.6.1 Récépissés d’oppositions ..........................................................................27
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3.6.6.2 Notification de commencement de la procédure d’opposition ...................28 3.6.7 Refus provisoire (fondé sur des motifs relatifs) ............................................ 28 3.6.8 Suspension de l’opposition lorsqu’il existe un refus provisoire pendant sur
la spécification des produits et services et/ou sur le fondement de motifs absolus ......................................................................................................... 29
3.7 Radiation de l’enregistrement international ou renonciation à la désignation de l’Union européenne ........................................................ 29
3.8 Limitation de la liste des produits et services........................................ 30 3.9 Confirmation ou retrait d’un refus provisoire et remise d’une
déclaration d’octroi de protection........................................................... 30 3.10 Deuxième republication ........................................................................... 31 3.11 Transfert de la désignation de l’Union européenne............................... 32 3.12 Nullité, déchéance et demandes reconventionnelles ............................ 32 3.13 Gestion des taxes..................................................................................... 33
4 Transformation (conversion), transformation (transformation), remplacement .......................................................................................... 33 4.1 Remarques préliminaires......................................................................... 33 4.2 Transformation (conversion) ................................................................... 34 4.3 Transformation (transformation)............................................................. 35
4.3.1 Remarques préliminaires.............................................................................. 35 4.3.2 Principes et effets ......................................................................................... 35 4.3.3 Procédure ..................................................................................................... 36 4.3.4 Examen......................................................................................................... 37
4.3.4.1 Demande de transformation d’enregistrements internationaux désignant l’Union européenne quand aucune donnée détaillée n’a été publiée ........37
4.3.4.2 Demande de transformation d’enregistrements internationaux désignant l’Union européenne quand des données détaillées ont été publiées.........37
4.3.5 Transformation (transformation) et ancienneté ............................................ 37 4.3.6 Taxes ............................................................................................................ 38
4.4 Remplacement.......................................................................................... 38 4.4.1 Remarques préliminaires.............................................................................. 38 4.4.2 Principe et effets ........................................................................................... 39 4.4.3 Procédure ..................................................................................................... 39 4.4.4 Taxes ............................................................................................................ 40 4.4.5 Publication .................................................................................................... 40 4.4.6 Remplacement et ancienneté....................................................................... 40 4.4.7 Remplacement et transformation (transformation)....................................... 40 4.4.8 Remplacement et transformation (conversion) ............................................ 41
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Cette partie des directives porte sur l’examen de marques internationales. Pour plus d’informations sur les aspects procéduraux traditionnels, veuillez vous reporter également aux autres parties pertinentes des directives (examen, opposition, annulation, etc.).
1 Introduction
Cette partie des directives a pour objet d’expliquer les conséquences pratiques du lien entre la marque communautaire et le Protocole relatif à l’Arrangement de Madrid concernant l’enregistrement international des marques (le «protocole de Madrid») sur les procédures et normes d’examen et d’opposition à l’Office. La section 2 est consacrée aux missions de l’Office comme office d’origine, c’est-à-dire concernant des demandes internationales «sortantes». La section 3 porte sur ses missions comme office désigné, c’est-à-dire concernant des enregistrements internationaux «entrants» désignant l’Union européenne. La section 4 porte sur la transformation (conversion), la transformation (transformation) et le remplacement.
Les directives n’entendent, ni ne peuvent, élargir ou réduire la substance du nouveau Titre XIII du RMC et des règles 102 à 126 du REMC. L’Office est également lié par les dispositions du protocole de Madrid et par le règlement d’exécution commun («REC»). Il pourra aussi être fait référence au «Guide pour l’enregistrement international des marques» publié par l’OMPI chaque fois que les directives ne souhaitent pas en répéter le contenu.
2 L’Office comme office d’origine
Les missions de l’Office comme office d’origine consistent essentiellement à:
examiner et transmettre les demandes internationales; examiner et transmettre les désignations postérieures; traiter les notifications d’irrégularité émis par l’OMPI; notifier à l’OMPI certains faits affectant la marque de base pendant la période de
dépendance de cinq ans; transmettre certaines demandes de modifications au registre international.
2.1 Examen et transmission de demandes internationales
Article 146 du RMC Règle 102, paragraphe 3, du REMC
Les demandes internationales déposées auprès de l’Office requièrent:
le paiement de la taxe de traitement; l’existence d’un ou de plusieurs enregistrements ou demandes de marques
communautaires de base (la ou les «marques de base»); une identité entre la demande internationale et la ou les marques de base; de compléter correctement le formulaire MM2 ou EM2; une habilitation à déposer la demande internationale par l’intermédiaire de
l’Office.
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2.1.1 Identification de demandes internationales
Une demande internationale est identifiée dans la base de données de l’Office par le numéro de la demande/marque communautaire de base, suivi du suffixe _01 (par ex. 012345678_01) s’il s’agit d’une première demande internationale. Les demandes ultérieures fondées sur la même demande/marque communautaire de base seront identifiées par _02, _03, etc. Les demandes internationales fondées sur plusieurs demandes/marques communautaires sont identifiées par le numéro du titulaire des demandes/marques communautaires.
À réception d’une demande internationale, l’examinateur envoie un reçu au demandeur en lui indiquant le numéro de dossier.
2.1.2 Taxes
2.1.2.1 Taxe de traitement
Articles 147, paragraphe 5, et 150 du RMC Article 2, paragraphe 31, du RTMC Règles 103, paragraphe 1, et 104 du REMC
Une demande internationale n’est considérée comme déposée qu’après acquittement de la taxe de traitement de 300 euros.
La taxe de traitement est réglée à l’Office par l’un des moyens de paiement acceptés (pour de plus amples informations, se reporter aux Directives, Partie A, Dispositions générales, Section 3, Paiement des taxes, frais et tarifs, paragraphe 2, Moyens de paiement).
Si le demandeur choisit de fonder la demande internationale sur une marque communautaire après son enregistrement, la demande d’enregistrement international est réputée avoir été reçue à la date d’enregistrement de la marque communautaire; par conséquent, la taxe de traitement est due à la date d’enregistrement de la marque communautaire.
Les moyens de paiement utilisés peuvent être communiqués à l’Office en cochant les cases appropriées sur le formulaire EM2 ou en remettant cette information dans le courrier accompagnant le formulaire MM2.
Si, lors de l’examen de la demande internationale, l’examinateur constate que la taxe de traitement n’a pas été acquittée, il en informe le demandeur et lui demande d’y remédier dans un délai de deux mois. Si un paiement est effectué dans le délai de deux mois prescrit par l’Office, la date de réception que l’Office communique à l’OMPI est la date à laquelle l’Office a perçu le paiement. À défaut de paiement dans le délai de deux mois prescrit, l’Office informe le demandeur que la demande internationale est réputée ne pas avoir été déposée et il clôt le dossier.
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2.1.2.2 Taxes internationales
Toutes les taxes internationales sont réglées directement à l’OMPI. Aucune taxe directement payable à l’OMPI n’est collectée par l’Office. Toute taxe réglée par erreur à l’Office est remboursée à l’expéditeur.
Si le demandeur utilise le formulaire EM2, la feuille de calcul des taxes (annexe au formulaire MM2 de l’OMPI) doit être soumise dans la langue dans laquelle la demande internationale doit être transmise à l’OMPI. Le demandeur peut également joindre une copie du paiement à l’attention de l’OMPI. Toutefois, l’Office ne vérifie pas si la feuille de calcul des taxes est jointe, si elle a été correctement remplie ou si le montant des taxes internationales a été correctement calculé. Toute question concernant le montant des taxes internationales et les moyens de paiement associés doit être adressée à l’OMPI. Un calculateur de taxes est disponible sur le site internet de l’OMPI.
2.1.3 Formulaires
Article 147, paragraphe 1, du RMC Règles 83, paragraphe 2, point b), et 103, paragraphe 2, point a), du REMC
Il est impératif d’utiliser l’un des formulaires officiels, à savoir le formulaire MM2 de l’OMPI, disponible en anglais, français ou espagnol, ou le formulaire EM2 de l’Office (adaptation du MM2 par l’Office), disponible dans toutes les langues de l’Union européenne. Les demandeurs ne peuvent pas utiliser d’autres formulaires ou modifier le contenu et la présentation des formulaires. Toutefois, le formulaire MM2 de l’OMPI et le formulaire EM2 de l’Office sont disponibles au format .doc, qui permet de saisir autant de texte que nécessaire pour chaque rubrique.
Si la demande est déposée dans une langue qui n’est pas l’une des langues du protocole de Madrid (anglais, français, espagnol), le demandeur doit indiquer dans laquelle de ces trois langues la demande doit être transmise à l’OMPI. Toutes les rubriques du formulaire doivent être complétées dans la même langue; il n’est pas possible de choisir une autre langue que celle du formulaire.
L’Office recommande d’utiliser le formulaire EM2 de l’Office. Le formulaire EM2 de l’Office, en anglais, français et espagnol, a quasiment la même présentation et la même numérotation que le formulaire MM2 de l’OMPI, mais il est adapté à l’environnement de la marque communautaire:
les demandeurs peuvent indiquer des informations de paiement (rubrique 0.4) à l’Office dans la rubrique introductive 0 et le nombre de pages (rubrique 0.5) que contient la demande;
certains choix sont limités à ce qui est applicable à l’Office (par ex. l’Office est toujours l’office d’origine (rubrique 1) et le demandeur doit être un ressortissant d’un État membre de la Communauté européenne (rubrique 3));
la rubrique 4b a été insérée pour inclure le mandataire devant l’Office; la reproduction de la marque ne doit pas nécessairement être soumise à la
rubrique 7, puisque l’Office utilisera la reproduction disponible dans la demande/marque communautaire de base;
la possibilité de demander une protection pour les mêmes produits et services que ceux contenus dans la marque de base en cochant une case a été ajoutée à la rubrique 10;
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dans la mesure où une propre désignation n’est pas possible, l’Union européenne ne figure pas dans la liste des parties contractantes devant être désignées à la rubrique 11;
la rubrique 13 a été supprimée car l’Office certifie la demande internationale par voie électronique.
Si le demandeur choisit le formulaire EM2 de l’Office dans une autre version que la version anglaise, française ou espagnole, les sections suivantes du formulaire doivent être complétées:
cocher les cases à la rubrique 0.1 pour indiquer la langue du protocole de Madrid dans laquelle la demande internationale doit être transmise à l’OMPI;
cocher les cases à la rubrique 0.2 pour sélectionner la langue dans laquelle l’Office doit communiquer avec le demandeur sur les questions relatives à la demande internationale, à savoir la langue dans laquelle est déposée la demande internationale ou la langue dans laquelle elle doit être transmise à l’OMPI (voir la deuxième phrase de l’article 147, paragraphe 1, du RMC);
cocher des cases à la rubrique 0.3 pour indiquer si une traduction de la liste des produits et services est jointe ou si l’Office est autorisé à produire la traduction;
une rubrique finale A avec des cases à cocher pour indiquer les annexes (traductions jointes).
Les cases correspondant aux rubriques 0.1, 0.2 et 0.3 doivent être cochées. Si aucune case n’est cochée à la rubrique 0.2, l’Office communiquera avec le demandeur dans la langue du formulaire EM2.
Toutes les rubriques applicables du formulaire doivent être complétées selon les indications fournies sur le formulaire lui-même et dans le «Guide pour l’enregistrement international des marques» publié par l’OMPI.
2.1.3.1 Habilitation à déposer une demande
Article 2, paragraphe 1, point i), du protocole de Madrid
Il convient de fournir une indication concernant l’habilitation à déposer une demande à la rubrique 3 du formulaire officiel. Un demandeur est habilité à déposer une demande auprès de l’Office comme office d’origine s’il est un ressortissant d’un État membre ou s’il a son domicile ou un établissement industriel ou commercial effectif et sérieux dans un État membre. Le demandeur peut choisir sur quel(s) critère(s) fonder l’habilitation à déposer une demande. Par exemple, un ressortissant danois domicilié en Allemagne peut choisir de fonder l’habilitation à déposer une demande sur sa nationalité ou son domicile. Un ressortissant français domicilié en Suisse est uniquement habilité à déposer une demande au titre de sa nationalité (dans ce cas, toutefois, un représentant devant l’Office doit être nommé). Une société suisse sans domicile ni établissement industriel ou commercial effectif et sérieux dans un État membre n’est pas habilitée à déposer une demande internationale par l’intermédiaire de l’Office.
Lorsque les demandeurs sont multiples, chacun doit remplir au moins l’un des critères d’habilitation.
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L’expression «établissement industriel ou commercial effectif et sérieux dans un État membre» doit être interprétée de la même façon que dans d’autres circonstances, comme par exemple dans le contexte d’une représentation professionnelle (voir les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle, paragraphe 3.1.1).
2.1.3.2 Marque de base
Règle 103, paragraphe 2, points c), d) et e), du REMC Règle 9, paragraphe 4, points a) (v), (vii), (vii bis à xii), règle 11, paragraphe 2, du REC
Le système de Madrid repose sur l’exigence d’une demande ou d’un enregistrement de marque nationale ou régionale de base. Conformément au protocole de Madrid, une demande internationale peut être fondée sur une marque qui a déjà été enregistrée («enregistrement de base») ou sur une demande de marque («demande de base») à quelque stade que ce soit de la procédure d’examen de la marque.
Un demandeur peut choisir de fonder sa demande internationale sur plusieurs marques de base dès lors qu’il est le demandeur/titulaire de toutes les demandes/marques communautaires de base même si, bien que contenant des marques identiques, les produits et services couverts sont différents.
Toutes les demandes/marques communautaires de base doivent avoir reçu une date de dépôt et doivent être en vigueur.
Le demandeur international doit être identique au titulaire/demandeur de la marque communautaire. La demande internationale ne peut pas être déposée par un licencié ou une société affiliée du titulaire de la ou des marques de base. Une objection à cet égard peut être corrigée par le transfert de la marque de base au demandeur international ou par l’enregistrement d’un changement de nom, le cas échéant (voir Directives, Partie E, Opérations d’enregistrement, Section 3, Marques communautaires en tant qu’objets de propriété, Chapitre 1, Transfert). Lorsqu’il existe plusieurs titulaires ou demandeurs concernant la ou les demandes/marques communautaires de base, la demande internationale doit être soumise par les mêmes personnes.
La reproduction de la marque doit être identique. Pour connaître tous les détails de la pratique de l'Office en ce qui concerne l'identité des marques déposées en noir et blanc et/ou dans des nuances de gris, par rapport à celles déposées en couleur, veuillez consulter la Partie B, Examen, Section 2, Formalités, paragraphe 14.2.1, relatif aux revendications de la priorité, qui s'applique par analogie. Une attention particulière doit être accordée aux éléments suivants:
La rubrique 7 c) du formulaire officiel doit être cochée si la marque est en caractères standard (marque verbale).
La rubrique 8 a) du formulaire officiel prévoit la possibilité de revendiquer une couleur. Si la ou les demandes/marques communautaires de base contiennent une indication de couleurs, la même indication doit être reprise dans la demande internationale (voir les Directives, Partie B, Examen, Section 2, Formalités, paragraphe 11). Si la ou les demandes/marques communautaires de base sont en couleur mais ne contiennent pas d’indication de couleurs, le demandeur peut choisir d’indiquer les couleurs pour la demande internationale.
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Si la marque de base est
○ une marque consistant en une couleur ou une combinaison de couleurs en tant que telle;
○ une marque tridimensionnelle; ○ une marque sonore; et/ou ○ une marque collective;
la demande internationale doit être identique et la rubrique 7 d) ou 9 d) doit être cochée. Si la marque de base est une marque sonore, seule la représentation graphique, par exemple la notation musicale, sera transmise à l’OMPI puisque celui-ci n’accepte pas les fichiers sonores électroniques.
Si la marque de base comprend une description, celle-ci peut être incluse dans la demande internationale (rubrique 9 e)). Toutefois, il est possible de ne pas insérer de description de la marque dans la demande internationale si la ou les marques de base n’en contiennent pas.
Il est possible d’inclure une indication même si la ou les marques de base n’en contiennent pas (rubrique 9 g)).
L’OMPI exige une transcription en caractères latins si la marque contient des caractères non latins. En l’absence de transcription, l’OMPI soulève une irrégularité qui doit être corrigée directement par le demandeur. Cela vaut pour tous les types de marques, et pas uniquement pour les marques verbales.
La liste des produits et services doit être identique à la liste contenue dans la ou les marques de base à la date de dépôt de la demande internationale ou plus restreinte que celle-ci.
Le demandeur doit présenter la liste des produits et services par classe (rubrique 10).
La liste peut aussi être limitée pour certaines parties désignées.
Si le demandeur ne fournit pas de traduction dans la langue de l’OMPI choisie (anglais, français ou espagnol), mais autorise l’Office à fournir la traduction ou à utiliser la traduction existante pour la ou les marques de base, il n’est pas consulté au sujet de la traduction.
2.1.3.3 Revendication de priorité
Si une priorité est revendiquée dans la rubrique 6 du formulaire officiel, l’office auprès duquel la marque antérieure a été déposée, le numéro de la marque (le cas échéant) et la date de dépôt doivent être indiqués. Aucun document de priorité ne doit être présenté. Si la marque antérieure invoquée comme droit de priorité afférent à une demande internationale ne porte pas sur tous les produits et services, il convient d’indiquer les produits et services concernés. Si la priorité est revendiquée sur le fondement de plusieurs marques antérieures de dates différentes, il convient d’indiquer les produits et services auxquels se rapporte chaque marque antérieure. En principe, la validité de la revendication ne sera pas contestée par l’examinateur puisque, dans la plupart des cas, la demande/marque communautaire de base est la première marque
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pour laquelle une priorité est revendiquée, ou la priorité d’une autre marque antérieure a déjà été revendiquée et examinée en relation avec la demande/marque communautaire de base. Toutefois, si des éléments du dossier démontrent qu’une priorité est revendiquée pour un droit qui n’est pas une première marque, l’examinateur soulève une objection et demande la suppression de la revendication de priorité.
2.1.3.4 Parties contractantes désignées
Une demande internationale déposée auprès de l’Office est exclusivement soumise au protocole de Madrid. Seules des parties contractantes ayant ratifié le protocole de Madrid peuvent être désignées, peu importe qu’elles soient aussi liées par l’Arrangement de Madrid.
2.1.3.5 Signature
Règle 9, paragraphe 2, point b), du REC
La signature à la rubrique 12 du formulaire officiel est facultative dans la mesure où les données seront uniquement transférées par voie électronique à l’OMPI, et non sous forme de document original ou télécopie du formulaire.
2.1.3.6 Formulaire de désignation des États-Unis
Si les États-Unis d’Amérique sont désignés, il convient de joindre un formulaire MM18 de l’OMPI dûment complété et signé (voir rubrique 11, note de bas de page **). Ce formulaire, qui contient la déclaration d’intention d’utiliser la marque, est uniquement disponible en anglais et doit être soumis dans cette langue, quelle que soit la langue de la demande internationale.
2.1.4 Examen de la demande internationale par l’Office
Article 147 du RMC Règles 103, paragraphe 2, et 104 du REMC Article 3, paragraphe 1, du protocole de Madrid
Si l’examen de la demande internationale révèle des irrégularités, l’Office invite le demandeur à y remédier dans un délai d’un mois. En principe, ce bref délai doit permettre à l’Office de transmettre la demande internationale à l’OMPI dans les deux mois suivant la date de réception et, par conséquent, de maintenir cette date comme date de l’enregistrement international.
Les examinateurs peuvent essayer de résoudre des irrégularités mineures ou chercher à obtenir des explications par téléphone afin d’accélérer le processus.
S’il n’est pas remédié aux irrégularités, l’Office indique au demandeur qu’il refuse de transmettre la demande internationale à l’OMPI. La taxe de traitement n’est pas remboursée.
Ceci n’empêche pas le dépôt d’une autre demande internationale à une date ultérieure.
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Dès que l’Office constate que la demande internationale est en ordre, il la transmet à l’OMPI par voie électronique, à l’exception des documents tels que la feuille de calcul des taxes ou le formulaire MM18, qui sont transmis en tant que pièces jointes numérisées. La transmission électronique contient la certification par l’office d’origine visée à l’article 3, paragraphe 1, du protocole de Madrid.
2.1.5 Irrégularités constatées par l’OMPI
Règles 11, paragraphe 4, 12 et 13 du REC
Si l’OMPI détecte des irrégularités dans la demande, il délivre une notification d’irrégularité qui est transféré au demandeur et à l’Office en qualité d’office d’origine. Selon leur nature, les irrégularités doivent être corrigées par l’Office ou par le demandeur. Les irrégularités relatives au paiement des taxes internationales doivent être corrigées par le demandeur. Toutes les irrégularités visées à la règle 11, paragraphe 4, du REC, doivent être corrigées par l’Office.
En cas d’irrégularités dans la classification des produits et services, dans l’indication des produits et services ou les deux, le demandeur ne peut pas présenter ses arguments directement à l’OMPI, mais doit les communiquer par l’intermédiaire de l’Office. Dans ce cas, l’Office transmet telle quelle la communication du demandeur à l’OMPI, puisque l’Office n’utilise ni la possibilité prévue à la règle 12, paragraphe 2, du REC, d’exprimer un avis différent, ni celle prévue à la règle 13, paragraphe 2, du REC, de faire une proposition de correction de l’irrégularité.
2.2 Désignations postérieures
Article 149 du RMC Règles 1, point xxvi bis, et 24, paragraphe 2, du REC Article 2, paragraphe 1, point (ii), du protocole de Madrid Règles 83, paragraphe 2, point b), 105, paragraphe 1, points a), c) et d), et paragraphes 2 et 4, du REMC
Dans le cadre du système de Madrid, le titulaire d’un enregistrement international peut étendre la portée géographique de la protection d’un enregistrement. Il existe une procédure particulière appelée «désignation postérieure à un enregistrement» qui étend la portée de la demande internationale à d’autres membres de l’Union de Madrid pour lesquels aucune désignation n’avait encore été enregistrée ou dont la désignation antérieure n’est plus valable.
Contrairement aux demandes internationales, les désignations postérieures ne doivent pas impérativement être déposées par l’intermédiaire de l’office d’origine, mais peuvent être présentées directement à l’OMPI. Le dépôt direct auprès de l’OMPI est recommandé pour accélérer le processus.
Si un enregistrement international est transféré à une personne qui n’est pas habilitée à effectuer une désignation postérieure par l’intermédiaire de l’Office, la demande relative à une telle désignation postérieure ne peut être déposée par l’intermédiaire de l’Office mais doit l’être par l’intermédiaire de l’OMPI ou de l’office d’origine
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correspondant (pour de plus amples informations sur l’habilitation à déposer une demande, se reporter au paragraphe 2.1.3.1 ci-dessus).
Les désignations postérieures peuvent uniquement intervenir après le dépôt d’une demande internationale et après l’enregistrement international en résultant.
Les désignations postérieures ne sont pas soumises au paiement d’une taxe de traitement à l’Office.
Les désignations postérieures doivent être déposées au moyen du formulaire officiel: le formulaire MM4 de l’OMPI en anglais, français ou espagnol, ou le formulaire EM4 de l’Office dans les autres langues de l’Union européenne. Il n’existe pas de formulaire spécifique de l’Office en anglais, français et espagnol dans la mesure où aucune indication particulière n’est nécessaire pour l’Office dans ces langues, le formulaire MM4 de l’OMPI étant donc suffisant.
La feuille de calcul des taxes (annexe au formulaire MM4 de l’OMPI) doit être soumise dans la langue dans laquelle la désignation postérieure doit être transmise à l’OMPI. Le demandeur peut également joindre une copie du paiement à l’attention de l’OMPI. Toutefois, l’Office ne vérifie pas si la feuille de calcul des taxes est jointe, si elle a été correctement remplie ou si le montant des taxes internationales a été correctement calculé. Toute question concernant le montant des taxes internationales et les moyens de paiement associés doit être adressée au Bureau international. Un calculateur de taxes est disponible sur le site internet de l’OMPI.
Dans les formulaires MM4 ou EM4, les indications requises sont limitées à des indications concernant le demandeur et son habilitation à déposer une demande, le représentant, la liste des produits et services, et la désignation de parties contractantes supplémentaires au protocole de Madrid. Ces indications doivent être fournies comme dans le formulaire MM2. La seule différence concernant l’habilitation à déposer une demande est qu’une désignation postérieure peut être déposée à l’Office si la demande internationale est transférée à une personne qui est un ressortissant d’un État membre de l’Union européenne ou qui a son domicile ou un établissement au sein de l’Union européenne (l’Office comme «office de la partie contractante du titulaire»).
Une désignation postérieure permet également d’étendre la portée des produits et/ou services d’une partie contractante faisant l’objet d’une désignation antérieure en relation au même enregistrement international.
La liste des produits et services peut être la même que dans l’enregistrement international (rubrique 5 a) du formulaire officiel) ou plus restreinte (rubrique 5 b) ou c)). Elle ne peut pas être plus large que l’étendue de la protection de l’enregistrement international, même si elle est couverte par la marque de base.
Par exemple, un enregistrement international pour les classes 18 et 25 avec désignation de la Chine pour la classe 25 peut faire l’objet d’une désignation postérieure de la Chine en relation aux produits de la classe 18. Cependant le même enregistrement international ne pourra pas faire l’objet d’une désignation postérieure de la Chine pour la classe 9, car cette classe n’est pas couverte par l’enregistrement international, même si la marque de base couvrait cette classe.
Dans le cadre de ces limites, différentes listes peuvent être présentées pour différentes parties contractantes désignées postérieurement.
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La marque doit être la même que l’enregistrement international initial.
Les désignations postérieures doivent être effectuées dans la même langue que la demande internationale initiale, faute de quoi l’Office refusera de les transmettre.
Si la demande n’est ni en anglais, ni en français, ni en espagnol, le demandeur doit cocher la rubrique 0.1 sur le formulaire EM4 de l’Office et indiquer la langue dans laquelle la désignation postérieure doit être transmise à l’OMPI. Cette langue peut être différente de la langue de l’enregistrement international. Les rubriques 0.2 et 0.3 concernant la traduction de la liste des produits et services et la langue de correspondance entre le demandeur et l’Office doivent aussi être complétées.
Si le titulaire/demandeur le souhaite, une désignation postérieure peut prendre effet à l’issue d’une procédure particulière, à savoir l’inscription d’une modification ou d’une radiation concernant l’enregistrement en cause ou le renouvellement de l’enregistrement international.
2.3 Notification de faits ayant une incidence sur l’enregistrement de base
Articles 44 et 49 du RMC Règles 106, paragraphe 1, points a), b) et c), et 106, paragraphes 2, 3 et 4, du REMC
Si, dans les cinq ans suivant l’enregistrement international, la ou les marques de base cessent totalement ou partiellement d’exister, l’enregistrement international est annulé dans la même mesure puisqu’il en «dépend». Une telle annulation intervient non seulement en cas d’«attaque centrale» par un tiers, mais également si la ou les marques de base expirent à la suite d’une action ou d’une absence d’action de leur titulaire.
Dans le cas de marques communautaires, ceci couvre les cas où, en tout ou en partie (pour certains produits ou services seulement),
la ou les demandes/marques communautaires sur lesquelles est fondé l’enregistrement international sont retirées, réputées retirées ou ont été rejetées;
la ou les marques communautaires sur lesquelles repose l’enregistrement international ont fait l’objet d’une renonciation ou ont été abandonnées, n’ont pas été renouvelées ou ont été déclarées nulles par l’Office ou, sur demande reconventionnelle dans une action en contrefaçon, par un tribunal des marques communautaires.
Lorsque cette situation résulte d’une décision (de l’Office ou d’un tribunal des marques communautaires), la décision doit être définitive.
Si cela survient dans le délai de cinq ans, l’Office doit notifier l’OMPI en conséquence.
L’Office vérifie que la demande internationale a effectivement été enregistrée avant de signifier à l’OMPI que la marque communautaire de base a cessé de produire ses effets.
L’OMPI doit également être informé dans les cas où une procédure a été engagée avant l’expiration du délai de cinq ans, mais n’a pas fait l’objet d’une décision définitive
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dans ce délai. Cette notification doit être faite immédiatement à l’expiration du délai de cinq ans. Les situations concernées sont:
un refus pendant de la demande/marque communautaire de base au titre de motifs absolus (y compris recours formés devant les chambres de recours du Tribunal ou de la Cour de justice);
une procédure d’opposition pendante (y compris recours formés devant les chambres de recours du Tribunal ou de la Cour de justice);
une procédure d’annulation pendante devant l’Office (y compris recours formés devant les chambres de recours du Tribunal ou de la Cour de justice);
une demande reconventionnelle dans une action en contrefaçon contre une marque communautaire, selon le registre des marques communautaires, pendante devant un tribunal des marques communautaires.
Dès lors qu’une décision définitive a été prise ou que la procédure est terminée, une nouvelle notification est envoyée à l’OMPI indiquant si et dans quelle mesure la ou les marques de base ont cessé d’exister ou restent valables.
Si, dans les cinq ans suivant l’enregistrement international, la ou les demandes/marques communautaires de base sont subdivisées ou transférées en partie, ceci doit également être signifié à l’OMPI. Toutefois, de telles situations sont sans effet sur la validité de l’enregistrement international. La notification vise simplement à garder une trace du numéro de la ou des marques sur lesquelles repose l’enregistrement international.
L’Office ne notifie aucun autre changement concernant la ou les marques de base à l’OMPI. Si le demandeur/titulaire souhaite inscrire de tels changements au registre international, il en fait la demande séparément (voir paragraphe 2.4 ci-dessous).
2.4 Communication de modifications ayant une incidence sur la marque internationale
Règle 107 du REMC
Le registre international est tenu par l’OMPI. Les possibles modifications énumérées ci-dessous ne peuvent être enregistrées qu’après l’enregistrement de la marque.
L’Office ne traite pas les demandes de renouvellement ni le paiement de la taxe de renouvellement.
En principe, la plupart des modifications apportées à des enregistrements internationaux peuvent être déposées directement auprès de l’OMPI par le titulaire enregistré de l’enregistrement international ou par l’intermédiaire de l’office d’origine. Toutefois, certaines demandes de modifications peuvent être déposées par une autre partie et par l’intermédiaire d’un autre office, comme exposé ci-dessous.
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2.4.1 Cas où les demandes de modifications peuvent être transmises sans examen
Règles 20, 20 bis, et 25, paragraphe 1, du REC
Les demandes de modifications ci-dessous concernant un enregistrement international peuvent être présentées à l’Office comme «office de la partie contractante du titulaire»:
formulaire MM5 de l’OMPI: changement de titulaire, total ou partiel, soumis par le titulaire inscrit de l’enregistrement international (dans la terminologie de la marque communautaire, cela correspond à un transfert);
formulaire MM6 de l’OMPI: limitation de la liste des produits et services pour toutes les parties contractantes ou certaines d’entre elles;
formulaire MM7 de l’OMPI: renonciation à une ou plusieurs parties contractantes (pas toutes);
formulaire MM8 de l’OMPI: radiation totale ou partielle de l’enregistrement international;
formulaire MM9 de l’OMPI: changement de nom ou d’adresse du titulaire; formulaires MM13/MM14 de l’OMPI: nouvelle licence ou modification d’une
licence soumise par le titulaire enregistré de l’enregistrement international; formulaire MM15 de l’OMPI : radiation de l’inscription d’une licence formulaire MM19 de l’OMPI: restriction du droit de disposition du titulaire soumise
par le titulaire inscrit de l’enregistrement international (dans la terminologie de la marque communautaire, cela correspond à un droit réel, une mesure d’exécution forcée ou une procédure d’insolvabilité envisagés aux articles 19, 20 et 21 du RMC).
De telles demandes adressées à l’Office par le titulaire de l’enregistrement international seront simplement transférées à l’OMPI sans examen. Les dispositions du RMC et du REMC relatives aux procédures correspondantes ne s’appliquent pas. En particulier, les règles linguistiques applicables sont celles du REC et aucune taxe ne doit être réglée à l’Office.
Ces demandes ne peuvent être déposées par l’intermédiaire de l’Office que s’il est l’office d’origine ou s’il a acquis compétence à l’égard du titulaire du fait d’un transfert de l’enregistrement international (voir la règle 1, point xxvi bis, du REC). Toutefois, cette condition ne sera pas vérifiée par l’Office puisque celui-ci se contentera de transmettre la requête, qui aurait pu être déposée directement auprès de l’OMPI.
Les possibilités prévues à la règle 20, paragraphe 1, point a), du REC, qui permettent à un office de la partie contractante du titulaire de notifier au Bureau international toute restriction du droit de disposition du titulaire de son propre chef, ne seront pas utilisées.
2.4.2 Cas où les demandes de modifications sont transmises après examen
Règles 20, paragraphe 1, point a), 20 bis, paragraphe 1, et 25, paragraphe 1, point b), du REC Règle 120 du REMC
Le règlement d’exécution commun dispose que des demandes d’enregistrement de changement de propriétaire, de licence ou de restriction du droit de disposition du
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titulaire peuvent uniquement être déposées directement auprès de l’OMPI par le titulaire de l’enregistrement international. Il serait virtuellement impossible d’enregistrer un changement de propriétaire ou de licence à l’OMPI si:
le titulaire d’origine n’existait plus (fusion, décès); ou le titulaire ne coopérait pas avec son licencié, ou (plus probablement encore)
avec le bénéficiaire d’une mesure d’exécution forcée.
Pour ces raisons, le nouveau titulaire, le licencié ou le bénéficiaire du droit de disposition n’a pas d’autre choix que de déposer sa demande auprès de l’office de la partie contractante du titulaire. L’OMPI enregistre ces demandes sans examen au fond du fait qu’elles ont été transmises par ledit office.
Pour éviter qu’un tiers ne puisse devenir le titulaire ou le licencié d’un enregistrement international, il est impératif que l’Office examine toutes les demandes présentées par toute autre personne que le titulaire de l’enregistrement international pour déterminer s’il existe une preuve du transfert, de la licence ou de l’autre droit, tel que prévu à la règle 120 du REMC. L’Office se limite à examiner la preuve du transfert, de la licence ou de l’autre droit. La règle 31, paragraphes 1 et 5, du REMC, ainsi que les parties correspondantes des directives de l’Office relatives aux transferts, licences, droits réels, mesures d’exécution forcée et procédures d’insolvabilité, s’appliquent par analogie. Si aucune preuve n’est produite, l’Office refuse de transmettre la demande à l’OMPI.
Une telle décision est susceptible de recours.
À tous les autres égards, les règles du RMC et du REMC ne s’appliquent pas. En particulier, la demande doit être faite dans l’une des langues de l’OMPI et sur l’un des formulaires appropriés de l’OMPI, et aucune taxe n’est payable à l’Office.
3 L’Office en tant qu’office désigné
3.1 Vue d’ensemble
Depuis le 1er octobre 2004, toute personne qui est un ressortissant d’un État membre ou dispose d’un domicile ou d’un établissement commercial dans un État ayant ratifié le protocole de Madrid et qui est le titulaire d’une demande ou d’un enregistrement national dans le même État (une «marque de base») peut, par l’intermédiaire de l’office national auprès duquel la marque de base est demandée ou enregistrée (l’«office d’origine»), déposer une demande internationale ou une désignation postérieure dans laquelle il peut désigner l’Union européenne.
Après examen de la classification et vérification de certaines formalités (y compris paiement de taxes), l’OMPI publie l’enregistrement international dans la Gazette internationale, délivre le certificat d’enregistrement et informe les offices désignés de l’enregistrement international. L’Office reçoit exclusivement sous forme électronique les données provenant de l’OMPI.
L’Office identifie les enregistrements internationaux désignant l’Union européenne par leur numéro d’enregistrement OMPI précédé d’un «W» et d’un 0 s’il s’agit d’un nouvel enregistrement international (par ex. W01 234 567) et d’un 1 s’il s’agit d’une désignation postérieure (par ex. W10 987 654). Les autres désignations de l’Union européenne pour le même enregistrement international ont pour identifiants W2, W3,
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etc. Lors d’une recherche dans les bases de données en ligne de l’Office, le «W» ne doit cependant pas être indiqué.
L’Office dispose de 18 mois pour informer l’OMPI de tous les motifs possibles de refus de la désignation de l’Union européenne. La période de 18 mois commence à courir à la date de notification de la désignation à l’Office.
Si l’OMPI envoie des corrections qui affectent la marque elle-même, les produits et services ou la date de désignation, il appartient à l’Office de décider si une nouvelle période de 18 mois doit commencer à courir à partir de la date de la nouvelle notification. Si une correction n’affecte qu’une partie des produits et services, le nouveau délai s’applique à cette partie seulement et l’Office doit republier en partie l’enregistrement international dans le Bulletin des marques communautaires et rouvrir le délai d’opposition pour cette seule partie des produits et services.
Les missions principales exercées par l’Office en qualité d’office désigné sont:
première republication des enregistrements internationaux désignant l’Union européenne;
rédaction de rapports de recherche communautaires; examen de formalités, y compris revendications d’ancienneté; examen des motifs absolus; examen d’oppositions contre des enregistrements internationaux; traitement de communications provenant de l’OMPI concernant des
changements apportés aux enregistrements internationaux.
3.2 Représentation professionnelle
Articles 92, paragraphe 2, et 93 du RMC
En principe, il n’est pas nécessaire pour le titulaire de l’enregistrement international de nommer un représentant devant l’Office.
Les titulaires non européens sont cependant tenus d’être représentés (a) suite à un refus provisoire, (b) pour déposer des revendications d’ancienneté directement auprès de l’Office ou (c) suite à une objection concernant une revendication d’ancienneté (voir les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle, et articles 92 et 93 du RMC).
Si le titulaire non européen de l’enregistrement international a nommé un représentant devant l’OMPI qui figure aussi dans la base de données des représentants tenue par l’Office, celui-ci est automatiquement considéré comme le représentant du titulaire de l’enregistrement international devant l’Office.
Si le titulaire non européen de l’enregistrement international n’a pas nommé de représentant ou a nommé un représentant devant l’OMPI qui ne figure pas dans la base de données des représentants tenue par l’Office, toutes les notifications de refus provisoire ou d’objection contiennent une invitation à nommer un représentant, conformément aux articles 92 et 93 du RMC. Pour de plus amples informations sur la représentation dans le cadre de chaque procédure devant l’Office, se reporter aux paragraphes 3.3.3, 3.4 et 3.6.6 ci-dessous.
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3.3 Première republication, recherches et formalités
3.3.1 Première republication1
Article 152 du RMC
À réception, les enregistrements internationaux sont immédiatement republiés dans la Partie M.1 du Bulletin des marques communautaires, sauf si la deuxième langue n’a pas été indiquée.
La publication est limitée à des données bibliographiques, à la reproduction de la marque et aux numéros de classes. Elle n’inclut pas la liste complète des produits et services. Cela signifie, en particulier, que l’Office ne traduit pas les enregistrements internationaux ou la liste des produits et services. La publication indique également la première et la deuxième langues de l’enregistrement international et contient une référence à la publication de l’enregistrement international dans la Gazette de l’OMPI, qu’il convient de consulter pour de plus amples informations. Il est renvoyé au Bulletin des marques communautaires sur le site internet de l’Office pour d’autres informations.
À compter de la date de la première republication, l’enregistrement international produit les mêmes effets qu’une demande de marque communautaire publiée.
3.3.2 Recherches
Article 155 du RMC
Comme pour les dépôts de marques communautaires directes, l’Office rédige un rapport de recherche communautaire pour chaque enregistrement international qui cite des marques communautaires similaires et des enregistrements internationaux désignant l’Union européenne. Les titulaires des marques antérieures cités dans le rapport reçoivent un courrier d’information conformément à l’article 155, paragraphe 4, du RMC. En outre, sur demande du titulaire international, l’Office envoie l’enregistrement international aux offices nationaux participants aux fins de recherches nationales (voir les Directives, Partie B, Examen, Section 1, Procédures).
La demande de recherche nationale doit être déposée directement auprès de l’Office. Les titulaires d’enregistrements nationaux désignant l’Union européenne doivent demander les recherches nationales et acquitter la taxe correspondante dans un délai d’un mois suivant la notification de la désignation à l’Office par l’OMPI. En cas de paiement tardif ou de non-paiement de taxes de recherche, il est procédé comme si la demande de recherches nationales n’avait pas été déposée et seul le rapport de recherche communautaire est établi.
Le paiement peut intervenir à l’aide de l’un quelconque des moyens de paiement acceptés par l’Office (pour de plus amples informations, se reporter aux Directives, Partie A, Dispositions générales, Section 3, Paiement des taxes, frais et tarifs, paragraphe 2).
1 Les enregistrements internationaux sont tout d’abord publiés à la Gazette internationale, puis «republiés» par l’Office.
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Les rapports de recherche sont envoyés directement au titulaire de l’enregistrement international ou, si celui-ci a nommé un représentant devant l’OMPI, audit représentant, peu importe l’endroit où il se trouve. Le titulaire n’est pas tenu de nommer un représentant devant l’Office aux seules fins de la réception du rapport de recherche ou de la demande de recherches nationales.
3.3.3 Examen des formalités
L’examen des formalités par l’Office concernant des enregistrements internationaux se limite à vérifier si une deuxième langue a été indiquée, si la demande porte sur une marque collective, s’il existe des revendications d’ancienneté et si la liste des produits et/ou services répond aux exigences de clarté et de précision telles qu’elles sont décrites dans la partie B, section 3, Classification.
3.3.3.1 Langues
Article 119, paragraphes 3 et 4, du RMC Règles 96, paragraphe 1, 112 et 126 du REMC Règle 9, paragraphe 5, point g) (ii), du REC
La règle 9, paragraphe 5, point g) (ii), du REC, et la règle 126 du REMC, imposent au demandeur d’un enregistrement international désignant l’Union européenne d’indiquer une deuxième langue, différente de la première, choisie parmi les quatre autres langues de l’Office, en cochant la case correspondante dans la section consacrée aux parties contractantes des formulaires MM2/MM3 ou MM4 de l’OMPI.
Conformément à la règle 126 du REMC, la langue de dépôt de la demande internationale est la langue de la procédure au sens de l’article 119, paragraphe 4, du RMC. Si la langue choisie par le titulaire de l’enregistrement international dans des procédures écrites n’est pas la langue de la demande internationale, le titulaire doit fournir une traduction dans cette langue dans un délai d’un mois suivant la présentation du document original. À défaut de réception de la traduction dans ce délai, le document original est réputé ne pas avoir été reçu par l’Office.
La deuxième langue indiquée dans la demande internationale est la deuxième langue au sens de l’article 119, paragraphe 3, du RMC, c’est-à-dire une éventuelle langue de procédure pour les procédures d’opposition, de déchéance ou d’annulation devant l’Office.
S’il n’a pas été indiqué de deuxième langue, l’examinateur délivre un refus provisoire de protection et accorde au titulaire un délai de deux mois pour y remédier à compter de la date d’émission du refus provisoire par l’Office, conformément à la règle 112 du REMC. Si le titulaire de l’enregistrement international est tenu d’être représenté devant l’Office et si son représentant devant l’OMPI ne figure pas dans la base de données des représentants tenue par l’Office, la notification du refus provisoire invite le titulaire à nommer un représentant conformément aux articles 92 et 93 du RMC. Cette notification est inscrite au registre international, publiée dans la Gazette et envoyée au titulaire de l’enregistrement international. La réponse au refus provisoire doit être adressée à l’Office.
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Si, dans le délai prescrit, le titulaire de l’enregistrement international corrige l’irrégularité et satisfait à l’exigence de nommer un représentant devant l’Office, le cas échéant, l’enregistrement international fait l’objet d’une republication.
Si l’irrégularité n’est pas corrigée et/ou si aucun représentant n’est nommé (le cas échéant), l’Office confirme le refus au titulaire de l’enregistrement international. Le titulaire dispose de deux mois pour former un recours. Dès lors que la décision est finale, l’Office informe l’OMPI de la confirmation du refus provisoire.
3.3.3.2 Marques collectives
Articles 66 et 67 du RMC Règles 43 et 121, paragraphes 1, 2 et 3, du REMC
Il n’existe que deux types de marques dans le système de la marque communautaire: les marques individuelles et les marques collectives (pour de plus amples informations, se reporter aux Directives, Partie B, Examen, Section 2, Formalités).
Le formulaire de demande internationale ne contient qu’une seule indication regroupant les marques collectives, les marques de certification et les marques de garantie. Par conséquent, si l’enregistrement international désignant l’Union européenne est fondé sur une marque de certification, marque de garantie ou marque collective nationale, celle-ci est identifiée comme une marque collective devant l’Office, ce qui entraîne l’acquittement de taxes plus élevées.
Les conditions applicables aux marques collectives communautaires s’appliquent aussi aux enregistrements internationaux désignant l’Union européenne comme marques collectives.
Conformément à la règle 121, paragraphe 2, du REMC, le titulaire doit présenter le règlement d’usage de la marque directement à l’Office dans les deux mois suivant la date à laquelle le Bureau international notifie la désignation à l’Office.
Si, dans ce délai, le règlement d’usage n’a pas été présenté ou contient des irrégularités, ou si le titulaire ne satisfait pas aux exigences de l’article 66, l’examinateur délivre un refus provisoire de protection et accorde au titulaire deux mois pour y remédier à compter de la date d’émission du refus provisoire par l’Office, conformément à la règle 121, paragraphe 3, du REMC. Si le titulaire de l’enregistrement international est tenu d’être représenté devant l’Office et si son représentant devant l’OMPI ne figure pas dans la base de données des représentants tenue par l’Office, la notification du refus provisoire invite le titulaire à nommer un représentant, conformément aux articles 92 et 93 du RMC. Cette notification est inscrite au registre international, publiée dans la Gazette et envoyée au titulaire de l’enregistrement international. La réponse au refus provisoire doit être adressée à l’Office.
Si, dans le délai prescrit, le titulaire de l’enregistrement international corrige l’irrégularité et satisfait à l’exigence de nommer un mandataire devant l’Office, le cas échéant, l’enregistrement international est effectué.
Si l’irrégularité n’est pas corrigée et/ou si aucun mandataire n’est nommé (le cas échéant), l’Office confirme le refus au titulaire de l’enregistrement international et lui
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accorde un délai de deux mois pour former un recours. Dès lors que la décision est définitive, l’Office informe l’OMPI de la confirmation du refus provisoire.
Si la réponse au refus provisoire contient des éléments confirmant à l’Office que la marque de base est une marque de certification ou marque de garantie et que le titulaire de l’enregistrement international ne remplit pas les conditions pour être titulaire d’une marque collective communautaire, l’Office examine la désignation comme marque individuelle. Le titulaire de l’enregistrement international est informé en conséquence et obtient le remboursement de la différence en euros entre la taxe due pour une désignation individuelle de l’Union européenne et celle due pour une désignation collective.
3.3.3.3 Revendications d’ancienneté
Revendications d’ancienneté déposées avec la désignation
Article 153, paragraphe 1, du RMC Règles 9, paragraphe 3, point d), et paragraphe 7, 108 et 109, paragraphes 1, 2, 3 et 4, du REMC Règles 9, paragraphe 5, point g) (i), et 21 bis du REC
Un demandeur qui désigne l’Union européenne dans une demande internationale ou une désignation postérieure peut revendiquer l’ancienneté d’une marque antérieure enregistrée dans un État membre. Une telle revendication doit être présentée au moyen du formulaire MM17 annexé à la demande internationale ou à la demande de désignation postérieure, qui doit indiquer pour chaque revendication:
l’État membre de l’Union européenne dans lequel le droit antérieur est enregistré; le numéro d’enregistrement; la date de dépôt de l’enregistrement correspondant.
Il n’existe pas de disposition équivalente à la règle 8, paragraphe 2, du REMC, applicable aux dépôts de marques communautaires directes.
Il ne faut pas joindre des certificats ou documents à l’appui des revendications d’ancienneté au formulaire MM17, puisque l’OMPI ne les transmet pas à l’Office.
Les revendications d’ancienneté présentées avec la demande internationale ou la désignation postérieure sont examinées de la même façon que les revendications d’ancienneté présentées avec une demande de marque communautaire. Pour de plus amples informations, se reporter aux Directives, Partie B, Examen, Section 2, Formalités.
S’il est nécessaire de produire des documents à l’appui de la revendication d’ancienneté ou si la demande contient des irrégularités, l’examinateur délivre au titulaire de l’enregistrement international une notification d’irrégularités dans laquelle il lui accorde un délai de deux mois pour y remédier. Si le titulaire de l’enregistrement international est tenu d’être représenté dans des procédures devant l’Office et si son mandataire devant l’OMPI ne figure pas dans la base de données des mandataires tenue par l’Office, le titulaire est aussi invité à nommer un mandataire devant l’Office.
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Si la revendication d’ancienneté est acceptée par l’Office, les offices de propriété intellectuelle concernés en sont informés. Il n’est pas nécessaire d’informer l’OMPI dans la mesure où aucune modification du registre international n’est requise.
Si l’irrégularité n’est pas corrigée et/ou si aucun mandataire n’est nommé (le cas échéant), le droit d’ancienneté s’éteint conformément à la règle 109, paragraphe 2, du REMC. Le titulaire de l’enregistrement international peut demander une décision, qui est susceptible de recours. Dès lors que la décision est définitive, l’Office informe l’OMPI de toute déchéance, tout refus ou toute annulation du droit d’ancienneté ou de tout retrait de la revendication d’ancienneté. De telles modifications sont inscrites au registre international et publiées par l’OMPI.
Revendications d’ancienneté déposées directement auprès de l’Office
Article 153, paragraphe 2, du RMC Règle 110, paragraphes 1, 2, 4, 5 et 6, du REMC Règle 21 bis, paragraphe 2, du REC
Le titulaire de l’enregistrement international peut aussi revendiquer l’ancienneté d’une marque antérieure enregistrée dans un État membre directement auprès de l’Office au moment de la publication de l’acceptation définitive de l’enregistrement international. Si le titulaire de l’enregistrement international est tenu d’être représenté dans des procédures devant l’Office et si son représentant devant l’OMPI ne figure pas dans la base de données des représentants tenue par l’Office, l’Office invite le titulaire à nommer un représentant mandataire, conformément aux articles 92 et 93 du RMC.
La réponse doit être adressée à l’Office.
Toute revendication d’ancienneté présentée dans l’intervalle entre le dépôt de la demande internationale et la publication de l’acceptation définitive de l’enregistrement international est réputée avoir été reçue par l’Office à la date de publication de l’acceptation définitive de l’enregistrement international et, par conséquent, sera examinée par l’Office après cette date.
S’il est nécessaire de produire des documents à l’appui de la revendication d’ancienneté ou si la demande contient des irrégularités, l’examinateur délivre au titulaire de l’enregistrement international une notification d’irrégularités dans laquelle il lui accorde un délai de deux mois pour y remédier. Si le titulaire de l’enregistrement international est tenu d’être représenté dans des procédures devant l’Office et si son représentant devant l’OMPI ne figure pas dans la base de données des représentants tenue par l’Office, le titulaire est aussi invité à nommer un représentant devant l’Office.
Si la revendication d’ancienneté est acceptée par l’Office, celui-ci en informe l’OMPI, qui inscrit cet élément au registre international et le publie.
Les offices de propriété intellectuelle concernés sont informés conformément à la règle 110, paragraphe 6, du REMC.
Si l’irrégularité n’est pas corrigée et/ou si un représentant n’est pas nommé (le cas échéant), le droit d’ancienneté est refusé et le titulaire de l’enregistrement international bénéficie d’un délai de deux mois pour former un recours. Dans ce cas, l’OMPI n’est pas informé. Il en va de même si la revendication d’ancienneté est abandonnée.
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3.3.3.4 Termes vagues
Articles 36 et 145 du RMC Règles 2 et 9 du REMC
Les enregistrements internationaux désignant l’UE doivent être examinés en vue de la spécification des termes généraux ou vagues figurant dans la liste des produits et services de la même manière que pour les demandes de marques communautaires directes (pour de plus amples détails, se reporter aux Directives, Partie B, Examen, Section 3, Classification).
Lorsque l’enregistrement international comporte, dans la liste des produits et/ou services, des termes vagues qui manquent de clarté ou de précision, l’Office émet un refus provisoire de protection et accorde au titulaire un délai de deux mois à compter du jour où l’OHMI délivre le refus provisoire conformément aux règles 2 et 9 du REMC pour remédier à l’irrégularité. Si le titulaire de l’enregistrement international est tenu d’être représenté dans des procédures devant l’Office et si son représentant devant l’OMPI ne figure pas dans la base de données des représentants tenue par l’Office, la notification de refus provisoire invitera le titulaire à nommer un représentant conformément aux articles 92 et 93 du RMC. Cette notification est inscrite au registre international, publiée dans la Gazette et communiquée au titulaire de l’enregistrement international. La réponse au refus provisoire doit être adressée à l’Office.
Après envoi du refus provisoire, tout nouvel examen est identique à celui d’une demande de marque communautaire directe; des échanges directs avec le titulaire ou son représentant interviennent aussi souvent que nécessaire. Les termes qui doivent être précisés par le titulaire de l’enregistrement international devraient toujours figurer dans la même classe que le libellé original inscrit au registre international.
Si l’objection est levée à l’issue du réexamen ou si le titulaire de l’enregistrement international corrige l’irrégularité et satisfait à l’exigence de nommer un représentant devant l’Office, le cas échéant, et dans le délai prescrit, l’Office délivre un statut provisoire de la marque à l’OMPI, à condition qu’aucun autre refus provisoire ne soit en cours et que le délai d’opposition soit toujours ouvert; l’enregistrement international poursuit alors son cours.
Les réponses reçues par le titulaire de l’enregistrement international ou par son représentant ne sont pas traitées s’ils sont tous deux situés en dehors de l’Union européenne.
Si le titulaire ne parvient pas à lever les objections ou à convaincre l’examinateur qu’elles sont infondées, ou s’il s’abstient de répondre à l’objection, le refus provisoire est confirmé. En d’autres termes, si le refus provisoire ne concerne qu’une partie des produits et services, seuls les produits et services en question sont refusés, tandis que les autres sont acceptés. Le titulaire de l’enregistrement international dispose de deux mois pour former un recours.
Dès lors que la décision est définitive et si le refus est total, l’Office informe l’OMPI de la confirmation du refus provisoire. Si le refus est uniquement partiel, la communication est remise à l’OMPI au terme de toutes les autres procédures (motifs
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absolus/oppositions) ou à l’expiration du délai d’opposition, sans réception d’opposition (voir paragraphe 3.9 ci-dessous).
3.4 Motifs absolus de refus
Article 154, paragraphe 1, 18 bis paragraphe 1 du RMC Règles 112, paragraphe 5, 112, paragraphe 1 et 113 du REMC
Les enregistrements internationaux désignant l’Union européenne font l’objet d’un examen relatif aux motifs absolus de refus comme les demandes de marques communautaires directes (pour de plus amples informations, se reporter aux Directives, Partie B, Examen, Section 4, Motifs absolus de refus et marques communautaires collectives).
Si l’Office conclut que la marque peut bénéficier d’une protection, et sous réserve qu’aucun autre refus provisoire ne soit en cours, il envoie un statut provisoire de la marque à l’OMPI, indiquant que l’examen d’office a été effectué, mais que l’enregistrement international est toujours ouvert aux oppositions ou observations de tiers. Cette notification est inscrite au registre international, publiée dans la Gazette et communiquée au titulaire de l’enregistrement international.
Si l’Office conclut que la marque ne peut bénéficier d’une protection, il envoie un refus provisoire de protection accordant au titulaire deux mois à compter de la date d’envoi du refus provisoire pour formuler des observations. Si le titulaire de l’enregistrement international est tenu d’être représenté dans des procédures devant l’Office et si son représentant devant l’OMPI ne figure pas dans la base de données des représentants tenue par l’Office, la notification du refus provisoire invite aussi le titulaire à nommer un représentant, conformément aux articles 92 et 93 du RMC. Cette notification est inscrite au registre international, publiée dans la Gazette et communiquée au titulaire de l’enregistrement international. La réponse au refus provisoire doit être adressée à l’Office.
Si l’objection est levée à l’issue du réexamen, l’examinateur délivre un statut provisoire de la marque à l’OMPI, à condition qu’aucun autre refus provisoire ne soit en cours et que le délai d’opposition soit toujours ouvert.
Si l’Office n’a pas délivré de refus provisoire avant le début du délai d’opposition (six mois après la republication), l’examen ex Officio des motifs absolus est réputé clos. Un statut provisoire de la marque est donc délivré automatiquement.
Après envoi du refus provisoire, tout nouvel examen est identique à celui d’une demande de marque communautaire directe; des échanges directs avec le titulaire ou son représentant interviennent aussi souvent que nécessaire.
Les réponses reçues par le titulaire de l’enregistrement international ou son représentant ne sont pas traitées s’ils sont tous deux situés en dehors de l’Union européenne.
Si le titulaire ne parvient pas à lever les objections ou à convaincre l’examinateur qu’elles sont infondées, ou s’il ne répond pas à l’objection, le refus est confirmé. En d’autres termes, si le refus provisoire ne concerne que quelques produits et services, seuls les produits et services en question sont refusés, tandis que les autres sont
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acceptés. Le titulaire de l’enregistrement international dispose de deux mois pour former un recours.
Dès lors que la décision est définitive et pour autant que le refus soit total, l’Office informe l’OMPI de la confirmation du refus provisoire. Si les motifs absolus de refus sont uniquement partiels, la communication est remise à l’OMPI à l’issue de toutes les autres procédures (spécification des produits et services/oppositions) ou à l’expiration du délai d’opposition, sans réception d’opposition (voir paragraphe 3.9 ci-dessous).
3.5 Observations de tiers
Article 40 du RMC Règle 112, paragraphe 5, du REMC
Des observations de tiers peuvent être valablement déposées auprès de l’Office à compter de la date de notification de l’enregistrement international à l’Office et au moins jusqu’à la fin du délai d’opposition et, si une opposition a été formée, tant que celle-ci est pendante, mais pas au-delà de la période de 18 mois dont dispose l’Office pour informer l’OMPI des motifs de refus possibles (voir paragraphe 3.1 ci-dessus).
Si des observations de tiers sont reçues avant que l’Office ne communique le résultat de l’examen des motifs absolus à l’OMPI et si l’Office considère les observations justifiées, un refus provisoire est émis sans mention des observations de tiers.
Si des observations de tiers sont reçues après l’émission d’un refus provisoire sur le fondement de motifs absolus en rapport avec des produits et services autres que ceux sur lesquels portent les observations et si l’Office considère les observations justifiées, un nouveau refus provisoire est émis sans mention des observations de tiers.
Si des observations de tiers sont reçues après l’émission d’un statut provisoire de la marque et si l’Office considère qu’elles sont justifiées, un refus provisoire postérieur aux observations de tiers est émis. Les observations sont jointes au refus provisoire.
La procédure d’examen ultérieure est identique à la procédure décrite dans les Directives, Partie B, Examen, Section 1, Procédure, paragraphe 3.1, Aspects procéduraux relatifs aux observations de tiers et à l’examen des motifs absolus.
Si l’Office considère les observations injustifiées, elles sont simplement transférées au demandeur sans en informer l’OMPI.
3.6 Opposition
Article 156 du RMC Règles 114 et 115 du REMC
3.6.1 Délai
Des oppositions peuvent être formées contre l’enregistrement international dans un délai de six à neuf mois suivant la date de la première republication. Par exemple, si la
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première republication intervient le 15 février 2012, le délai d’opposition débute le 16 août 2012 et expire le 15 novembre 2012.
Le délai d’opposition est fixe et indépendant de l’issue de la procédure relative aux motifs absolus. Néanmoins, le début du délai d’opposition dépend du résultat de l’examen des motifs absolus, pour autant que la procédure d’opposition puisse être suspendue en cas d’émission d’un motif absolu de refus.
Des oppositions formées après la republication de l’enregistrement international mais avant le début du délai d’opposition sont conservées et réputées avoir été formées le premier jour du délai d’opposition. Si l’opposition est retirée avant cette date, la taxe d’opposition est remboursée.
Pour de plus amples informations sur la procédure d’opposition, se reporter aux Directives, Partie C, Opposition, Section 1, Questions procédurales.
3.6.2 Récépissé et notification au titulaire international
Règles 16, point a), et 114, paragraphe 3, du REMC
L’Office envoie un récépissé à l’opposant. Si l’opposition a été reçue avant le début du délai d’opposition, un courrier est envoyé à l’opposant lui indiquant que l’opposition est réputée avoir été reçue le premier jour du délai d’opposition et que l’opposition sera mise en attente jusqu’à cette date.
L’Office envoie également un exemplaire de la notification d’opposition au titulaire de l’enregistrement international ou, si ce dernier a nommé un mandataire devant l’OMPI et si l’Office dispose de coordonnées suffisantes, audit mandataire, peu importe l’endroit où il se trouve, à titre d’information.
3.6.3 Taxes
Article 156, paragraphe 2, du RMC Règle 54 du REMC
L’opposition n’est réputée dûment formée qu’après paiement de la taxe d’opposition. Si le paiement de la taxe pendant le délai d’opposition ne peut être établi, l’opposition est réputée ne pas avoir été formée.
Si l’opposant conteste cette conclusion, il a le droit de demander une décision formelle sur la perte de droits. La décision de l’Office de confirmer la conclusion est notifiée aux deux parties. Si l’opposant fait appel de cette décision, l’Office transmet un refus provisoire à l’OMPI, même incomplet, à la seule fin de respecter le délai de 18 mois. Si la décision devient définitive, le refus provisoire est révoqué. Dans le cas contraire, la procédure d’opposition débute normalement.
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3.6.4 Contrôle de la recevabilité
Article 92, paragraphe 2, du RMC Règles 17 et 115 du REMC
L’Office vérifie si l’opposition est recevable et si elle contient les éléments requis par l’OMPI.
Si l’opposition est jugée irrecevable, l’Office en informe le titulaire de l’enregistrement international et aucun refus provisoire fondé sur une opposition n’est envoyé à l’OMPI.
Pour de plus amples informations sur les procédures d’opposition, se reporter aux Directives, Partie C, Opposition, Section 1, Questions procédurales.
3.6.5 Langue de procédure
Article 119, paragraphe 6, du RMC Règle 16, paragraphe 1, du REMC
Les actes d’opposition (à l’instar des demandes en déchéance ou nullité) doivent être déposés dans la langue de l’enregistrement international (la première langue) ou dans la deuxième langue que le titulaire international est tenu d’indiquer lorsqu’il désigne l’Union européenne. L’opposant peut choisir l’une de ces deux langues comme langue de la procédure d’opposition. L’acte d’opposition peut également être présenté dans l’une des trois autres langues de l’Office, pour autant qu’une traduction dans la langue de la procédure soit déposée dans un délai d’un mois.
L’Office utilisera:
la langue de la procédure d’opposition choisie par l’opposant dans toutes les communications directement adressées aux parties;
la langue dans laquelle l’enregistrement international a été enregistré auprès de l’OMPI (première langue) dans toutes les communications avec l’OMPI, par exemple pour le refus provisoire.
3.6.6 Représentation du titulaire de l’enregistrement international
3.6.6.1 Récépissés d’oppositions
Règle 16, point a), du REMC
Dans le récépissé d’opposition, le cas échéant, l’Office indique au titulaire de l’enregistrement international que s’il ne nomme pas de représentant satisfaisant aux exigences visées aux articles 92, paragraphe 3, et 93, du RMC, dans un délai d’un mois suivant la réception de la communication, l’Office invitera le titulaire de l’enregistrement international à nommer un représentant en précisant le délai d’opposition une fois que l’opposition est jugée recevable.
Si le titulaire de l’enregistrement international dispose d’un représentant de l’OMPI au sein de l’Union européenne qui ne figure pas dans la base de données des représentants tenue par l’Office, l’Office indique à ce représentant que, s’il souhaite
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représenter le titulaire de l’enregistrement international devant l’Office, il doit préciser le fondement de son habilitation (c’est-à-dire s’il est un praticien du droit ou un représentant professionnel au sens de l’article 93, paragraphe 1, point a) ou b), du RMC, ou un représentant salarié, au sens de l’article 92, paragraphe 3, du RMC) (voir aussi les Directives, Partie A, Dispositions générales, Section 5, Représentation professionnelle).
3.6.6.2 Notification de commencement de la procédure d’opposition
Règle 18, paragraphe 1, du REMC
Si l’opposition a été jugée recevable et si, malgré l’invitation prévue au paragraphe 3.6.6.1 ci-dessus, le titulaire de l’enregistrement international omet de nommer un représentant européen avant la notification de la recevabilité de l’opposition, le traitement ultérieur du dossier dépend de la question de savoir si le titulaire de l’enregistrement international est tenu d’être représenté devant l’Office conformément à l’article 92, paragraphe 2, du RMC.
Si le titulaire de l’enregistrement international n’est pas tenu d’être représenté devant l’Office, la procédure continue directement avec le titulaire de l’enregistrement international, c’est-à-dire que ce dernier est notifié de la recevabilité de l’opposition et des délais prescrits pour la motivation.
Si le titulaire de l’enregistrement international est tenu d’être représenté devant l’Office, le titulaire de l’enregistrement international est informé de l’irrecevabilité de l’opposition et reçoit la demande officielle de nommer un représentant européen dans un délai de deux semaines suivant la réception de la communication (règle 114, paragraphe 4, du REMC), faute de quoi l’enregistrement international sera refusé avec droit de former un recours. Une fois la décision devenue finale, la procédure d’opposition est close et l’OMPI est informé. Pour la répartition des coûts, les règles normales s’appliquent, ce qui signifie qu’aucune décision sur les coûts ne sera prise et que la taxe d’opposition ne sera pas remboursée.
3.6.7 Refus provisoire (fondé sur des motifs relatifs)
Article 156, paragraphe 2, du RMC Règles 18 et 115, paragraphe 1, du REMC Article 5, paragraphes 1 et 2, points a) et b), du protocole de Madrid Règle 17, paragraphes 1, point a), et 2, point v), du REC
Toute opposition réputée formée et jugée recevable entraîne l’envoi d’une notification de refus provisoire à l’OMPI sur le fondement de l’opposition pendante. L’OMPI est informé de toute opposition recevable dûment formée pendant le délai d’opposition au moyen d’un refus provisoire distinct pour chaque opposition.
Le refus provisoire peut être partiel ou total. Il contient les droits antérieurs invoqués, la liste pertinente des produits et services sur lesquels repose l’opposition et, en cas de refus partiel, la liste des produits et services concernés par l’opposition.
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L’opposant doit donner la liste des produits et services sur lesquels l’opposition est fondée dans la langue de la procédure d’opposition. L’Office communique cette liste à l’OMPI dans cette langue, sans la traduire dans la langue dans laquelle la demande internationale a été enregistrée.
Cette notification est inscrite au registre international, publiée dans la Gazette et communiquée au titulaire de l’enregistrement international. Toutefois, elle ne contient pas de délai puisque le délai pour le début de la procédure est fixé directement dans la notification aux parties envoyée en parallèle par l’Office, comme dans le cas d’une marque communautaire normale.
3.6.8 Suspension de l’opposition lorsqu’il existe un refus provisoire pendant sur la spécification des produits et services et/ou sur le fondement de motifs absolus
Règle 18, paragraphe 2, règle 20, paragraphe 7 du REMC
Si l’opposition a été déposée alors que l’Office a déjà envoyé une notification de refus provisoire fondé sur la spécification des produits et services (voir paragraphe 3.3.3.4 ci-dessus) et/ou des motifs absolus (voir paragraphe 3.4 ci-dessus) en lien avec les mêmes produits et services, l’Office informe l’OMPI du refus provisoire et indique aux parties que, à compter de la date de la communication, la procédure d’opposition est suspendue jusqu’à ce qu’une décision finale soit rendue sur la spécification des produits et services et/ou les motifs absolus.
Si le refus provisoire fondé sur la spécification des produits et services et/ou des motifs absolus aboutit à un refus définitif de protection pour l’ensemble des produits et services ou pour ceux à l’encontre desquels l’opposition est formée, la procédure d’opposition est close par un non-lieu à statuer et la taxe d’opposition est remboursée.
Si le refus fondé sur la spécification des produits et services et/ou des motifs absolus n’est pas maintenu ou ne l’est que partiellement, la procédure d’opposition reprend pour les produits et services restants.
3.7 Radiation de l’enregistrement international ou renonciation à la désignation de l’Union européenne
Si, suite à un refus provisoire fondé sur la spécification des produits et services et/ou des motifs absolus ou relatifs, le titulaire demande la radiation de l’enregistrement international du registre international ou renonce à sa désignation de l’Union européenne, le dossier est classé à réception de la notification par l’OMPI. Si cela se produit avant le début de la phase contradictoire de la procédure d’opposition, la taxe d’opposition est remboursée à l’opposant puisque cela revient au retrait de la demande de marque communautaire. Le titulaire de l’enregistrement international doit soumettre de telles demandes à l’OMPI (ou par l’intermédiaire de l’office d’origine) au moyen du formulaire officiel (MM7/MM8). L’Office ne peut agir comme intermédiaire et il ne transmet pas ce type de demande à l’OMPI.
Toutefois, la radiation de l’enregistrement international à la demande de l’office d’origine (en raison d’une «attaque centrale» pendant la période de dépendance de cinq ans) est jugée équivalente au rejet de la demande de marque communautaire
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dans des procédures parallèles en vertu de la règle 18, paragraphe 2, du REMC, auquel cas la taxe d’opposition n’est pas remboursée.
3.8 Limitation de la liste des produits et services
Article 9 bis (iii) du protocole de Madrid, Règle 25 du REC
L’Office ne peut pas communiquer des limitations en tant que telles à l’OMPI.
Par conséquent, suite à un refus provisoire fondé sur la spécification des produits et services et/ou des motifs absolus ou relatifs, le titulaire de l’enregistrement international peut choisir de limiter la liste des produits et services:
par l’intermédiaire de l’OMPI, au moyen du formulaire correspondant (MM6/MM8) (auquel cas, dès lors que la limitation permet de renoncer à l’objection, l’Office informe l’OMPI du retrait du refus provisoire), ou
directement auprès de l’Office (auquel cas, l’Office confirmera simplement le refus provisoire). En d’autres termes, dans le registre international figurera un refus partiel et non la limitation en tant que telle.
Si aucun refus provisoire n’est pendant, toutes les limitations doivent être déposées uniquement par l’intermédiaire de l’OMPI. L'OMPI enregistrera la limitation et la transmettra à l'OHMI pour examen.
Les limitations sont examinées de la même façon que les limitations ou renonciations partielles concernant une demande/marque communautaire (voir les Directives, Partie B, Examen, Section 3, Classification, et les Directives, Partie E, Opérations d’enregistrement, Section 1, Modifications d’un enregistrement). Si la limitation a été soumise par l’intermédiaire de l’OMPI et si elle est jugée inacceptable par l’Office, une communication indiquant que la limitation est sans effet sur le territoire de l’Union européenne est émise, conformément à la règle 27, paragraphe 5, du REC. Une telle déclaration n’est pas soumise à examen ou recours.
Les radiations partielles à la demande de l’office d’origine (suite à une «attaque centrale» pendant la période de dépendance de cinq ans) sont enregistrées telles quelles par l’Office.
Si la limitation est soumise avant le début de la phase contradictoire de la procédure d’opposition et permet de mettre fin à la procédure d’opposition, la taxe d’opposition est remboursée à l’opposant.
3.9 Confirmation ou retrait d’un refus provisoire et remise d’une déclaration d’octroi de protection
Règle 113, paragraphe 2, point a), règle 115, paragraphe 5, point a) règle 116, paragraphe 1, et règle 18ter, paragraphe 1, 2 et 3 du REMC
Si une ou plusieurs notifications de refus provisoire ont été envoyées à l’OMPI, l’Office est tenu, une fois toutes les procédures terminées et toutes les décisions devenues définitives,
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de confirmer le ou les refus provisoires à l’OMPI;
ou d’envoyer une déclaration d’octroi de protection à l’OMPI indiquant que le ou les refus provisoires sont partiellement ou totalement retirés. La déclaration d’octroi de protection doit préciser pour quels produits et services la marque est acceptée.
Si, à l’expiration du délai d’opposition, l’enregistrement international n’a pas fait l’objet d’un refus provisoire, l’Office envoie une déclaration d’octroi de protection à l’OMPI pour l’ensemble des produits et services.
La déclaration d’octroi de protection doit inclure la date à laquelle l’enregistrement international a été republié dans la Partie M.3 du Bulletin des marques communautaires.
L’Office ne délivre pas de certificat d’enregistrement pour des enregistrements internationaux.
3.10 Deuxième republication
Articles 151, paragraphes 2 et 3, 152, paragraphe 2, et 160 du RMC Règle 116, paragraphe 2, du REMC
La deuxième republication par l’Office intervient quand l’enregistrement est (au moins partiellement) protégé dans l’Union européenne, à l’issue de toutes les procédures.
La date de la deuxième republication constitue la date à partir de laquelle commence la période d’usage de cinq ans et celle à partir de laquelle l’enregistrement peut être invoqué contre les contrefaçons.
À compter de la date de la deuxième republication, la demande internationale produit les mêmes effets qu’une marque communautaire enregistrée. Ces effets peuvent donc entrer en vigueur avant l’expiration du délai de 18 mois.
Seuls les éléments suivants sont publiés dans la Partie M.3.1 du Bulletin des marques communautaires:
111 Numéro de l’enregistrement international; 460 Date de publication à la Gazette internationale (le cas échéant); 400 Date(s), numéro(s) et page(s) de la/des publication(s) antérieure(s) au Bulletin
des marques communautaires; 450 Date de publication de l’enregistrement international ou de la désignation
postérieure au Bulletin des marques communautaires.
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3.11 Transfert de la désignation de l’Union européenne
Règle 120 du REMC
L’enregistrement international constitue un enregistrement unique aux fins administratives puisqu’il s’agit d’une seule inscription au registre international. Toutefois, en pratique, il s’agit d’un ensemble de marques (régionales) lorsque l’on examine les effets matériels et la marque en tant qu’objet de propriété. S’agissant du lien avec la marque de base, tandis que l’enregistrement international doit initialement être au nom du titulaire de la marque de base, il peut ensuite être transféré indépendamment de la marque de base.
En réalité, un «transfert d’enregistrement international» n’est qu’un transfert de la marque produisant des effets pour une, plusieurs ou toutes les parties contractantes désignées. En d’autres termes, il équivaut à un transfert du nombre correspondant de marques nationales (régionales).
Les transferts ne peuvent être présentés directement à l’Office en sa qualité d’office désigné mais doivent être soumis à l’OMPI ou par l’intermédiaire de l’office de la partie contractante du titulaire à l’aide du formulaire MM5 de l’OMPI. Une fois enregistré par l’OMPI, le changement de propriétaire de la désignation de l’Union européenne est notifié à l’Office et automatiquement intégré dans la base de données de l’Office.
En sa qualité d’office désigné, l’Office n’a pas à examiner quoi que ce soit en ce qui concerne le transfert. La règle 27, paragraphe 4, du REC, autorise un office désigné à déclarer à l’OMPI qu’un changement de titulaire est sans effet en ce qui concerne sa désignation. L’Office n’applique toutefois pas cette règle puisqu’il n’est pas compétent pour réexaminer si la modification du registre international était fondée sur une preuve du transfert. En outre, l’Office ne contrôle pas une nouvelle fois si la marque pourrait induire le public en erreur (voir l’article 17, paragraphe 4, du RMC), à moins que le transfert ne soit déposé pendant la phase d’examen des motifs absolus.
3.12 Nullité, déchéance et demandes reconventionnelles
Articles 51, 52 et 53, articles 151, paragraphe 2, et 152, paragraphe 2, articles 158 et 160 du RMC Règle 117 du REMC
La nullité des effets d’un enregistrement international désignant l’Union européenne peut être prononcée et la demande de nullité des effets d’un enregistrement international désignant l’Union européenne correspond, dans la terminologie des marques communautaires, à une demande en déchéance ou en nullité.
Aucun délai n’est prévu pour le dépôt d’une demande en nullité ou déchéance, avec les exceptions suivantes:
une demande en nullité relative à un enregistrement international désignant l’Union européenne n’est recevable qu’une fois la désignation définitivement acceptée par l’Office, à savoir une fois envoyée la déclaration d’octroi de protection.
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Une demande en déchéance fondée sur le non-usage d’un enregistrement international désignant l’Union européenne n’est recevable que si, à la date de présentation de la demande, l’acceptation définitive de l’enregistrement international a été republiée par l’Office au moins cinq ans auparavant (voir article 160 du RMC, qui dispose que la date de publication aux termes de l’article 152, paragraphe 2, tient lieu de date d’enregistrement en vue de l’établissement de la date à partir de laquelle doit commencer l’usage sérieux dans l’Union européenne de la marque qui fait l’objet d’un enregistrement international désignant l’Union européenne).
L’Office examine la demande comme si elle visait directement une marque communautaire directe (pour de plus amples informations, se reporter aux Directives, Partie D, Radiation).
Si l’enregistrement international désignant l’Union européenne est totalement ou partiellement invalidé/révoqué suite à une décision définitive ou une action reconventionnelle, l’Office en informe l’OMPI conformément à l’article 5, paragraphe 6, du protocole de Madrid et à la règle 19 du REC. L’OMPI enregistre l’annulation/la déchéance et la publie dans la Gazette internationale.
3.13 Gestion des taxes
L’équivalent de la taxe d’enregistrement a été fixé à zéro euro pour les marques communautaires directes et cette modification est appliquée aux taxes de Madrid depuis le 12 aout 2009. En conséquence, la part de la taxe individuelle pour les enregistrements internationaux désignant l’Union européenne dont la date de désignation est ultérieure à la date susvisée et qui sont refusés de façon définitive ou pour lesquels le titulaire de l’enregistrement international a renoncé à la protection à l’égard de l’Union européenne avant que la décision de refus ne devienne définitive, conformément aux articles 154 et 156 du RMC, ne sera désormais plus remboursée.
Conformément à l’article 3 (dernier paragraphe) du règlement (CE) n° 355/2009 de la Commission, du 31 mars 2009 modifiant le règlement (CE) n° 2869/95 relatif aux taxes à payer à l’Office, la taxe d’enregistrement des désignations de l’Union européenne déposées avant le 12 août 2009 continuera à être remboursée en cas de refus ou de retrait au titre de l’article 13 du RTMC, dans sa version en vigueur avant l’entrée en vigueur du règlement n° 355/2009 de la Commission.
4 Transformation (conversion), transformation (transformation), remplacement
4.1 Remarques préliminaires
Transformation (conversion) ou transformation (transformation)
Ces deux procédures s’appliquent lorsqu’un enregistrement international désignant l’Union européenne cesse de produire ses effets, mais pour des raisons différentes:
Lorsqu’un enregistrement international cesse de produire ses effets parce que la marque d’origine a fait l’objet d’une «attaque centrale» pendant la période de dépendance de cinq ans, la transformation (transformation) en une demande
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de marque communautaire directe est possible. La transformation n’est pas disponible lorsque l’enregistrement international a été radié à la demande du titulaire ou lorsque le titulaire a renoncé à tout ou partie de la désignation de l’Union européenne. La désignation de l’Union européenne doit demeurer effective au moment où la transformation est demandée, c’est-à-dire qu’elle ne doit pas avoir été refusée définitivement par l’Office, autrement, il ne restera rien à transformer et la transformation (conversion) de la désignation sera la seule possibilité.
Lorsque l’enregistrement international désignant l’Union européenne est refusé définitivement par l’Office ou cesse de produire ses effets pour des raisons indépendantes de la marque de base, seule la transformation (conversion) est disponible. La transformation (conversion) est ouverte, dans le délai prescrit, même si, entre-temps, l’enregistrement international a également été radié du registre international à la demande de l’office d’origine, c’est-à-dire au moyen d’une «attaque centrale».
4.2 Transformation (conversion)2
Articles 112, 113 et 114, et article 159 du RMC Règle 24, paragraphe 2, point a) (iii), du REC
La possibilité légale d’effectuer une transformation (conversion) a son origine dans le système de la marque communautaire, qui a été adapté afin de rendre la transformation (conversion) d’une désignation de l’Union européenne en une demande de marque nationale, par le biais d’un enregistrement international, tout aussi possible que pour une marque communautaire directe. Le système de la marque communautaire et le système de Madrid ont également été adaptés afin de permettre la transformation (conversion) en une désignation d’États membres parties au système de Madrid (la transformation (conversion) de type «opting back»). Malte n’est pas partie au système de Madrid.
Celle-ci est transférée à l’OMPI sous forme de demande de désignation postérieure du ou des États membres. Ce type de désignation postérieure est la seule qui, au lieu d’être demandée directement auprès de l’office d’origine ou de l’OMPI, doit l’être par l’intermédiaire de l’office désigné.
Pour de plus amples informations sur la conversion, se reporter aux Directives, Partie E, Opérations d’enregistrement, Section 2, Transformation (conversion).
2 En anglais, le terme «conversion» est utilisé pour décrire une disposition juridique particulière du système de la marque communautaire (article 112 et suivants), tandis que le terme utilisé à cette fin à l’article 9 quinquies du protocole de Madrid est «transformation». Dans d’autres langues, le même mot est utilisé pour décrire les deux différentes dispositions juridiques (en espagnol le mot «transformación» par exemple). Pour éviter les confusions, il sera utile d’utiliser le terme anglais «conversion» entre parenthèses lorsqu’en français, par exemple, «transformation» est utilisé au sens de l’article 112 du RMC.
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4.3 Transformation (transformation)
Articles 6, paragraphe 3, et 9 quinquies, du protocole de Madrid Article 161 du RMC Règles 84, paragraphe 2, point p), et 124 du REMC
4.3.1 Remarques préliminaires
La transformation (transformation) ne trouve son origine que dans le protocole de Madrid. Elle a été introduite afin d’atténuer les conséquences de la période de dépendance de cinq ans déjà instituée par l’Arrangement de Madrid. Lorsqu’un enregistrement international est totalement ou partiellement radié parce que la marque de base a cessé de produire ses effets et que le titulaire présente une demande pour la même marque et les mêmes produits et services que l’enregistrement radié auprès de l’office de toute partie contractante pour laquelle l’enregistrement international avait un effet, cette demande est traitée comme si elle avait été déposée à la date de l’enregistrement international ou, si les parties contractantes avaient été désignées ultérieurement, à la date de la désignation postérieure; en outre, elle bénéficie de la même priorité, le cas échéant.
Un tel dépôt n’est pas régi par le protocole et l’OMPI n’est impliqué en aucune façon. Contrairement à la transformation-conversion, la transformation-transformation de la désignation de l’Union européenne en demande nationale n’est pas possible. De même, il est impossible de transformer une désignation de l’Union européenne en désignations individuelles d’États membres. Si l’Union européenne a été désignée, l’enregistrement international produit des effets au sein de l’Union européenne et non dans un État membre individuel en tant que tel.
La désignation de l’Union européenne doit encore produire ses effets à la date de demande de la transformation (transformation), c’est-à-dire qu’elle ne doit pas avoir été refusée de façon définitive par l’Office; faute de quoi, il n’y a plus rien à transformer et la transformation (conversion) de la désignation est la seule possibilité.
4.3.2 Principes et effets
Article 27 du RMC
Suite à la radiation totale ou partielle d’un enregistrement international désignant l’Union européenne à la demande de l’office d’origine en vertu de l’article 9 quinquies du protocole (c’est-à-dire suite à une «attaque centrale» durant la période de dépendance de cinq ans), le titulaire peut déposer une demande de marque communautaire «directe» pour la même marque et les mêmes produits et services que la marque radiée.
La demande résultant de la transformation (transformation) est traitée par l’Office comme si elle avait été déposée le jour de l’enregistrement international initial ou, lorsque l’Union européenne a été désignée après l’enregistrement international, le jour de la désignation postérieure; en outre, elle bénéficie de la même priorité, le cas échéant.
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La date de l’enregistrement international ou de la désignation postérieure ne deviendra pas la date de dépôt de la demande de marque communautaire. L’article 27 du RMC, qui s’applique mutatis mutandis, énonce des conditions claires pour l’octroi d’une date de dépôt, sous réserve également du paiement de la taxe de demande sous délai d’un mois. Toutefois, la date de l’enregistrement international ou de la désignation postérieure est la date qui détermine l’«effet du droit antérieur» de la marque communautaire aux fins de recherches de priorité, d’oppositions, etc.
Contrairement aux revendications de priorité et d’ancienneté (règle 9, paragraphe 8, du REMC), il n’est pas possible de disposer d’une date «fractionnée» ou «partielle», avec une date valable uniquement pour les produits contenus dans l’enregistrement international et la date de dépôt de la demande de marque communautaire constituant la date pertinente pour les produits et services supplémentaires. L’article 9 quinquies du protocole de Madrid ou l’article 161 du RMC ne prévoient aucun effet de transformation (transformation) partielle.
Le renouvellement commence à courir à la date de dépôt de la marque communautaire ayant fait l’objet d’une transformation (transformation).
4.3.3 Procédure
Les conditions prévues à l’article 9 quinquies du protocole de Madrid pour invoquer un droit de transformation (transformation) sont:
que la demande soit déposée dans les trois mois à compter de la date à laquelle l’enregistrement international a été totalement ou partiellement radié, et
que les produits et services de la demande déposée soient couverts par la liste des produits et services de la désignation de l’Union européenne.
Le demandeur doit revendiquer ce droit dans la section correspondante prévue à cet effet, dans le formulaire de dépôt électronique ou de demande de marque communautaire. Les indications suivantes doivent être données dans cette section:
1. numéro de l’enregistrement international qui a été totalement ou partiellement radié;
2. date à laquelle l’enregistrement international a été totalement ou partiellement radié par l’OMPI;
3. date de l’enregistrement international au sens de l’article 3, paragraphe 4, du protocole de Madrid ou date de l’extension territoriale à l’Union européenne faite postérieurement à l’enregistrement international conformément à l’article 3 ter, paragraphe 2, du protocole de Madrid;
4. date de la priorité invoquée dans l’enregistrement international, le cas échéant.
Si l’Office note une irrégularité, il invite le demandeur à y remédier dans un délai de deux mois.
S’il n’est pas remédié aux irrégularités, le droit, à la date de l’enregistrement international ou de l’extension territoriale et, le cas échéant, de la priorité de l’enregistrement international, est perdu. En d’autres termes, si la transformation est définitivement refusée, la demande de marque communautaire est examinée comme une demande «normale».
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4.3.4 Examen
4.3.4.1 Demande de transformation d’enregistrements internationaux désignant l’Union européenne quand aucune donnée détaillée n’a été publiée
Lorsque la demande de transformation porte sur un enregistrement international désignant l’Union européenne et que les données détaillées le concernant n’ont pas été publiées conformément à l’article 152, paragraphe 2, du RMC (en d’autres termes, il n’a pas été accepté définitivement par l’Office), la marque communautaire résultant de la transformation est traitée comme une demande de marque communautaire normale; elle est examinée par rapport à la classification, aux formalités et aux motifs absolus, et publiée pour les besoins des oppositions. Rien dans les règlements ne permet à l’Office d’omettre la procédure d’examen.
Néanmoins, comme ce cas précis présuppose une situation dans laquelle un enregistrement international désignant l’Union européenne existe déjà, l’Office peut profiter de la classification de la liste des produits et services de l’enregistrement international radié (pour autant qu’elle respecte les règles de l’Office) ainsi que des rapports de recherche communautaire qui ont déjà été publiés concernant cet enregistrement international (puisque la date de dépôt de la demande de marque communautaire est la même que la date de l’enregistrement international d’origine, si bien que le rapport de recherche doit, par définition, donner les mêmes résultats).
La marque communautaire est publiée dans la Partie A du Bulletin des marques communautaires aux fins de l’opposition, avec un champ supplémentaire du code INID 646 mentionnant les détails de la transformation. Le reste de la procédure se déroule comme pour une marque communautaire normale, même si la procédure d’opposition a déjà été initiée contre l’enregistrement international désignant l’Union européenne sans parvenir au stade de la décision définitive. Dans ce cas, la procédure d’opposition précédente est close et une nouvelle opposition doit être formée.
4.3.4.2 Demande de transformation d’enregistrements internationaux désignant l’Union européenne quand des données détaillées ont été publiées
Quand la demande de transformation porte sur un enregistrement international désignant l’Union européenne et que les données détaillées le concernant ont déjà été publiées conformément à l’article 152, paragraphe 2, du RMC, les stades de l’examen et de l’opposition sont omis (articles 37 à 42 du RMC).
Néanmoins, la liste des produits et services doit être traduite dans toutes les langues. La marque communautaire est alors publiée dans la Partie B.2 du Bulletin des marques communautaires avec les traductions et le code INID supplémentaire 646, et le certificat d’enregistrement est immédiatement délivré.
4.3.5 Transformation (transformation) et ancienneté
Si des revendications d’ancienneté ont été acceptées par l’Office et enregistrées par l’OMPI dans le dossier de l’enregistrement international transformé désignant l’Union européenne, il n’est pas nécessaire de les revendiquer à nouveau dans la marque communautaire résultant de la transformation. Cette solution n’est pas prévue explicitement dans la règle 124, paragraphe 2, du REMC (seule la priorité est
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mentionnée au point d), mais elle s’étend par analogie à l’ancienneté dans la mesure où:
l’Office a déjà accepté les revendications et l’OMPI les a publiées; dans le cas où, entre-temps, le titulaire aurait laissé les marques antérieures
s’éteindre, il ne pourra pas déposer de nouvelles revendications devant l’Office (l’une des conditions d’une revendication d’ancienneté valable étant que le droit antérieur soit à la fois enregistré et en vigueur au moment de la revendication).
4.3.6 Taxes
Il n’y a pas de taxe de «transformation» spécifique. La demande de marque communautaire résultant de la transformation (transformation) de l’enregistrement international désignant l’Union européenne est soumise à la même taxe qu’une demande de marque communautaire «normale», à savoir la taxe de base.
La taxe de base pour la demande de marque communautaire doit être versée à l’Office dans un délai d’un mois à compter du dépôt de la marque communautaire demandant une transformation (transformation) pour que la demande soit conforme à l’article 27 du RMC, et à l’article 9 quinquies, point (iii), et pour que la transformation soit acceptée. Par exemple, si le délai de trois mois pour la transformation expire le 1er avril 2012 et si la demande de transformation en marque communautaire est déposée le 30 mars 2012, le délai de paiement de la taxe de base est le 30 avril 2012. Si le paiement intervient après cette date, les conditions relatives à la transformation ne seront pas réunies, la transformation sera refusée et la demande de marque communautaire aura pour date de dépôt la date du versement.
4.4 Remplacement
Article 157 du RMC Règle 84, paragraphe 2, du REMC Article 4 bis du protocole de Madrid Règle 21 du REC
4.4.1 Remarques préliminaires
Le remplacement trouve son origine dans l’Arrangement de Madrid et le protocole de Madrid. Une marque qui est enregistrée auprès de l’office d’une partie contractante est considérée dans certaines conditions comme remplacée par un enregistrement international de la même marque sans préjudice des droits acquis (date antérieure). Le libellé de l’article 4 bis, paragraphe 1, du protocole de Madrid dispose clairement que le remplacement est réputé avoir eu lieu automatiquement sans nécessiter aucune action de la part du titulaire et sans aucune inscription du remplacement. Néanmoins, il est possible de demander à l’Office de consigner le remplacement dans son registre (règle 21 du REC). Cette procédure a pour but de garantir que les informations appropriées concernant le remplacement sont à la disposition des tiers dans les registres nationaux ou régionaux, ainsi que dans le registre international. En d’autres termes, même si l’on n’est pas obligé de faire enregistrer le remplacement pour pouvoir l’invoquer, cela peut quand même s’avérer utile.
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Outre la qualification concernant les droits antérieurs acquis, ni l’Arrangement ni le protocole ne donnent d’autres détails sur le remplacement.
4.4.2 Principe et effets
Conformément à l’article 4 bis de l’Arrangement et du protocole, le titulaire peut demander à l’Office de prendre note dans son registre du fait qu’un enregistrement de marque communautaire est remplacé par un enregistrement international correspondant. Les droits du titulaire au sein de l’Union européenne seront réputés commencer à partir de la date de l’enregistrement de la marque communautaire antérieure. Une mention sera donc introduite dans le registre afin de préciser qu’une marque communautaire directe a été remplacée par une désignation de l’Union européenne au moyen d’un enregistrement international et a été publiée.
4.4.3 Procédure
Une demande de remplacement peut être déposée à l’Office à tout moment par le titulaire international après la notification par l’OMPI de la désignation de l’Union européenne.
Quand une demande d’enregistrement d’un remplacement a été reçue, l’Office procède à une vérification formelle, vérifie que les marques sont les mêmes, que tous les produits et services énumérés dans la marque communautaire sont énumérés dans l’enregistrement international désignant l’Union européenne, que les parties sont identiques et que la marque communautaire a été enregistrée avant la désignation de l’Union européenne. L’enregistrement international ne doit pas nécessairement avoir une liste de produits et services identiques: la liste peut être de portée plus large. Toutefois, elle ne peut pas être plus restreinte. Si la liste est plus restreinte, une notification d’irrégularité sera émise. Il peut être remédié à cette irrégularité en renonçant partiellement aux produits et services de la marque communautaire ne relevant pas du champ d'application de l'enregistrement international.
L’Office estime qu’il suffit que l’enregistrement international et la marque communautaire coexistent à la date de l’enregistrement international pour prendre note du remplacement dans le registre. En particulier, si la désignation de l’Union européenne par l’intermédiaire d’un enregistrement international n’a pas encore été acceptée définitivement, l’Office n’attend pas l’acceptation définitive pour enregistrer le remplacement. Il appartient au titulaire international de décider quand demander le remplacement.
Si toutes les conditions sont satisfaites, l’Office inscrit le remplacement au registre des marques communautaires et informe l’OMPI du remplacement d’une marque communautaire par un enregistrement international, conformément à la règle 21 du REC, en précisant:
le numéro de l’enregistrement international le numéro de la marque communautaire la date de la demande de marque communautaire la date d’enregistrement de la marque communautaire la ou les date(s) de priorité (le cas échéant) le ou les numéro(s) d’ancienneté, la ou les date(s) de dépôt et le ou les pays (le
cas échéant)
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la liste des produits et services du remplacement (le cas échéant).
Après l’enregistrement du remplacement, la marque communautaire est maintenue normalement dans le registre tant que le titulaire la renouvelle. En d’autres termes, il y a coexistence entre la marque communautaire remplacée en vigueur et l’enregistrement international désignant l’Union européenne.
Conformément à la règle 21, paragraphe 2, du règlement d’exécution commun adopté en vertu de l’Arrangement et du protocole de Madrid, l’OMPI inscrit les indications notifiées en vertu du paragraphe 1 de ladite règle au registre international, les publie et en informe le titulaire, afin de garantir que les informations appropriées concernant le remplacement soient mises à la disposition des tiers. Néanmoins, l’Office n’est pas tenu de communiquer les autres changements touchant la marque communautaire remplacée.
4.4.4 Taxes
La demande d’inscription d’un remplacement est gratuite.
4.4.5 Publication
Règles 84, paragraphe 2, et 85 du REMC
Le remplacement est inscrit au registre des marques communautaires et publié dans la Partie C.3.7 du Bulletin des marques communautaires.
4.4.6 Remplacement et ancienneté
Article 4 bis, paragraphe 1, du protocole de Madrid
Dans la mesure où le remplacement se produit «sans préjudice de tous droits acquis» en vertu de l’enregistrement antérieur, l’Office inclut les informations sur les revendications d’ancienneté que contient l’enregistrement de la marque communautaire remplacée dans la notification envoyée à l’OMPI en vertu de la règle 21 du REC.
4.4.7 Remplacement et transformation (transformation)
Lorsque l’enregistrement international qui a remplacé la marque communautaire directe cesse de produire ses effets suite à une «attaque centrale» et pour autant que les conditions énoncées à l’article 9 quinquies du protocole soient respectées, le titulaire peut demander une transformation (transformation) de l’enregistrement international au titre de l’article 9 quinquies tout en maintenant les effets du remplacement de la marque communautaire et ses effets à l’antériorité de la date, y compris la priorité ou l’ancienneté, le cas échéant.
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4.4.8 Remplacement et transformation (conversion)
L’enregistrement international et la marque communautaire doivent coexister à la date de l’enregistrement international pour que le remplacement prenne effet. Par conséquent, si l’enregistrement international qui remplace la marque communautaire directe est refusé définitivement par l’Office (suite à une opposition par exemple), le titulaire peut demander la transformation (conversion) de la désignation de l’Union européenne et doit pouvoir maintenir les effets du remplacement de la marque communautaire et ses effets relatifs à l’antériorité de la date, y compris la priorité et l’ancienneté, le cas échéant.
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DIRECTIVES RELATIVES À L’EXAMEN PRATIQUÉ À L’OFFICE DE
L’HARMONISATION DANS LE MARCHÉ INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES DESSINS OU MODÈLES COMMUNAUTAIRES
ENREGISTRÉS
EXAMEN DES DEMANDES DE DESSINS OU MODÈLES COMMUNAUTAIRES
ENREGISTRÉS
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Table des matières
1 Introduction................................................................................................ 7 1.1 Objet des directives ................................................................................... 7 1.2 Principes généraux .................................................................................... 7
1.2.1 Obligation de motivation ................................................................................. 7 1.2.2 Droit d’être entendu ........................................................................................ 8 1.2.3 Respect des délais ......................................................................................... 8 1.2.4 Portée de l’examen effectué par l’Office ........................................................ 9 1.2.5 Accessibilité .................................................................................................... 9
2 Dépôt d’une demande auprès de l’OHMI ............................................... 10 2,1 Introduction .............................................................................................. 10 2.2 Formulaire de demande ........................................................................... 10
2.2.1 Différents modes de dépôt ........................................................................... 10 2.2.2 Utilisation du formulaire officiel..................................................................... 10 2.2.3 Demandes transmises par voie postale ou par voie de signification ........... 10 2.2.4 Dépôt électronique ....................................................................................... 11 2.2.5 Transmission par télécopieur ....................................................................... 11
2.3 Contenu de la demande ........................................................................... 11 2.4 Langue de la demande............................................................................. 11 2.5 Représentation du demandeur ................................................................ 12
2.5.1 Dans quels cas la représentation est-elle obligatoire?................................. 12 2.5.2 Qui peut représenter le demandeur? ........................................................... 12
2.6 Date de réception, numéro de dossier et délivrance du récépissé....... 13 2.6.1 Demandes déposées par l’intermédiaire des offices nationaux (office de
la propriété intellectuelle d’un État membre ou du Bureau Benelux des dessins ou modèles)..................................................................................... 13
2.6.2 Demandes reçues directement à l’Office ..................................................... 13
2.7 Enregistrement ou rapport d’examen ..................................................... 14 2.7.1 Enregistrement ............................................................................................. 14 2.7.2 Rapport d’examen et communication informelle sur des irrégularités
potentielles («rapport d’examen préliminaire») ............................................ 14 2.7.2.1 Revendications de priorité et documents justificatifs .................................15 2.7.2.2 Revendications de priorité postérieures au dépôt de la demande.............15 2.7.2.3 Dépôt de demande par télécopieur ...........................................................15 2.7.2.4 Paiement des taxes...................................................................................15 2.7.2.5 Demandes multiples et demande d’ajournement partiel............................16
3 Attribution d’une date de dépôt ............................................................. 16 3.1 Requête en enregistrement ..................................................................... 17 3.2 Indications qui permettent d’identifier le demandeur ............................ 17 3.3 Représentation du dessin ou modèle apte à être reproduite ................ 17
3.3.1 Exigences générales .................................................................................... 17 3.3.2 Fond neutre .................................................................................................. 18 3.3.3 Dessins ou modèles retouchés à l’encre ou au fluide correcteur................. 19 3.3.4 Qualité .......................................................................................................... 19
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3.3.4.1 Transmission par télécopieur ....................................................................20 3.3.4.2 Dépôt électronique ....................................................................................21
3.3.5 Spécimens .................................................................................................... 22
4 Examen des conditions de fond............................................................. 23 4.1 Conformité avec la définition d’un dessin ou modèle ........................... 23
4.1.1 Plans directeurs, plans d’habitations ou autres plans architecturaux et aménagements intérieurs ou paysagers ...................................................... 23
4.1.2 Couleurs en tant que telles et combinaisons de couleurs............................ 23 4.1.3 Icônes ........................................................................................................... 24 4.1.4 Éléments purement verbaux......................................................................... 24 4.1.5 Musique et sons ........................................................................................... 24 4.1.6 Photographies............................................................................................... 24 4.1.7 Organismes vivants ...................................................................................... 24 4.1.8 Matériel pédagogique ................................................................................... 25 4.1.9 Concepts....................................................................................................... 25
4.2 Ordre public et bonnes mœurs ............................................................... 25 4.2.1 Principes communs ...................................................................................... 25 4.2.2 Ordre public .................................................................................................. 25 4.2.3 Bonnes mœurs ............................................................................................. 26
4.3 Objection................................................................................................... 26
5 Conditions supplémentaires concernant la reproduction du dessin ou modèle................................................................................................. 27 5.1 Nombre de vues ....................................................................................... 27 5.2 Cohérence des vues................................................................................. 29
5.2.1 Produits complexes ...................................................................................... 29 5.2.2 Détails........................................................................................................... 30 5.2.3 Ensembles d’articles..................................................................................... 30 5.2.4 Variations d’un dessin ou modèle................................................................. 31 5.2.5 Couleurs ....................................................................................................... 31 5.2.6 Éléments extérieurs au dessin ou modèle ................................................... 32
5.3 Utilisation d’identificateurs aux fins de l’exclusion de certaines caractéristiques de la protection............................................................. 33 5.3.1 Pointillés ....................................................................................................... 33 5.3.2 Encerclement................................................................................................ 34 5.3.3 Nuances de couleur et floutage.................................................................... 34 5.3.4 Lignes de séparation .................................................................................... 35
5.4 Texte explicatif, termes ou symboles ..................................................... 35 5.5 Modifier et compléter des vues ............................................................... 35 5.6 Conditions spécifiques ............................................................................ 36
5.6.1 Motifs superficiels répétitifs .......................................................................... 36 5.6.2 Polices typographiques ................................................................................ 36
6 Éléments supplémentaires à inclure obligatoirement ou éventuellement dans une demande ....................................................... 37 6.1 Conditions obligatoires............................................................................ 37
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6.1.1 Identification du demandeur et de son représentant .................................... 37 6.1.2 Indication des langues.................................................................................. 38 6.1.3 Signature ...................................................................................................... 38 6.1.4 Désignation des produits .............................................................................. 38
6.1.4.1 Principes généraux....................................................................................38 6.1.4.2 Classifications de Locarno et d’Eurolocarno..............................................39 6.1.4.3 Établissement de la désignation des produits ...........................................39 6.1.4.4 Modification d’office de la désignation des produits ..................................40
6.1.5 Longues listes de produits............................................................................ 42 6.1.6 Objections aux indications de produits ......................................................... 42
6.1.6.1 Absence de désignation des produits........................................................43 6.1.6.2 Constatation d’irrégularités dans la désignation des produits....................43 6.1.6.3 Absence manifeste de correspondance ....................................................43
6.2 Éléments facultatifs.................................................................................. 43 6.2.1 Priorité et priorité d’exposition ...................................................................... 44
6.2.1.1 Priorité.......................................................................................................44 6.2.1.2 Priorité d’exposition ...................................................................................50
6.2.2 Description.................................................................................................... 51 6.2.3 Indication de la classification de Locarno..................................................... 52
6.2.3.1 Principes généraux....................................................................................52 6.2.3.2 Demande multiple et règle de l’«unité de classe» .....................................52
6.2.4 Désignation du ou des créateurs.................................................................. 53 6.2.5 Demande d’ajournement .............................................................................. 53
6.2.5.1 Principes généraux....................................................................................53 6.2.5.2 Demande d’ajournement ...........................................................................54 6.2.5.3 Demande de publication............................................................................54 6.2.5.4 Respect des délais ....................................................................................55 6.2.5.5 Irrégularités ...............................................................................................55
7 Demandes multiples................................................................................ 57 7.1 Principes généraux .................................................................................. 57 7.2 Conditions de forme applicables aux demandes multiples .................. 57
7.2.1 Conditions générales.................................................................................... 57 7.2.2 Examen distinct ............................................................................................ 57 7.2.3 La règle de l’«unité de classe»..................................................................... 58
7.2.3.1 Principe .....................................................................................................58 7.2.3.2 Produits autres qu’une ornementation.......................................................58 7.2.3.3 Ornementation...........................................................................................59 7.2.3.4 Irrégularités ...............................................................................................60
8 Paiement des taxes ................................................................................. 60 8.1 Principes généraux .................................................................................. 60 8.2 Devise et montants................................................................................... 61 8.3 Moyens de paiement, détails du paiement et remboursement.............. 62
9 Retrait et rectifications............................................................................ 62 9.1 Introduction .............................................................................................. 62 9.2 Retrait de la demande .............................................................................. 62 9.3 Rectifications de la demande .................................................................. 63
9.3.1 Éléments susceptibles de rectification ......................................................... 63 9.3.2 Éléments non susceptibles de rectification .................................................. 64 9.3.3 Procédure de dépôt d’une requête en rectification....................................... 64
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9.3.4 Irrégularités................................................................................................... 64
10 Enregistrement, publication et certificats ............................................. 65 10.1 Enregistrement ......................................................................................... 65 10.2 Publication................................................................................................ 66
10.2.1 Principes généraux....................................................................................... 66 10.2.2 Format et structure de la publication ............................................................ 66
10.3 Certificat d’enregistrement ...................................................................... 68
11 Rectifications et modifications au registre et dans la publication d’enregistrements de dessins ou modèles communautaires.............. 68 11.1 Rectifications............................................................................................ 68
11.1.1 Principes généraux....................................................................................... 68 11.1.2 Requête en rectification................................................................................ 69 11.1.3 Publication des rectifications ........................................................................ 70
11.2 Modifications au registre ......................................................................... 70 11.2.1 Introduction ................................................................................................... 70 11.2.2 Renonciation au dessin ou modèle communautaire enregistré ................... 70
11.2.2.1 Principes généraux....................................................................................70 11.2.2.2 Conditions de forme pour le dépôt d’une déclaration de renonciation.......72
11.2.3 Modification des nom et adresse du demandeur/titulaire et/ou du représentant.................................................................................................. 72
11.2.4 Transferts...................................................................................................... 73 11.2.4.1 Introduction................................................................................................73 11.2.4.2 Droits au dessin ou modèle communautaire enregistré fondés sur une
utilisation antérieure ..................................................................................73 11.2.4.3 Taxes.........................................................................................................73
11.2.5 Licences....................................................................................................... 74 11.2.5.1 Principes généraux....................................................................................74 11.2.5.2 Dessins ou modèles communautaires enregistrés ....................................74 11.2.5.3 Demandes multiples de dessins ou modèles communautaires
enregistrés.................................................................................................74 11.2.5.4 Taxes.........................................................................................................74
12 Enregistrements internationaux............................................................. 75 12.1 Aperçu global du système de La Haye ................................................... 75
12.1.1 L’arrangement de La Haye et l’acte de Genève........................................... 75 12.1.2 Procédure de dépôt de demandes internationales ...................................... 76
12.1.2.1 Particularités..............................................................................................76 12.1.2.2 Ajournement de la publication ...................................................................76 12.1.2.3 Taxes.........................................................................................................77
12.1.3 Examen effectué par le Bureau international ............................................... 77
12.2 Le rôle de l’Office en tant qu’office désigné........................................... 77 12.2.1 Réception de l’enregistrement international désignant l’Union européenne 77 12.2.2 Motifs de rejet ............................................................................................... 78
12.2.2.1 Conformité avec la définition d’un dessin ou modèle, ordre public et bonnes mœurs ..........................................................................................78
12.2.2.2 Délais ........................................................................................................78 12.2.2.3 Langues.....................................................................................................79 12.2.2.4 Représentation professionnelle .................................................................79 12.2.2.5 Renonciation et limitation ..........................................................................79 12.2.2.6 Octroi de la protection ...............................................................................79 12.2.2.7 Refus.........................................................................................................80
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12.3 Effets des enregistrements internationaux ............................................ 80
13 L’élargissement et le dessin ou modèle communautaire enregistré .. 81 13.1 L’extension automatique des effets des dessins ou modèles
communautaires aux territoires des nouveaux États membres ........... 81 13.2 Autres conséquences pratiques ............................................................. 82
13.2.1 Dépôt auprès des offices nationaux ............................................................. 82 13.2.2 Représentation professionnelle .................................................................... 82 13.2.3 Première et deuxième langue....................................................................... 82 13.2.4 Traduction..................................................................................................... 82
13.3 Examen des motifs de rejet ..................................................................... 82 13.4 Immunité contre des actions en nullité fondées sur des motifs de
nullité qui deviennent applicables en raison uniquement de l’adhésion d’un nouvel État membre ...................................................... 83 13.4.1 Principe général............................................................................................ 83
13.4.1.1 Motifs de nullité applicables indépendamment de l’élargissement de l’UE............................................................................................................83
13.4.1.2 Motifs de nullité résultant de l’élargissement de l’Union européenne ........84 13.4.2 Effets d’une revendication de priorité ........................................................... 85
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1 Introduction
1.1 Objet des directives
Les présentes directives ont pour objet d’’expliquer les modalités de mise en œuvre pratique, par le service des dessins ou modèles de l’Office, du règlement sur les dessins ou modèles communautaires1 (RDC), du règlement d’exécution2 du règlement sur les dessins ou modèles communautaires (REDC) et du règlement relatif aux taxes3 (RTDC), depuis la réception d’’une demande d’’enregistrement de dessin ou modèle communautaire jusqu’à son enregistrement et sa publication. L’’Office n’est pas compétent en matière’ de dessins ou modèles communautaires non enregistrés.
Ces directives ont pour objet de garantir la cohérence des décisions prises par le service des dessins ou modèles ainsi qu’une pratique uniforme dans le traitement des dossiers. Elles ne constituent qu’un ensemble de règles consolidées définissant la ligne de conduite que l’Office se propose d’adopter, ce qui signifie que, dans la mesure où ces règles sont conformes aux dispositions légales de toute autorité supérieure, elles constituent une restriction que l’Office s’est volontairement imposée, en ce sens qu’il doit respecter les règles qu’il a lui-même établies. Toutefois, elles ne peuvent déroger aux dispositions du RDC, du REDC ou du RTDC, qui sont les seules applicables pour l’évaluation de la capacité d’un demandeur à déposer une demande d’enregistrement d’un dessin ou modèle communautaire.
Ces directives sont structurées de façon à suivre pas à pas le déroulement de la procédure d’examen, chaque section et sous-section correspondant à une étape de la procédure d’enregistrement, de la réception de la demande à son enregistrement et à sa publication. Il convient de garder à l’esprit les principes généraux (voir point 1.2 ci- dessous) tout au long de la procédure d’examen.
1.2 Principes généraux
1.2.1 Obligation de motivation
Les décisions de l’Office sont motivées (article 62 du RDC). La motivation doit être logique et ne pas donner lieu à des incohérences internes.
1 Règlement (CE) n° 6/2002 du Conseil du 12 décembre 2001 sur les dessins ou modèles communautaires, modifié par le règlement (CE) n° 1891/2006 du Conseil du 18 décembre 2006 modifiant les règlements (CE) n° 6/2002 et (CE) n° 40/94 en vue de donner effet à l’adhésion de la Communauté européenne à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels 2 Règlement (CE) n° 2245/2002 du Conseil du 21 octobre 2002 portant modalités d'application du règlement (CE) n° 6/2002 du Conseil sur les dessins ou modèles communautaires, modifié par le règlement (CE) n° 876/2007 de la Commission du 24 juillet 2007 modifiant le règlement (CE) n° 2245/2002 portant modalités d'application du règlement (CE) n° 6/2002 du Conseil sur les dessins ou modèles communautaires à la suite de l'adhésion de la Communauté européenne à l'acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels 3 Règlement (CE) n° 2246/2002 de la Commission du 16 décembre 2002 concernant les taxes à payer à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) au titre de l'enregistrement de dessins ou modèles communautaires, modifié par le règlement (CE) n° 877/2007 de la Commission du 24 juillet 2007 modifiant le règlement (CE) n° 2246/2002 concernant les taxes à payer à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) après l’adhésion de la Communauté européenne à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels
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L’Office ne saurait toutefois être tenu de motiver de manière expresse ses appréciations quant à la valeur de chaque argument et de chaque élément de preuve qui lui a été soumis, notamment lorsqu’il considère que ceux-ci sont sans intérêt ou dépourvus de pertinence pour la solution du litige (voir, par analogie, l’arrêt du 15 juin 2000, C-237/98 P, Dorsch Consult Ingenieurgesellschaft mbH, point 51). Il suffit qu’il expose les faits et les considérations juridiques revêtant une importance essentielle dans l’économie de la décision (arrêt du 12 novembre 2008, T-7/04, LIMONCELLO, point 81).
La question de savoir si la motivation d’une décision satisfait à ces exigences doit être appréciée au regard non seulement de son libellé, mais aussi de son contexte, ainsi que de l’ensemble des règles juridiques régissant la matière concernée (arrêt du 7 février 2007, T-317/05, Guitare, point 57).
1.2.2 Droit d’être entendu
Les décisions de l’Office ne peuvent être fondées que sur des motifs ou des preuves au sujet desquels le demandeur a pu prendre position (article 62 du RDC, deuxième phrase).
Le droit d’être entendu couvre tous les éléments de fait ou de droit sur lesquels se base l’adoption de la décision, mais ne s’applique pas à la position finale qu’entend adopter l’Office.
L’obligation de motivation a pour double objectif de permettre, d’une part, aux intéressés de connaître les justifications de la mesure prise afin de défendre leurs droits et, d’autre part, au juge de l’Union d’exercer son contrôle sur la légalité de la décision (…) l’obligation de motivation constitue une formalité substantielle qui doit être distinguée de la question du bien-fondé de la motivation, celui-ci relevant de la légalité au fond de l’acte litigieux (arrêt du 27 juin 2013, T-608/11, Instrument d’écriture II, points 67-68 et la jurisprudence citée).
1.2.3 Respect des délais
Le demandeur doit répondre aux communications de l’Office dans le délai imparti par ces communications.
Toute communication ou tout document qui n’est pas produit dans les délais fixés par le RDC ou le REDC ou l’Office est hors délai. La même conséquence s’applique aux documents annexés à une communication du demandeur lorsque seule cette communication a été reçue dans les délais (le plus souvent par télécopie), peu important que la communication fasse mention des pièces jointes qui accompagnent sa confirmation (pour le régime spécifique des demandes déposées par télécopie, voir le point 2.7.2.3. ci-dessous).
L’Office peut ne pas tenir compte des faits que le demandeur n’a pas invoqués ou des preuves qu’il n’a pas produites en temps utile (article 63, paragraphe 2, du RDC).
Pour le calcul des délais, voir Article 56 du REDC.
Le délai peut être prorogé par l’Office sur requête présentée, avant l’expiration dudit délai, par le demandeur (article 57, paragraphe 1, du REDC).
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En règle générale, la première demande de prorogation est acceptée. Les demandes ultérieures ne sont pas automatiquement acceptées. Toute autre demande de prorogation doit être justifiée. Elle doit indiquer les raisons pour lesquelles le demandeur ne peut respecter le délai fixé. Les obstacles rencontrés par les représentants des parties ne justifient pas l’octroi d’une prorogation (voir, par analogie, l’ordonnance du 5 mars 2009, C-90/08 P, CORPO LIVRE, points 20 à 23).
La prorogation ne peut aboutir à un délai supérieur à six mois (article 57, paragraphe 1, du REDC). Le demandeur est informé de toute prorogation.
Un demandeur qui n’observe pas le délai fixé risque de ne pas bénéficier de l’examen de ses observations et de perdre ainsi ses droits. Dans un tel cas, il peut déposer une requête en restitutio in integrum (article 67 du RDC. Voir aussi les Directives relatives à l’examen des marques communautaires, Partie A, Section 8, Restitutio in integrum).
1.2.4 Portée de l’examen effectué par l’Office
Lors de l’examen d’une demande de dessin ou modèle communautaire, l’Office procède à l’examen d’office des faits (article 63, paragraphe 1, du RDC).
La procédure d’examen est limitée au minimum requis, c’est-à-dire, essentiellement, à l’examen des conditions de forme. Cependant, les motifs de rejet des demandes d’enregistrement prévus à l’article 47 du RDC sont examinés d’office par l’Office, qui vérifie:
a) si l’objet de la demande répond ou non à la définition d’un dessin ou modèle visée à l’article 3, point a), du RDC; ou
b) si le dessin ou modèle est contraire ou non à l’ordre public ou aux bonnes mœurs.
Lorsqu’un de ces motifs s’applique, la procédure expliquée ci-dessous au point 4 s’applique.
Aucune autre exigence en matière de protection n’est examinée par l’Office. Un dessin ou modèle communautaire qui a été enregistré en violation des exigences en matière de protection établies à l’article 25, paragraphe 1, points b) à g), du RDC est passible de nullité si une partie intéressée forme un recours en annulation (voir les Directives relatives à la procédure en nullité d’un dessin ou modèle communautaire enregistré).
1.2.5 Accessibilité
L’un des objectifs fondamentaux du RDC est que l’enregistrement de dessins ou modèles communautaires doit s’accompagner d’un minimum de frais et de difficultés pour le demandeur, afin de le rendre facilement accessible à tout demandeur, y compris les petites et moyennes entreprises et les créateurs indépendants.
À cette fin, l’examinateur est encouragé à contacter le demandeur ou, le cas échéant (voir le point 2.5 ci-dessous), son représentant par téléphone, afin de clarifier les points posant problème lors de l’examen d’une demande de dessin ou modèle communautaire, avant ou après l’envoi d’une notification d’irrégularité officielle.
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2 Dépôt d’une demande auprès de l’OHMI
2,1 Introduction
Une demande d’enregistrement d’un dessin ou modèle communautaire peut être introduite de deux façons, i) par un dépôt direct, auprès de l’Office, auprès du service central de la propriété industrielle d’un État membre, ou, dans les pays du Benelux, auprès de l’Office Benelux de la Propriété intellectuelle (OBPI) (articles 35 et suivants du RDC), ou ii) par le biais d’un enregistrement international déposé auprès du Bureau international de l’Organisation mondiale de la propriété intellectuelle et désignant l’Union européenne (articles 106 bis et suivants du RDC).
La présente section traite des dépôts directs. L’examen des conditions de forme relatives aux enregistrements internationaux désignant l’Union européenne est expliqué au point 12
2.2 Formulaire de demande
2.2.1 Différents modes de dépôt
Une demande de dessin ou modèle communautaire enregistré peut être directement déposée auprès de l’Office par télécopieur, par voie postale, par voie de signification ou par dépôt électronique. Elle peut également être déposée auprès du service central de la propriété industrielle d’un État membre, ou, dans les pays du Benelux, auprès de l’Office Benelux de la Propriété intellectuelle (OBPI) (article 35 du RDC).
2.2.2 Utilisation du formulaire officiel
L’Office fournit un formulaire (article 68, paragraphe 1, point a), du REDC) qui peut être téléchargé sur son site internet4. L’utilisation de ce formulaire n’est pas obligatoire, mais est fortement recommandée (article 68, paragraphe 6, du REDC), afin de faciliter le traitement de la demande et d’éviter les erreurs.
Les demandeurs peuvent utiliser des formulaires de structure ou de format similaire, par exemple générés par ordinateur sur la base des informations du formulaire officiel.
2.2.3 Demandes transmises par voie postale ou par voie de signification
Les demandes peuvent être transmises à l’Office par voie postale ou par services privés de messagerie à l’adresse suivante:
Office de l’harmonisation dans le marché intérieur Avenida de Europa, 4
E-03008 Alicante ESPAGNE
Elles peuvent également être remises en mains propres à la réception de l’Office du lundi au vendredi, à l’exception des jours fériés, de 8h30 à 13h30 et de 15h00 à 17h00.
4 https://oami.europa.eu/ohimportal/fr/forms-and-filings
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Elles doivent être signées par le demandeur ou son représentant. Le nom et la qualité du signataire doivent être indiqués (voir point 6.1.3. ci-dessous).
2.2.4 Dépôt électronique
Le dépôt électronique est recommandé dans la mesure où le système fournit des instructions au demandeur, ce qui réduit le nombre d’erreurs potentielles et accélère la procédure d’examen.
Lorsqu’une communication est transmise à l’Office par voie électronique, l’indication du nom de l’expéditeur est réputée équivalente à sa signature (voir point 6.1.3. ci- dessous).
2.2.5 Transmission par télécopieur
Les demandes peuvent être transmises par télécopieur au numéro suivant: +34 96 513 1344.
Toutefois, le dépôt d’une demande par télécopieur n’est pas recommandé car la qualité de la représentation du dessin ou modèle pourrait être altérée lors de sa transmission ou de sa réception par l’Office.
De plus, les demandeurs doivent être conscients du fait que le traitement de leur demande subira un retard pouvant aller jusqu’à un mois (voir le point 2.7.2.3).
2.3 Contenu de la demande
La demande doit satisfaire à toutes les exigences légales définies aux articles 1er (Contenu de la demande), 3 (Classification et désignation des produits), 4 (Représentation du dessin ou modèle) et 6 (Taxes à payer pour le dépôt) du REDC.
D’autres exigences s’appliquent lorsque le demandeur sélectionne l’une des options suivantes: dépôt d’une demande multiple (article 2 du REDC), dépôt de spécimens (article 5 du REDC), revendication d’une priorité ou d’une priorité d’exposition (articles 8 et 9 du REDC) ou choix ou obligation du demandeur d’être représenté (article 77 du RDC).
2.4 Langue de la demande
La demande doit être déposée dans une des langues officielles de l’Union européenne (langue de dépôt) (article 98, paragraphe 1, du RDC; article 1er, paragraphe 1, point h), du REDC)5.
5 L'Union européenne compte 24 langues officielles et de travail, dont l'irlandais. L’irlandais est devenu une langue de l'Union européenne à part entière, le 1er janvier 2007. Il existe toutefois une dérogation temporaire pour une période renouvelable expirant le 31 décembre 2016, au cours de laquelle «les institutions de l’Union européenne ne sont pas liées par l’obligation de rédiger tous les actes en irlandais et de les publier dans cette langue au Journal officiel de l’Union européenne» (voir le règlement (CE) n° 920/2005 du Conseil du 13 juin 2005 (JO L 156 du 18.6.2005, p. 3) et le règlement (UE) n° 1257/2010
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Le demandeur doit indiquer une deuxième langue qui soit une langue de l’Office, à savoir l’espagnol (ES), l’allemand (DE), l’anglais (EN), le français (FR) ou l’italien (IT). La deuxième langue doit être différente de la langue de dépôt.
Toutes les communications écrites doivent être rédigées dans la langue de dépôt, à moins que la première langue choisie ne soit pas l’une des cinq langues de travail de l’Office et que le demandeur consente à ce que les communications lui soient adressées dans la deuxième langue de la demande. Le consentement à l’usage de la deuxième langue doit être donné pour chaque demande individuelle de dessin ou modèle communautaire. Il ne peut être donné pour l’ensemble des demandes existantes ou futures.
Ce régime linguistique s’applique tout au long de la procédure de dépôt et d’examen de la demande jusqu’à l’enregistrement du dessin ou modèle.
2.5 Représentation du demandeur
2.5.1 Dans quels cas la représentation est-elle obligatoire?
Les demandeurs qui n’ont ni domicile ni siège ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne doivent être représentés dans toute procédure auprès de l’Office, sauf pour le dépôt d’une demande d’enregistrement de dessin ou modèle communautaire (article 77, paragraphe 2, du RDC ; article 10, paragraphe 3, point a), du REDC).
Si cette exigence n’est pas respectée, l’Office les invite à désigner un représentant dans un délai de deux mois. S’ils ne répondent pas à cette requête, leur demande est déclarée irrecevable (article 77, paragraphe 2, du RDC ; article 10, paragraphe 3, point a), du REDC).
Pour déterminer si le demandeur a un établissement industriel ou commercial effectif et sérieux dans l’Union européenne, l’Office suit les directives de la Cour de justice dans l’arrêt rendu le 22 novembre 1978, C-33/78, Somafer SA, point 12: «la notion de succursale, d’agence ou de tout autre établissement implique un centre d’opérations qui se manifeste d’une façon durable vers l’extérieur comme le prolongement d’une maison mère, pourvu d’une direction et matériellement équipé de façon à pouvoir négocier des affaires avec des tiers». Le demandeur peut notamment apporter la preuve de l’existence d’un établissement industriel ou commercial effectif et sérieux dans l’Union européenne en produisant les statuts de la société, des rapports annuels, des déclarations écrites ou d’autres documents commerciaux.
2.5.2 Qui peut représenter le demandeur?
La représentation des demandeurs auprès de l’Office ne peut être assurée que par un avocat ou un mandataire agréé qui satisfait aux exigences de l’article 78, paragraphe 1, du RDC.
du Conseil (JO L 343 du 29.12.2010, p. 5). Jusqu’à cette date, il n’est pas possible de déposer une demande de dessin ou modèle communautaire enregistré en irlandais. Le croate est devenu une langue officielle le 1er juillet 2013 (voir le point 13).
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Les personnes physiques ou morales qui ont leur domicile, ou leur siège ou un établissement industriel ou commercial effectif et sérieux dans l’Union européenne peuvent agir devant l’Office par l’entremise d’un employé. L’employé d’une telle personne morale peut agir également pour d’autres personnes morales qui sont économiquement liées à cette personne, même si ces autres personnes morales n’ont ni domicile ni siège ni établissement industriel ou commercial effectif et sérieux dans l’Union européenne (article 77, paragraphe 3, du RDC). L’Office peut demander des preuves à cet égard.
Les employés agissant pour le compte de personnes physiques ou morales conformément à l’article 77, paragraphe 3, du RDC déposent auprès de l’Office un pouvoir signé à verser au dossier (article 62, paragraphe 2, du REDC).
2.6 Date de réception, numéro de dossier et délivrance du récépissé
2.6.1 Demandes déposées par l’intermédiaire des offices nationaux (office de la propriété intellectuelle d’un État membre ou du Bureau Benelux des dessins ou modèles)
Toute demande de dessin ou modèle communautaire déposée auprès du service central de la propriété industrielle d’un État membre ou auprès de l’Office Benelux de la Propriété intellectuelle (OBPI) est réputée avoir été déposée auprès de l’Office le même jour, à condition qu’elle parvienne à l’Office dans les deux mois suivant la date à laquelle elle a été déposée auprès de ce service ou de ce Bureau (article 38, paragraphe 1, du RDC).
Si la demande parvient à l’Office après ce délai de deux mois, la date de dépôt de la demande est celle à laquelle l’Office la reçoit (article 38, paragraphe 2, du RDC).
Si la demande parvient à l’Office peu après l’expiration de ce délai, l’examinateur vérifie si celui-ci peut être prorogé en vertu de l’une des conditions prévues à l’article 58, paragraphe 3, du REDC.
2.6.2 Demandes reçues directement à l’Office
La date de réception est la date à laquelle la demande parvient à l’Office. Cette date ne peut coïncider avec la «date de dépôt» lorsque les exigences d’attribution d’une telle date ne sont pas remplies (voir le point 3).
L’Office reçoit les demandes transmises par voie postale ou par services privés de messagerie du lundi au vendredi, à l’exception des jours fériés. Une décision annuelle du président de l’Office mentionne les jours de fermeture de l’Office pour le dépôt de documents et ceux où le courrier ordinaire n’est pas distribué.
Les demandes transmises par télécopieur ou par dépôt électronique sont reçues à la date de leur transmission effective.
Lorsque la demande est transmise par voie postale ou par télécopieur, le demandeur ne reçoit confirmation d’une date de réception ou d’un numéro de dossier qu’à la réception de la première communication d’un examinateur (voir ci-dessous).
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En cas de dépôt électronique, le système délivre automatiquement et immédiatement un récépissé, qui apparaît sur l’écran de l’ordinateur à partir duquel la demande a été envoyée. En principe, le demandeur devrait sauvegarder ou imprimer ce récépissé. L’Office n’en transmettra pas d’autre. Ce récépissé contient déjà la date de dépôt provisoire et le numéro de dossier.
2.7 Enregistrement ou rapport d’examen
2.7.1 Enregistrement
Si la demande de dessin ou modèle communautaire satisfait à toutes les exigences pour l’enregistrement, elle sera normalement enregistrée dans les dix jours ouvrables.
L’enregistrement d’une demande satisfaisant à toutes les exigences requises peut cependant être différé lorsque l’indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué n’a pas été établie en référence à la liste des produits incluse dans la base de données Eurolocarno (https://oami.europa.eu/eurolocarno/). Dans pareil cas, l’indication des produits peut être transmise pour traduction dans les langues officielles de l’Union (voir le point 6.1.4.4).
Une demande satisfaisant à toutes les exigences en vue de son enregistrement peut être enregistrée dans les deux jours ouvrables si les conditions suivantes sont remplies:
la demande est déposée par voie électronique (dépôt électronique); l’indication du ou des produits et son ou leur classement sont établis à l’aide du
système Eurolocarno (voir le point 6.1.4.4); les documents de revendication d’une priorité sont inclus dans la demande
déposée par voie électronique; le titulaire du dessin ou modèle et son représentant, le cas échéant, sont
enregistrés dans la base de données de l’OHMI et le numéro d’identification interne attribué par l’Office est mentionné;
les taxes sont débitées d’un compte courant ouvert auprès de l’OHMI ou payées par carte de crédit;
la demande ne comporte aucune irrégularité.
2.7.2 Rapport d’examen et communication informelle sur des irrégularités potentielles («rapport d’examen préliminaire»)
Lorsqu’il détecte une irrégularité dans la demande, l’examinateur établit un rapport d’examen décrivant succinctement les irrégularités identifiées et accordant au demandeur, ou à son représentant, un délai pour y remédier.
Avant d’envoyer un rapport d’examen, l’examinateur peut transmettre une communication informelle - le «rapport d’examen préliminaire» - attirant l’attention sur des irrégularités potentielles dans le but d’accélérer la procédure d’examen. Cette communication informe le demandeur que la procédure d’examen a été suspendue en raison de l’une des circonstances suivantes.
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2.7.2.1 Revendications de priorité et documents justificatifs
Si la priorité d’une ou de plusieurs demandes antérieures est revendiquée, sans qu’aucune copie certifiée de celles-ci ne soit produite, le demandeur dispose encore d’un délai de trois mois à compter de la date de dépôt pour produire une copie de celles-ci (article 42 du RDC; article 8, paragraphe 1, du REDC, voir le point 6.2.1.1 ci- dessous).
Dans ce cas, l’examinateur informe le demandeur de la suspension de l’examen de la demande jusqu’à ce que la copie certifiée manquante de la ou des demandes antérieures soit produite. L’examen reprendra trois mois après la date de dépôt, à moins qu’une copie de la ou des demandes antérieures, ou une déclaration de retrait de la revendication de priorité, ne soit reçue avant l’expiration de ce délai.
2.7.2.2 Revendications de priorité postérieures au dépôt de la demande
Si, dans sa demande, le demandeur déclare son intention de revendiquer la priorité d’une ou de plusieurs demandes antérieures, mais ne fournit aucun détail concernant ces demandes, il peut encore produire, dans un délai d’un mois à compter de la date de dépôt de la demande, la déclaration de priorité, indiquant la date de la demande antérieure et l’État dans lequel ou pour lequel elle a été déposée (article 42 du RDC; article 8, paragraphe 2, du REDC, voir point 6.2.1.1 ci-dessous).
Dans un tel cas, l’examinateur informe le demandeur de la suspension de l’examen de la demande jusqu’à ce que les informations manquantes soient reçues. L’examen reprendra un mois après la date de dépôt, à moins qu’une déclaration de priorité, ou une déclaration de retrait de la revendication de priorité, ne soit reçue avant l’expiration de ce délai.
2.7.2.3 Dépôt de demande par télécopieur
Lorsqu’une demande est déposée par télécopieur, l’examinateur informe le demandeur que l’examen débutera un mois après la date de réception de la télécopie, à moins qu’une copie de confirmation de la transmission ne soit reçue plus tôt par voie postale, par services privés de messagerie ou par remise en mains propres.
Cette disposition a pour but d’éviter que l’examen soit réalisé sur la base d’une représentation transmise par télécopieur d’un dessin ou modèle qui ne dévoile pas l’intégralité de ses caractéristiques (telles que les couleurs) ou dont la qualité n’est pas optimale.
2.7.2.4 Paiement des taxes
Toutes les taxes (les taxes d’enregistrement et de publication ainsi que les taxes supplémentaires en cas de demandes multiples) relatives à une demande doivent être payées au moment du dépôt de la demande à l’Office (article 6 du REDC; voir rubrique 8 ci-dessous).
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Absence de paiement ou paiement non identifié
Lorsque la demande n’a pas encore été liée à un paiement des taxes correspondantes, l’examinateur informe le demandeur que l’examen débutera dès que le paiement aura été identifié et lié à la demande spécifique.
Si le demandeur ne répond pas à la communication de l’Office et le paiement reste impossible à identifier, une notification d’irrégularité lui est transmise.
Solde insuffisant
Lorsque l’intégralité du montant des taxes relatives à la demande ne peut être débitée du compte courant en raison d’un solde insuffisant, l’examinateur informe le demandeur que l’examen débutera dès que le compte courant aura été crédité du montant manquant.
Si le demandeur ne répond pas à la communication de l’Office et le paiement reste incomplet, une notification d’irrégularité lui est transmise.
La disposition précitée s’applique également aux paiements par carte de crédit, lorsque la transaction échoue pour des raisons non imputables à l’Office. Dans ce cas, le demandeur doit utiliser un autre moyen de paiement.
Pour plus d’informations sur le paiement des taxes, voir le point 8 ci-dessous.
2.7.2.5 Demandes multiples et demande d’ajournement partiel
Lorsqu’une demande multiple contient une demande d’ajournement pour une partie des dessins ou modèles (voir le point 6.2.5 ci-dessous), l’examinateur transmet au demandeur un résumé de la demande contenant une représentation de la première vue de chaque dessin ou modèle à publier sans délai. Le demandeur est invité à confirmer l’exactitude du résumé dans un délai d’un mois. En l’absence de réponse ou d’instruction contraire de la part du demandeur, l’examen est réalisé sur la base des informations contenues dans le dossier.
3 Attribution d’une date de dépôt
La date à laquelle un document est «déposé» est la date de réception par l’Office, et non la date à laquelle le document a été envoyé (article 38, paragraphe 1, du RDC; article 7 du REDC).
Si la demande a été déposée au service central de la propriété industrielle d’un État membre ou de l’Office Benelux de la Propriété intellectuelle (OBPI), la date de dépôt à cet office est réputée être la date de réception de la demande par l’Office, à moins que la demande ne parvienne à l’Office plus de deux mois après cette date. Dans un tel cas, la date de dépôt sera la date de réception de la demande par l’Office (article 38 du RDC).
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En vertu de l’article 36, paragraphe 1, du RDC, pour qu’une date de dépôt soit attribuée, la demande doit contenir au moins:
a) une requête en enregistrement d’un dessin ou modèle communautaire; b) les indications qui permettent d’identifier le demandeur; c) une représentation du dessin ou modèle apte à être reproduite conformément à
l’article 4, paragraphe 1, points d) et e), du REDC ou, le cas échéant, un spécimen (article 10 du REDC).
Le paiement des taxes n’est pas une condition indispensable à l’attribution d’une date de dépôt. Il constitue toutefois une obligation aux fins de l’enregistrement de la demande (voir le point 8 ci-dessous).
3.1 Requête en enregistrement
Une requête en enregistrement est déposée lorsque le demandeur a complété (au moins partiellement) le formulaire de demande fourni par l’Office ou son propre formulaire, ou a utilisé le système de dépôt électronique (voir le point 2.2 ci-dessus).
Lorsqu’il apparaît que le document reçu du demandeur n’est pas une demande d’enregistrement d’un dessin ou modèle communautaire, mais une demande d’enregistrement d’une marque communautaire, l’examinateur transmet ce document au département compétent de l’Office et en informe immédiatement le demandeur.
3.2 Indications qui permettent d’identifier le demandeur
Les indications qui permettent d’identifier le demandeur, requises pour l’attribution d’une date de dépôt, ne doivent pas satisfaire à toutes les exigences établies à l’article 1er, paragraphe 1, point b), du REDC (voir le point 6.1.1 ci-dessous). Il suffit d’indiquer le nom et le ou les prénoms dans le cas de personnes physiques ou la dénomination officielle dans le cas de personnes morales, ainsi que faire élection de domicile aux fins de la notification ou mentionner tout autre moyen de communication permettant de contacter le demandeur.
3.3 Représentation du dessin ou modèle apte à être reproduite
3.3.1 Exigences générales
La représentation du dessin ou modèle consiste en une reproduction graphique et/ou photographique du dessin ou modèle en noir et blanc ou en couleur (article 4, paragraphe 1, du REDC).
Indépendamment de la forme utilisée pour le dépôt de la demande (formulaire papier, dépôt électronique ou télécopie), le dessin ou modèle doit être reproduit sur un fond neutre et ne doit pas être retouché à l’encre ou au fluide correcteur.
Il doit être d’une qualité suffisante pour distinguer clairement tous les détails de l’objet pour lequel la protection est demandée et permettre sa réduction ou son agrandissement au format maximal de 8 cm × 16 cm par vue pour son inscription au registre des dessins ou modèles communautaires et pour sa publication directe dans le
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Bulletin des dessins ou modèles communautaires (article 4, paragraphe 1, point e), du REDC).
Cette exigence vise à permettre aux tierces parties de déterminer avec précision tous les détails du dessin ou modèle communautaire pour lequel la protection est demandée.
Les dessins, photographies (à l’exception des diapositives), représentations générées par ordinateur ou toute autre représentation graphique sont autorisés à condition d’être aptes à être reproduits, notamment sur un certificat d’enregistrement sur support papier. C’est pour cette raison que les dessins ou modèles tridimensionnels animés générant des simulations de mouvement ne sont pas acceptés. Les CD-ROM et autres supports de données ne sont pas acceptés.
3.3.2 Fond neutre
Le fond dans une vue est réputé neutre tant que le dessin ou modèle qui apparaît dans cette vue se distingue clairement de son environnement sans interférence de tout autre objet, accessoire ou décoration, dont l’inclusion dans la représentation pourrait semer le doute sur la protection demandée (décision R 2230/2011-3 du 25 avril 2012 - «Webcams», paragraphes 11 et 12).
En d’autres termes, aux fins de cette exigence, «fond neutre» ne signifie pas couleur «neutre» ou fond «vide» (voir aussi le point 5.2.6 ci-dessous). Il est au contraire crucial que le dessin ou modèle se distingue si clairement du fond qu’il reste identifiable (décision R 284/2011-3 du 25 janvier 2012 – «Tool chest», paragraphe 13).
Les vues qui, parmi les sept autorisées pour représenter un dessin ou modèle (article 4, paragraphe 2, du REDC), ne font pas apparaître la représentation du dessin ou modèle sur un fond neutre sont refusées à l’enregistrement.
L’examinateur émettra une notification d’irrégularité si ce cas se présente. Il offrira au demandeur la possibilité de remédier aux irrégularités identifiées dans un délai de deux mois:
en retirant ces vues de la demande (lesquelles ne seront pas comprises dans le dessin ou modèle communautaire); ou
en soumettant de nouvelles vues sur un fond neutre; ou
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en modifiant les vues refusées de manière à ce que le dessin ou modèle se distingue du fond. La dernière option fera usage d’identificateurs tels que l’encerclement ou les nuances de couleur permettant de mieux distinguer les caractéristiques du dessin ou modèle pour lequel la protection est demandée (voir le point 5.3 ci-dessous), comme dans la septième vue du dessin ou modèle communautaire enregistré 2038216-0001 (avec l’autorisation de BMC S.r.l.)
S’il est remédié aux irrégularités dans le délai imparti par l’Office, la date de dépôt est déterminée par celle à laquelle il a été remédié à toutes les irrégularités (article 10, paragraphe 2, du REDC).
S’il n’est pas remédié aux irrégularités dans ce délai, la demande n’est pas traitée en tant que demande de dessin ou modèle communautaire. Le dossier est clos sur décision de l’examinateur et le demandeur est informé de cette décision. L’examinateur informe le département des finances que toute taxe éventuellement acquittée doit être remboursée au demandeur (article 10, paragraphe 2, du REDC).
3.3.3 Dessins ou modèles retouchés à l’encre ou au fluide correcteur
Le dessin ou modèle ne doit pas être retouché à l’encre ou au fluide correcteur (article 4, paragraphe 1, point e), du REDC).
Les examinateurs n’ont pas accès à la version papier de la représentation, mais uniquement à des représentations scannées. Par conséquent, les représentations corrigées ne sont contestées et refusées aux fins de l’attribution d’une date de dépôt que si l’usage d’encre ou de fluide correcteur ne permet pas de déterminer avec certitude si la correction visible est ou non une caractéristique ornementale faisant partie du dessin ou modèle.
Le demandeur peut remédier à une irrégularité de la façon décrite ci-dessus au point 3.3.2.
3.3.4 Qualité
L’exigence selon laquelle le dessin ou modèle doit être d’une qualité suffisante pour distinguer clairement tous les détails de l’objet pour lequel la protection est demandée, aux fins de sa publication, s’applique dans la même mesure à toutes les demandes, indépendamment du mode de dépôt utilisé.
Cependant, les demandes transmises par télécopieur ou par voie électronique soulèvent des problèmes spécifiques.
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3.3.4.1 Transmission par télécopieur
La transmission par télécopieur peut ne pas être appropriée pour les demandes d’enregistrement de dessins ou modèles car la représentation du dessin ou modèle peut être déformée, rendue floue ou autrement endommagée lors de la transmission. Lorsqu’une demande est malgré tout transmise par télécopieur, il est particulièrement recommandé de déposer sans retard une copie de confirmation sur papier, par voie postale, par services privés de messagerie ou par voie de signification.
Si une demande est transmise par télécopieur, l’examinateur attend systématiquement une copie de confirmation pendant une période d’un mois suivant la date de réception de la télécopie avant de poursuivre le traitement de la demande. À l’issue de cette période d’attente d’un mois, l’examinateur continue l’examen sur la base des documents dont il dispose.
Une transmission insatisfaisante par télécopieur est susceptible d’induire deux irrégularités:
i) la représentation d’un dessin ou modèle transmise par télécopieur n’est pas d’une qualité suffisante pour distinguer clairement tous les détails de l’objet pour lequel la protection est demandée;
ii) la demande est incomplète et/ou illisible.
En ce qui concerne l’attribution d’une date de dépôt, il convient de distinguer ces deux hypothèses.
L’Office distingue comme suit les demandes illisibles des demandes de qualité insuffisante. Lorsqu’une comparaison de la demande initialement transmise et de la reproduction originale permet de conclure que ces documents se rapportent à la représentation d’un seul et même dessin ou modèle, il convient de considérer que la demande initialement transmise était simplement de qualité insuffisante. Lorsqu’une telle comparaison est impossible, la demande initialement transmise est à considérer comme illisible.
(i) La représentation d’un dessin ou modèle transmise par télécopieur n’est pas d’une qualité suffisante pour distinguer clairement tous les détails de l’objet pour lequel la protection est demandée.
La date initiale de dépôt sera maintenue si le demandeur envoie de sa propre initiative ou en réponse à la communication informelle de l’Office (voir le point 2.7.8 ci-dessus) la reproduction originale du dessin ou modèle dans le mois suivant la transmission par télécopieur, à condition qu’elle soit d’une qualité suffisante pour distinguer clairement tous les détails de l’objet pour lequel la protection est demandée (article 66, paragraphe 1, deuxième alinéa, du REDC).
La copie de confirmation doit correspondre au document qui a fait l’objet de la transmission initiale par télécopieur. L’examinateur rejette toute «copie de confirmation» qui ne serait pas strictement identique au document qui a fait l’objet de la transmission initiale par télécopieur. Cela serait notamment le cas si le demandeur soumettait dans sa copie de confirmation des vues modifiées ou des vues supplémentaires du ou des dessins ou modèles.
En cas de différences entre l’original et la copie précédemment transmise par télécopieur, seule la date de dépôt de l’original sera prise en considération.
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Si l’original n’est pas reçu dans le mois suivant la réception de la copie transmise par télécopieur, l’Office transmet au demandeur une notification formelle l’invitant à soumettre l’original dans un délai de deux mois.
Si le demandeur répond à cette requête en temps utile, la date de dépôt est réputée être la date à laquelle l’Office reçoit l’original, à condition qu’il soit d’une qualité suffisante pour distinguer clairement tous les détails de l’objet pour lequel la protection est demandée (article 66, paragraphe 1, troisième alinéa, du REDC).
S’il n’est pas remédié aux irrégularités dans le délai fixé par l’Office dans sa notification, la demande n’est pas traitée en tant que demande de dessin ou modèle communautaire. Le dossier est clos sur décision de l’examinateur et le demandeur est informé de cette décision. L’examinateur informe le département des finances que toute taxe éventuellement acquittée doit être remboursée au demandeur (article 10, paragraphe 2, du REDC).
Si l’Office reçoit une représentation d’un dessin ou modèle dont certaines vues présentent une irrégularité imputable à la transmission par télécopie et si la copie de confirmation a été reçue plus d’un mois après la date de réception de la transmission par télécopie, le demandeur a le choix entre
se voir octroyer, comme date de dépôt, la date de réception de la copie de confirmation; ou
conserver, comme date de dépôt, la date de réception de la transmission par télécopie, mais uniquement pour les vues ne présentant pas d’irrégularité, auquel cas les vues comportant des irrégularités seront rejetées.
(ii) La demande est incomplète et/ou illisible.
Lorsque la transmission par télécopie est incomplète ou illisible et les parties manquantes ou illisibles concernent les indications qui permettent d’identifier le demandeur ou la représentation du dessin ou modèle, l’Office délivre une notification formelle invitant le demandeur à renvoyer sa demande par télécopieur, par voie postale ou par voie de signification dans un délai de deux mois. Si le demandeur répond à cette requête en temps utile, la date de dépôt est réputée être la date à laquelle l’Office reçoit les documents complets et lisibles (article 66, paragraphe 2, du REDC).
S’il n’est pas remédié aux irrégularités dans ce délai, la demande n’est pas traitée en tant que demande de dessin ou modèle communautaire. Le dossier est clos sur décision de l’examinateur et le demandeur est informé de cette décision. L’examinateur informe le département des finances que toute taxe éventuellement acquittée doit être remboursée au demandeur (article 10, paragraphe 2, du REDC).
3.3.4.2 Dépôt électronique
La représentation du dessin ou modèle doit être transmise en tant qu’annexe au formulaire de demande électronique. Chaque vue doit être transmise au format .jpeg en tant qu’annexe distincte au formulaire de demande électronique. La taille de chaque pièce jointe ne peut dépasser 5 MB (voir la décision n° EX-11-3 du président de l’Office, du 18 avril 2011, concernant les communications électroniques de et vers l’Office).
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Les fichiers joints à faible résolution risquent d’être refusés en raison de leur qualité insuffisante aux fins de la reproduction et de la publication si l’agrandissement des vues au format de 8 cm × 16 cm rend flous les détails du dessin ou modèle.
S’il apparaît clairement que la demande transmise par voie électronique présente une irrégularité due à des problèmes techniques imputables à l’Office, tels que le chargement partiel des vues, l’Office autorisera le demandeur à resoumettre les vues manquantes (ou l’ensemble des vues) par lettre accompagnée d’une copie de l’accusé de réception de la demande déposée par voie électronique. La date de dépôt initial de la demande par voie électronique sera maintenue, à condition que la demande ne comporte aucune autre irrégularité affectant la détermination de la date de dépôt.
3.3.5 Spécimens
La reproduction graphique ou photographique d’un dessin ou modèle peut être remplacée par un spécimen dudit dessin ou modèle dans la mesure où les conditions cumulatives suivantes sont remplies:
la demande concerne un dessin ou modèle bidimensionnel; la demande comporte une demande d’ajournement (article 36, paragraphe 1,
point c), du RDC; article 5, paragraphe 1, du REDC).
Dans le cas d’une demande multiple, la représentation peut être remplacée par un spécimen pour certains dessins ou modèles seulement, à condition que lesdits dessins ou modèles soient bidimensionnels et qu’ils fassent l’objet d’une demande d’ajournement (voir le point 6.2.5 ci-dessous).
Un spécimen est généralement un échantillon d’un matériau comme le textile, le papier peint, la dentelle, le cuir, etc.
Les spécimens ne doivent pas dépasser les dimensions de 26,2 cm × 17 cm, ni peser plus de 50 grammes, et leur épaisseur est limitée à 3 millimètres (mm). Ils doivent pouvoir être stockés sans être pliés (article 5, paragraphe 2, du REDC).
Le spécimen est déposé en cinq exemplaires; dans le cas d'une demande multiple, cinq exemplaires du spécimen sont déposés pour chaque dessin ou modèle (article 5, paragraphe 3, du REDC).
La demande et le ou les spécimens doivent parvenir dans un colis unique transmis par voie postale ou remis en mains propres. Une date de dépôt ne sera attribuée que lorsque la demande et le ou les spécimens seront parvenus à l’Office.
Si le demandeur soumet un spécimen relatif à une demande ne comportant pas de demande d’ajournement, le spécimen n’est pas recevable. Dans ce cas, s’il est remédié à l’irrégularité dans les deux mois suivant la réception de la notification de l’Office, la date de dépôt est déterminée par celle à laquelle l’Office reçoit une reproduction graphique ou photographique adéquate du dessin ou modèle (article 10, paragraphe 2, du REDC).
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4 Examen des conditions de fond
L’Office procède à un examen des conditions de fond à remplir pour l’obtention de la protection, qui se limite à deux motifs absolus de refus.
Une demande est refusée si le dessin ou modèle ne répond pas à la définition établie à l’article 3, point a), du RDC ou est contraire à l’ordre public ou aux bonnes mœurs (article 9 du RDC).
4.1 Conformité avec la définition d’un dessin ou modèle
On entend par «dessin ou modèle» l’apparence d’un produit ou d’une partie de produit que lui confèrent, en particulier, les caractéristiques des lignes, des contours, des couleurs, de la forme, de la texture et/ou des matériaux du produit lui-même et/ou de son ornementation (article 3, point a), du RDC).
On entend par «produit» tout article industriel ou artisanal, y compris, entre autres, les pièces conçues pour être assemblées en un produit complexe, emballage, présentation, symboles graphiques et caractères typographiques, à l’exclusion, toutefois, des programmes d’ordinateur (article 3, point b), du RDC).
L’examen ne vise pas à déterminer si le produit revendiqué est effectivement fabriqué ou utilisé, ou peut être fabriqué ou utilisé, industriellement ou artisanalement.
Pour déterminer si un dessin ou modèle révèle l’apparence d’un «produit» ou d’une partie de «produit», l’examen se fera sur la base du dessin ou modèle lui-même, dans la mesure où il indique clairement la nature du produit, sa finalité ou sa fonction, ainsi que de l’indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué (article 36, paragraphe 2, du RDC).
Les exemples suivants, quoique non exhaustifs, illustrent la pratique de l’Office.
4.1.1 Plans directeurs, plans d’habitations ou autres plans architecturaux et aménagements intérieurs ou paysagers
Les plans directeurs, plans d’habitations ou autres plans architecturaux et aménagements intérieurs ou paysagers (par exemple les jardins) ne sont considérés comme des «produits» aux fins de l’application de l’article 7, paragraphe 1, du RDC et ne sont acceptés que s’ils sont accompagnés de l’indication correspondante «Produits de l’imprimerie» relevant de la classe 19-08 de la classification de Locarno.
Une objection sera soulevée si l’indication choisie pour décrire le produit désigné dans une demande de dessin ou modèle consistant en un plan d’habitation est «Maisons» comprise dans la classe 25-03 de la classification de Locarno. Cela tient au fait qu’un plan ne révèle pas l’apparence d’un produit fini tel qu’une maison.
4.1.2 Couleurs en tant que telles et combinaisons de couleurs
Une couleur unique peut naturellement constituer un élément d’un dessin ou modèle, mais elle ne répond pas en tant que telle à la définition d’un dessin ou modèle, car elle ne constitue pas «l’apparence d’un produit».
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Des combinaisons de couleurs peuvent être acceptées si les contours de la représentation garantissent qu’elles concernent un produit tel que, par exemple, un logo ou un symbole graphique de la classe 32 de la classification de Locarno.
4.1.3 Icônes
Les dessins ou modèles de visualisations d’écran ou d’icônes et d’autres types d’éléments visibles d’un programme informatique sont susceptibles d’être enregistrés (voir la classe 14-04 de la classification de Locarno).
4.1.4 Éléments purement verbaux
Les éléments purement verbaux en tant que tels et les séquences de lettres (écrits en caractères standard en noir et blanc) ne répondent pas à la définition d’un dessin ou modèle car ils ne constituent pas l’apparence d’un produit.
L’usage de caractères fantaisistes et/ou l’inclusion d’un élément figuratif rendent cependant le dessin ou modèle susceptible d’obtenir la protection en tant que logo/symbole graphique de la classe 32 de la classification de Locarno ou en tant que représentation ornementale d’une partie de tout produit auquel le dessin ou modèle est destiné à être appliqué.
4.1.5 Musique et sons
La musique et les sons ne constituent pas en soi l’apparence d’un produit et ne répondent dès lors pas à la définition d’un dessin ou modèle.
Toutefois, la représentation graphique d’une composition musicale, sous la forme d’une séquence musicale, est susceptible d’être enregistrée en tant que dessin ou modèle, si elle est demandée en tant que, par exemple, autres imprimés de la classe 19-08 ou symboles graphiques de la classe 32 de la classification de Locarno.
4.1.6 Photographies
Une photographie constitue en soi l’apparence d’un produit et répond dès lors à la définition d’un dessin ou modèle, indépendamment de son contenu. L’indication du produit peut être Papier à écrire, cartes de correspondance et faire-part compris dans la classe 19-01, autres imprimés ou photographies compris dans la classe 19-08 de la classification de Locarno ou tout produit auquel le dessin ou modèle est destiné à être appliqué.
4.1.7 Organismes vivants
Les organismes vivants ne sont pas des «produits», c’est-à-dire des articles industriels ou artisanaux. Un dessin ou modèle qui révèle l’apparence de plantes, de fleurs, de fruits, etc. dans leur état naturel est en principe refusé. Même si la forme en question s’écarte de celle de l’organisme vivant commun correspondant, le dessin ou modèle doit être refusé si rien ne suggère, à première vue, que cette forme est le résultat d’un
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procédé manuel ou industriel (voir, par analogie, la décision du 18/02/2013, R 595/2012-3, «Groente en fruit», paragraphe 11). Toutefois, aucune objection ne sera soulevée si l’indication du produit spécifie que ce produit est artificiel (voir en particulier la classe 11-04 de la classification de Locarno).
4.1.8 Matériel pédagogique
Le matériel pédagogique tel que les graphiques, les cartes, etc. peut constituer des représentations de produits compris dans la classe 19-07 de la classification de Locarno.
4.1.9 Concepts
Une demande de dessin ou modèle est refusée si la représentation est celle d’un produit qui ne constitue qu’un exemple parmi beaucoup d’autres de ce que le demandeur veut protéger. Un droit exclusif ne peut être accordé à un dessin ou modèle «non spécifique» susceptible de revêtir une multitude d’apparences différentes. C’est le cas lorsque l’objet d’une demande a trait, entre autres, à un concept, une invention ou une méthode d’obtention d’un produit.
4.2 Ordre public et bonnes mœurs
4.2.1 Principes communs
Les concepts d’ordre public et de bonnes mœurs peuvent varier d’un pays à l’autre. Une mesure restrictive basée sur des considérations d’ordre public ou de bonnes mœurs peut reposer sur une conception qui n’est pas nécessairement partagée par l’ensemble des États membres (arrêt du 14 octobre 2004, C-36/02, «Omega», points 33 et 37).
Compte tenu du caractère unitaire du dessin ou modèle communautaire enregistré (article 1er, paragraphe 3, du RDC), il suffit qu’un dessin ou modèle soit perçu comme étant contraire à l’ordre public dans au moins une partie de l’Union pour qu’il soit refusé au titre de l’article 9 du RDC (voir, par analogie, l’arrêt du 20 septembre 2011, T-232/10, «Blason soviétique», points 37 et 62). Cette conclusion est étayée par la législation et la pratique administrative de certains États membres.
Il n’est pas nécessaire que l’usage du dessin ou modèle soit illégal et interdit. Toutefois, l’illégalité de l’usage du dessin ou modèle en vertu du droit européen ou national est un indice important montrant que le dessin ou modèle devrait être refusé conformément à l’article 9 du RDC.
4.2.2 Ordre public
L’ordre public ne peut être invoqué pour refuser une demande de dessin ou modèle communautaire qu’en cas de menace réelle et suffisamment grave, affectant un intérêt fondamental de la société (arrêt du 14 mars 2000, C-54/99, «Église de scientologie», point 17).
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Les dessins ou modèles qui mettent en scène ou incitent à la violence ou à la discrimination fondée sur le sexe, la race ou l’origine ethnique, la religion ou les convictions, un handicap, l’âge ou l’orientation sexuelle sont refusés pour ces motifs (article 10 du traité sur le fonctionnement de l’Union européenne).
4.2.3 Bonnes mœurs
Les bonnes mœurs peuvent être invoquées pour refuser une demande de dessin ou modèle communautaire si celui-ci est perçu comme suffisamment obscène ou offensant du point de vue d’une personne raisonnable ayant des seuils moyens de sensibilité et de tolérance (voir, par analogie, l’arrêt du 9 mars 2012, T-417/10, «¡QUE BUENU YE! HIJOPUTA», point 21).
Le mauvais goût, contrairement à la contrariété aux bonnes mœurs, ne constitue pas un motif de refus.
4.3 Objection
Lorsqu’une objection est soulevée par l’examinateur pour l’un ou l’autre des deux motifs absolus de refus susmentionnés, le demandeur a la possibilité de retirer ou de modifier la représentation du dessin ou modèle ou de soumettre ses observations dans un délai de deux mois (article 47, paragraphe 2, du RDC, article 11 du REDC).
Si l’objection a trait à la conformité avec la définition d’un dessin ou modèle et si le problème peut être résolu par la modification de l’indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué, l’examinateur propose une telle modification dans la communication qu’il adresse au demandeur.
Si le demandeur décide de présenter une représentation modifiée du dessin ou modèle, celle-ci ne sera acceptée qu’à condition que «l’identité du dessin ou modèle soit maintenue» (article 11, paragraphe 2, du REDC).
Le maintien sous une forme modifiée sera dès lors limité aux cas dans lesquels les caractéristiques qui sont supprimées ou qui font l’objet d’une renonciation sont si insignifiantes au vu de leur taille ou de leur importance qu’elles sont susceptibles de passer inaperçues aux yeux d’un utilisateur averti.
La suppression de caractéristiques ou la renonciation à des caractéristiques peuvent se faire à l’aide des identifiants visés au point 5.3 ci-dessous.
S’il est remédié aux irrégularités dans le délai imparti par l’Office, la date de dépôt est déterminée par celle à laquelle il a été remédié à toutes les irrégularités (article 10, paragraphe 2, du REDC).
Si, dans le délai qui lui est imparti, le demandeur ne remédie pas au motif de rejet de la demande d’enregistrement, l’Office rejette la demande. Si le motif de rejet ne concerne que certains des dessins ou modèles compris dans une demande multiple, l’Office ne rejette la demande que pour les dessins ou modèles entachés d’irrégularité (article 11, paragraphe 3, du REDC).
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5 Conditions supplémentaires concernant la reproduction du dessin ou modèle
Il est rappelé au demandeur que les conditions relatives au format de la représentation du dessin ou modèle peuvent varier selon le mode de présentation de la demande (version papier, dépôt électronique, utilisation de spécimens). Ces conditions sont exposées aux articles 4 et 5 du REDC.
Les instructions suivantes complètent les conditions relatives à la qualité de la reproduction et au fond neutre (voir le point 3.3 ci-dessus).
Elles s’appliquent à tous les dessins ou modèles, indépendamment du mode de présentation de la demande.
Même dans le cas où une représentation du dessin ou modèle aurait été remplacée par un spécimen conformément à l’article 5 du REDC (voir le point 3.3.5 ci-dessus), le demandeur doit déposer une reproduction graphique ou photographique du dessin ou modèle au moins trois mois avant l’expiration de la période d’ajournement de trente mois (article 15, paragraphe 1, point c), du REDC; voir le point 6.2.5.3 ci-dessous).
Si une irrégularité est constatée dans une demande, concernant l’une ou l’autre des conditions visées dans la présente section, elle n’aura aucune influence sur l’attribution d’une date de dépôt. Toutefois, s’il n’est pas remédié aux irrégularités dans le délai prescrit par l’Office dans son rapport d’examen, la demande est rejetée (article 46, paragraphe 3, du RDC). Si les irrégularités ne concernent que certains des dessins ou modèles compris dans une demande multiple, l’Office ne rejette la demande que pour les dessins ou modèles entachés d’irrégularité (article 11, paragraphe 3, du REDC).
Une fois qu’une date de dépôt a été attribuée, le rejet de la demande ne donne pas lieu à un remboursement des taxes payées par le demandeur (article 13 du REDC).
5.1 Nombre de vues
Le but de la représentation graphique est de révéler les caractéristiques du dessin ou modèle pour lequel la protection est demandée. La représentation graphique doit être clairement délimitée afin de déterminer avec clarté et précision l’objet de la protection que confère le dessin ou modèle communautaire enregistré à son titulaire. Cette règle est dictée par l’exigence de sécurité juridique.
Il incombe au demandeur de révéler avec autant de précision que possible les caractéristiques de son dessin ou modèle. L’Office ne vérifiera pas si des vues supplémentaires sont nécessaires pour révéler pleinement l’apparence du dessin ou modèle, à moins que les exceptions prévues aux points 5.2.1 et 5.2.3 ci-dessous s’appliquent.
La représentation ne peut contenir plus de sept vues différentes du dessin ou modèle (article 4, paragraphe 2, du REDC). Les vues peuvent être des vues planes, des vues aériennes, des vues en section, des vues en perspective ou des vues éclatées. Seule une copie de chaque vue doit être déposée.
Une vue éclatée est une vue dans laquelle toutes les pièces d’un produit complexe sont représentées démontées afin d’expliquer comment ces différentes pièces peuvent
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être montées, comme l’illustre l’exemple ci-dessous (DMC 380969-0002, avec l’autorisation d’Aygaz Anonim Sirketi, créateur: Zafer Dikmen).
Les positions alternatives des éléments mobiles ou amovibles d’un dessin ou modèle peuvent être présentées dans des vues séparées, comme l’illustre l’exemple ci- dessous (DMC 588694-0012, avec l’autorisation de Fujitsu Toshiba Mobile Communications, créateur: Hideki Hino).
Le demandeur numérote chaque vue en chiffres arabes séparés par un point, le premier chiffre indiquant le numéro du dessin ou modèle, le second, le numéro de la vue. Par exemple, la sixième vue du deuxième dessin ou modèle d’une demande multiple doit être numérotée: 2.6.
Si plus de sept vues sont fournies, l’Office refuse l’enregistrement et la publication de toute vue supplémentaire (décision du 27 octobre 2009 dans l’affaire R 571/2007-3 - «Frames for cycles or motorcycles», paragraphe 13). L’Office prend en considération
les vues dans l’ordre dans lequel elles sont numérotées par le demandeur (article 4, paragraphe 2, du REDC).
Lorsqu’une reproduction comprend moins de sept vues et que les vues ne sont pas numérotées, l’examinateur numérote les vues selon leur ordre d’apparition dans la demande.
L’examinateur ne modifie pas l’ordre des vues telles qu’elles apparaissent dans la demande, ni leur orientation.
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5.2 Cohérence des vues
L’examinateur vérifie si les vues concernent le même dessin ou modèle, c’est-à-dire l’apparence d’un seul et même produit ou de ses parties.
Si les vues sont incohérentes et se rapportent à plus d’un dessin ou modèle, le demandeur est invité à retirer certaines vues ou à convertir la demande en une demande multiple pour différents dessins ou modèles, et à payer les taxes correspondantes.
Il appartient au demandeur de s’assurer que la demande est complète et correcte (y compris en ce qui concerne la représentation du dessin ou modèle). L’Office ne peut procéder à aucune correction des vues afin de leur rendre leur cohérence, une fois que le dessin ou modèle a été enregistré (décision du 3 décembre 2013, dans l’affaire R 1332/2013-3 – «Adapters», paragraphes 14 et ss.)
La cohérence des vues peut être particulièrement difficile à évaluer lors de l’examen de demandes de dessins ou modèles concernant des produits complexes, des détails de produits et des ensembles d’articles.
5.2.1 Produits complexes
Un produit complexe est un produit se composant de pièces multiples qui peuvent être remplacées de manière à permettre le démontage et le remontage du produit (article 3, point c), du RDC).
Le demandeur doit soumettre, parmi les sept vues autorisées, au moins une vue présentant le produit complexe dans sa forme assemblée. Voir l’exemple ci-dessous (DMC 238092-000, avec l’autorisation de Eglo Leuchten GmbH).
Chacune de ses parties pourrait en soi constituer un «dessin ou modèle». Par conséquent, si toutes les vues présentent différentes parties du produit, sans montrer
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ces parties connectées les unes aux autres, l’examinateur adresse au demandeur une notification d’irrégularité lui proposant deux options:
le demandeur peut convertir sa demande en une demande multiple combinant les différents dessins ou modèles concernant chaque partie en question et payer les taxes correspondantes; ou
le demandeur peut limiter sa demande à un seul dessin ou modèle en retirant les vues représentant d’autres dessins ou modèles.
5.2.2 Détails
Le même raisonnement s’applique à un dessin ou modèle qui n’est pas destiné à être incorporé dans un produit complexe lorsque les vues ne présentent que des détails individuels qui ne peuvent être associés à l’apparence du produit dans son ensemble.
Chacun des détails individuels du produit pourrait en soi constituer un «dessin ou modèle». Par conséquent, si toutes les vues présentent différentes caractéristiques détaillées, sans montrer ces caractéristiques connectées les unes aux autres, l’examinateur adresse au demandeur une notification d’irrégularité lui proposant deux options:
le demandeur peut convertir sa demande en une demande multiple combinant les différents dessins ou modèles concernant chaque détail individuel en question et payer les taxes correspondantes; ou
le demandeur peut limiter sa demande à un seul dessin ou modèle en retirant les vues représentant d’autres dessins ou modèles.
5.2.3 Ensembles d’articles
Un ensemble d’articles est un groupe de produits de même type qui sont généralement considérés comme fonctionnant ensemble et qui sont par conséquent utilisés ensemble. Voir l’exemple ci-dessous (DMC 685235-000, avec l’autorisation de Zaklady Porcelany Stolowej KAROLINA Sp. z o.o.).
La différence entre un produit complexe et un ensemble d’articles réside dans le fait que contrairement à un produit complexe, les articles appartenant à un «ensemble d’articles» ne sont pas mécaniquement interconnectés.
Un ensemble d’articles peut constituer un «produit» en soi au sens de l’article 3 du RDC. Il peut être représenté dans une demande unique de dessin ou modèle si les articles qui le composent sont liés par leur complémentarité esthétique et fonctionnelle et sont, dans des circonstances normales, vendus ensemble en tant que
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produit unique, par exemple un échiquier et ses pièces ou un jeu de couteaux, de fourchettes et de cuillères.
Il doit cependant apparaître clairement dans la représentation que la protection est demandée pour un dessin ou modèle résultant de la combinaison des articles composant l’ensemble.
Le demandeur doit soumettre, parmi les sept vues autorisées, au moins une vue présentant l’ensemble des articles dans sa globalité.
Dans le cas contraire, l’examinateur adresse au demandeur une notification d’irrégularité lui proposant deux options:
le demandeur peut convertir sa demande en une demande multiple combinant les différents dessins ou modèles concernant chaque article en question et payer les taxes correspondantes; ou
le demandeur peut limiter sa demande à un seul dessin ou modèle en retirant les vues représentant d’autres dessins ou modèles.
5.2.4 Variations d’un dessin ou modèle
Il convient d’établir une distinction entre les ensembles d’articles et les variations d’un dessin ou modèle. Les différentes représentations d’un même concept ne peuvent être groupées dans une seule demande, car chacune constitue un dessin ou modèle à part entière, comme l’indique l’exemple ci-dessous (DMC 1291652-0001; -0002; -0003; - 0004, avec l’autorisation de TESCOMA s.r.o.).
Si, dans une demande de dessin ou modèle communautaire unique, les vues se rapportent à plus d’un dessin ou modèle, l’examinateur adresse au demandeur une notification d’irrégularité lui proposant deux options:
le demandeur peut convertir sa demande en une demande multiple combinant les différents dessins ou modèles et payer les taxes correspondantes; ou
le demandeur peut limiter sa demande à un seul dessin ou modèle en retirant les vues représentant d’autres dessins ou modèles.
5.2.5 Couleurs
La représentation du dessin ou modèle peut être déposée en noir et blanc (monochrome) ou en couleur (article 4, paragraphe 1, du REDC).
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Les représentations combinant des vues en noir et blanc et des vues en couleur sont refusées en raison de leur manque de cohérence et de l’insécurité juridique qui en résulte quant à la protection demandée.
Le même raisonnement s’applique lorsque les mêmes caractéristiques d’un dessin ou modèle sont représentées en différentes couleurs dans les différentes vues. Une telle incohérence indique que la demande se rapporte à plus d’un dessin ou modèle (décisions du 31 mars 2005, dans l’affaire R 965/2004-3 – «Tape measure», paragraphes 18 à 20; du 12 novembre 2009 dans l’affaire R 1583/2007-3 – «Bekleidung», paragraphes 9 et 10).
Le demandeur est donc invité à retirer certaines des vues en couleur afin de maintenir la cohérence entre les vues restantes ou à convertir sa demande en une demande multiple, et à payer les taxes correspondantes.
Toutefois, à titre d’exception au principe susmentionné, les mêmes caractéristiques d’un dessin ou modèle peuvent être représentées en différentes couleurs dans les différentes vues si le demandeur prouve que le changement de couleurs à différents moments, lorsque le produit est en cours d’utilisation, constitue l’une des caractéristiques pertinentes du dessin ou modèle, comme l’illustre l’exemple ci- dessous (DMC 283817-0001, avec l’aimable autorisation d’ASEM Industrieberatung und Vermittlung).
Si la représentation du dessin ou modèle est en couleur, l’enregistrement et la publication sont en couleur (article 14, paragraphe 2, point c), du REDC).
5.2.6 Éléments extérieurs au dessin ou modèle
Les vues peuvent inclure des éléments extérieurs ou étrangers au dessin ou modèle à condition que leur inclusion ne crée pas de doutes quant à la protection demandée et ne serve qu’à des fins d’illustration (voir le point 3.3.2 ci-dessus).
Voir par exemple les deux DMC suivants, n° 210166-0003 (avec l’autorisation de Karl Storz GmbH & Co. KG) et n° 2068692-0002 (avec l’autorisation de Tenzi Sp. z o.o.), dans lesquels l’inclusion d’une main ou de végétation dans certaines vues sert à
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préciser l’usage qui sera fait du produit dans lequel le dessin ou modèle est destiné à être incorporé, ou le contexte dans lequel ce dessin ou modèle sera utilisé:
5.3 Utilisation d’identificateurs aux fins de l’exclusion de certaines caractéristiques de la protection
À la différence de l’article 37 du RMC, ni le RDC ni le REDC ne prévoient de dispositions permettant d’inclure dans la demande une déclaration selon laquelle le demandeur renonce à tout droit exclusif sur une ou plusieurs caractéristiques présentées dans les vues.
Le recours à une description, au sens de l’article 36, paragraphe 3, point a), du RDC, ne convient pas à cet égard, car une description «ne [peut porter] atteinte à l’étendue de la protection du dessin ou du modèle en tant que tel» (article 36, paragraphe 6, du RDC). En outre, seule la mention qu’une description a été déposée est publiée, et non la description elle-même [article 14, paragraphe 2, point d), du REDC].
Toute renonciation doit, dès lors, ressortir clairement de la représentation même du dessin ou modèle.
Sont autorisés, dans une demande d’enregistrement d’un dessin ou modèle communautaire, les identificateurs mentionnés ci-après.
5.3.1 Pointillés
Le pointillé peut être utilisé sur une vue soit pour indiquer les éléments pour lesquels la protection n’est pas revendiquée (par exemple, l’ornementation appliquée sur la surface d’un produit donné dont la forme est revendiquée), soit pour indiquer les
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parties du dessin ou modèle qui ne sont pas visibles sur la vue concernée, c’est-à-dire des lignes non visibles.
DMC 30606-0005, avec l’autorisation de Nokia Corporation (créateur: Petteri Kolinen)
5.3.2 Encerclement
L’encerclement peut être utilisé pour délimiter les caractéristiques du dessin ou modèle pour lesquelles la protection est revendiquée, les autres éléments étant considérés comme fournis à titre purement illustratif, c’est-à-dire pour présenter l’environnement dans lequel apparaissent les caractéristiques revendiquées.
DMC 164611-0004, avec l’autorisation de Valio Oy (créateur: Aki Liukko)
5.3.3 Nuances de couleur et floutage
Les nuances de couleur et le floutage peuvent être utilisés pour exclure certaines caractéristiques de la protection et mettre en relief les caractéristiques pour lesquelles la protection est revendiquée
DMC 244520-0002, avec DMC 222120-0002, avec DMC 220405-0003, avec l’autorisation
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l’autorisation de Nokian Tyres plc
l’autorisation d’Altia plc de KUBOTA CORPORATION (créateur: Yoshitaka Higashikawa)
5.3.4 Lignes de séparation
Les lignes de séparation peuvent être utilisées pour indiquer que, pour des raisons de commodité de représentation, la longueur précise du dessin ou modèle n’est pas revendiquée (longueur indéterminée).
DMC 1868753-0001, avec l’autorisation de Viskadalens Produktion AB (créateur: Johan Larsson)
5.4 Texte explicatif, termes ou symboles
Aucun texte explicatif, terme ou symbole autres que la mention «haut» ou les nom et adresse du demandeur ne peut être indiqué dans les vues (article 4, paragraphe 1, point c), du REDC).
Lorsque des termes, lettres, nombres ou symboles (tels que des flèches) ne font clairement pas partie du dessin ou modèle, l’examinateur peut les supprimer des vues à l’aide de l’outil informatique spécifiquement prévu à cette fin. Si l’examinateur n’est pas capable de les supprimer pour des raisons techniques, il invite le demandeur à lui transmettre des vues nettoyées ou à retirer les vues entachées d’irrégularités.
Lorsque les termes, lettres, nombres, etc. font partie du dessin ou modèle (symbole graphique), le dessin ou modèle est acceptable.
Les éléments verbaux présents dans la représentation qui font partie du dessin ou modèle sont inclus dans le dossier. Lorsque plusieurs éléments verbaux sont présents, l’examinateur ne tient compte que du plus visible.
Des mentions telles que «côté», «vue frontale», etc. sont supprimées lors de la publication. Si le demandeur juge ces mentions pertinentes, il peut les inclure dans le champ «Description» au moment du dépôt. Toute autre modification ou l’ajout d’une description seront refusés.
5.5 Modifier et compléter des vues
En principe, une représentation ne peut être modifiée une fois la demande déposée. Par conséquent, le dépôt de vues supplémentaires ou le retrait de certaines vues n’est pas accepté (article 12, paragraphe 2, du REDC), sauf autorisation ou demande expresse de l’Office.
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En particulier, les vues initialement déposées ne peuvent être remplacées par des vues de meilleure qualité. Les représentations examinées et publiées sont celles que le demandeur a fournies dans sa demande initiale.
Le dépôt de vues modifiées ou supplémentaires, si autorisé, doit être effectué par voie électronique via le site Internet de l’Office (et non par courrier électronique), ou par voie postale ou par télécopieur (ce dernier n’étant cependant pas recommandé; voir le point 2.2.5 ci-dessus).
5.6 Conditions spécifiques
5.6.1 Motifs superficiels répétitifs
Si une demande concerne un dessin ou modèle qui consiste en un motif superficiel répétitif, la représentation du dessin ou modèle montre le motif entier et une part suffisante de la surface répétitive (article 4, paragraphe 3, du REDC), afin de montrer que ce motif se multiplie à l’infini.
Lorsque la demande ne contient pas de description indiquant clairement que le dessin ou modèle consiste en un motif superficiel répétitif, l’Office suppose que ce n’est pas le cas et n’exige pas que la représentation montre une partie suffisante de la surface répétitive.
Si des vues supplémentaires représentant le motif appliqué à un ou plusieurs produits spécifiques sont transmises en guise d’exemple, le demandeur s’assure que la forme de tels produits n’est pas revendiquée en tant que partie du dessin ou modèle en faisant usage de toute méthode mentionnée au point 5.3 ci-dessus.
DMC 002321232-0002, avec l’autorisation de Textiles Visatex SL
5.6.2 Polices typographiques
Si une demande concerne un dessin ou modèle qui consiste en une police typographique, la représentation du dessin ou modèle se compose d’une chaîne de l’ensemble des caractères alphabétiques, majuscules et minuscules, et de l’ensemble des caractères numériques en chiffres arabes, ainsi que d’un texte de cinq lignes
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produites en utilisant ladite police, les lettres et caractères numériques étant en taille de police 16 (article 4, paragraphe 4, du REDC).
Si la demande ne comporte pas un texte de cinq lignes produites en utilisant ladite police (article 4, paragraphe 4, du REDC), le demandeur est invité à transmettre un tel texte ou à accepter que l’indication des produits soit modifiée en «caractères d’imprimerie» compris dans la classe 18.03 de la classification de Locarno.
6 Éléments supplémentaires à inclure obligatoirement ou éventuellement dans une demande
6.1 Conditions obligatoires
Outre les conditions requises pour l’attribution d’une date de dépôt (voir la rubrique 3 ci-dessus), la demande doit dûment identifier le demandeur et, le cas échéant, son représentant (article 1er, points b) et e), du REDC), indiquer les deux langues de la demande (article 1er, point h), du REDC), contenir une signature (article 1er, point i), du REDC) et indiquer les produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué (article 1er, point d), du REDC).
Même après l’attribution d’une date de dépôt, l’examinateur soulève une objection s’il constate une irrégularité relative à l’une des conditions susmentionnées au cours de l’examen de la demande de dessin ou modèle communautaire (article 10, paragraphe 3, point a), du REDC).
6.1.1 Identification du demandeur et de son représentant
Conformément à l’article 1er, paragraphe 1, point b), du REDC, une demande est refusée si elle ne contient pas les informations suivantes concernant le demandeur: ses nom, adresse et nationalité, ainsi que l’État sur le territoire duquel il a son domicile, son siège ou un établissement. Si l’Office a attribué un numéro d’identification au demandeur, il suffit d’indiquer ce numéro ainsi que le nom du demandeur.
Si la demande est déposée au nom de plus d’un demandeur, la même condition s’applique à chacun d’eux.
Les personnes physiques doivent être désignées par leurs nom et prénom(s). Les personnes morales doivent figurer sous leur dénomination officielle. L’État dont la législation est applicable doit également être indiqué.
Si le demandeur n’est pas représenté, il est vivement recommandé d’indiquer les numéros de téléphone et de télécopieur et tout autre moyen de communication éventuel, tel que l’adresse électronique.
Il est préférable de n’indiquer qu’une seule adresse par demandeur. Au cas où plusieurs adresses sont mentionnées, seule l’adresse figurant en première position est prise en considération, sauf lorsque le demandeur a élu domicile à l’une des adresses indiquées.
En cas de pluralité de demandeurs, l’Office transmet ses communications au demandeur mentionné en première position dans la demande.
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Si le demandeur a désigné un représentant, il indique les nom et adresse professionnelle de ce dernier. Si l’Office a attribué un numéro d’identification au représentant, il suffit d’indiquer ce numéro d’identification ainsi que le nom du représentant.
Si le représentant a plusieurs adresses professionnelles ou si le demandeur a désigné plusieurs représentants ayant des adresses professionnelles différentes, la demande doit préciser l’adresse à laquelle il a été fait élection de domicile. À défaut d’une telle précision, seule la première adresse indiquée est considérée comme le domicile élu.
En cas de pluralité de demandeurs, il est possible de désigner, dans la demande, un seul demandeur ou représentant en qualité de représentant commun.
6.1.2 Indication des langues
La demande doit être déposée dans une des langues officielles de l’Union européenne (langue de dépôt) (article 98, paragraphe 1, du RDC; voir le point 2.4). La langue utilisée dans le formulaire de demande n’a aucune incidence sur la langue de la demande. C’est la langue du contenu fourni par le demandeur qui est déterminante. La langue de dépôt est la première langue de la demande.
Le demandeur doit indiquer une deuxième langue qui soit une langue de l’Office, à savoir l’espagnol (ES), l’allemand (DE), l’anglais (EN), le français (FR) ou l’italien (IT).
La deuxième langue doit être différente de la langue de dépôt.
Les CODES ISO de deux lettres (codes établis par l’Organisation internationale de normalisation pour identifier les langues) peuvent être utilisés dans le champ ad hoc du formulaire de demande.
6.1.3 Signature
La demande doit être signée par le demandeur ou son représentant (article 1er, paragraphe 1, point i), du REDC). En cas de pluralité des demandeurs ou des représentants, la signature de l’un d’eux est suffisante.
En cas de dépôt électronique, il suffit d’indiquer le nom et la qualité du signataire. En cas de transmission par télécopieur, un fac-similé de signature est jugé acceptable.
Pour les représentants, la signature constituée du nom du cabinet d’avocats est acceptable.
6.1.4 Désignation des produits
6.1.4.1 Principes généraux
Conformément à l’article 36, paragraphe 2, du RDC, une demande de dessin ou modèle communautaire doit contenir une indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué. En vertu de l’article 1er, paragraphe 1, point d), et de l’article 3, paragraphe 3, du REDC, la désignation des produits doit être établie de manière à faire apparaître clairement leur nature et à ne permettre la classification de chaque produit que dans
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une seule classe de la classification de Locarno, en utilisant de préférence les termes figurant sur la liste de produits de cette classification, ou dans la base de données Eurolocarno (voir ci-dessous).
Ni la désignation des produits ni leur classification ne porte atteinte à l’étendue de la protection du dessin ou du modèle en tant que tel (article 36, paragraphe 6, du RDC). La classification des produits est effectuée à des fins exclusivement administratives, notamment pour permettre à des tiers de consulter les bases de données des dessins ou modèles communautaires enregistrés (article 3, paragraphe 2, du REDC).
Le demandeur n’est pas tenu d’effectuer lui-même une classification en classes des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué (article 36, paragraphe 3, point d), du RDC). Cela est toutefois vivement recommandé pour accélérer la procédure d’enregistrement (voir le point 6.2.3).
Les commentaires qui suivent ne concernent que les demandes pour un dessin ou modèle unique. Pour les demandes multiples, la règle de « l’unité de classe » s’applique (voir point 7.2.3. ci-dessous).
6.1.4.2 Classifications de Locarno et d’Eurolocarno
La classification de Locarno est une classification internationale pour les dessins et modèles industriels. Elle existe en deux langues officielles, l’anglais et le français. Sa structure et son contenu sont adoptés et modifiés par le comité des experts des pays parties à l’arrangement de Locarno. La classification est administrée par l’Organisation mondiale de la propriété intellectuelle (OMPI). Sa version actuelle, la dixième, contient 32 classes et 219 sous-classes.
Eurolocarno est l’outil de classification des dessins ou modèles créé par l’Office. Il est établi sur la base de la classification de Locarno et possède la même structure (c’est-à-dire les mêmes classes et sous-classes). Il contient la liste alphabétique des produits de la classification de Locarno, complétée par de nombreux autres termes désignant des produits. Eurolocarno est disponible dans toutes les langues officielles de l’Union sur le site internet de l’OHMI.
Afin d’accélérer et de simplifier la procédure d’enregistrement, il est vivement recommandé de désigner les produits à l’aide des termes figurant dans la base de données Eurolocarno.
Cela permet d’éviter leur traduction et, partant, d’importants retards dans la procédure d’enregistrement. Un recours optimal à ces termes améliore la transparence et la consultation des bases de données des dessins ou modèles communautaires enregistrés.
6.1.4.3 Établissement de la désignation des produits
Plusieurs produits peuvent être indiqués dans la demande.
Si plusieurs produits sont indiqués dans la demande, les produits ne doivent pas nécessairement appartenir à la même classe de la classification de Locarno, à moins que plusieurs dessins ou modèles ne soient combinés en une demande multiple
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(article 37, paragraphe 1, du RDC; article 2, paragraphe 2, du REDC, voir le point 7.2.3).
Chaque classe et sous-classe de la classification de Locarno et d’Eurolocarno possède un «intitulé». Ces intitulés fournissent une indication des classes et sous-classes dans lesquelles les produits sont classés.
Dans tous les cas, le ou les produits doivent être désignés de manière à permettre leur classification à la fois dans les classes et dans les sous-classes de la classification de Locarno auxquelles ils appartiennent (article 1er, paragraphe 2, point c), du REDC).
L’utilisation de termes figurant dans l’intitulé d’une classe donnée de la classification de Locarno n’est pas en soi exclue, mais n’est pas recommandée. Le demandeur ne devrait pas choisir des termes génériques figurant dans l’intitulé de la classe concernée [par exemple «Vêtements» (articles d’habillement) dans la classe 2], mais devrait plutôt sélectionner des termes figurant dans l’intitulé de la sous-classe correspondante (par exemple «Vêtements» dans la sous-classe 02-02) ou des termes plus spécifiques parmi ceux mentionnés dans les sous-classes de la classe en question (par exemple «Vestes» dans la sous-classe 02-02).
Si la désignation des produits ne permet pas leur classement dans une sous-classe spécifique, l’examinateur détermine la sous-classe adéquate sur la base du produit présenté dans la représentation graphique (voir le point 6.2.3.1 ci-dessous). Par exemple, si une demande contient comme indication des produits le terme «Ameublement» compris dans la classe 6 de la classification de Locarno, l’examinateur choisit une sous-classe en fonction du dessin ou modèle lui-même dans la mesure où il indique clairement la nature du produit, sa finalité ou sa fonction. Si le dessin ou modèle révèle l’apparence d’un lit, l’examinateur attribuera la sous- classe 06-02 à l’indication générique «Ameublement».
L’utilisation d’adjectifs dans les indications de produits n’est pas en soi exclue, même si ces adjectifs ne font pas partie de la liste alphabétique de produits de la classification de Locarno ou d’Eurolocarno (par exemple «Outils électriques servant à forer» dans la sous-classe 08-01 ou «Pantalons en coton» dans la sous-classe 02-02). Cependant, elle peut engendrer des retards dans le traitement de la demande lorsqu’une traduction de l’adjectif dans toutes les langues de l’UE est nécessaire.
6.1.4.4 Modification d’office de la désignation des produits
Termes non repris dans la classification de Locarno ni dans EuroLocarno
Si un demandeur utilise des termes qui ne figurent pas dans Eurolocarno, l’examinateur remplace d’office, dans les cas simples, le libellé utilisé par le demandeur par un terme équivalent ou plus général de la classification de Locarno ou d’Eurolocarno. Cette mesure a pour but d’éviter la traduction de termes dans toutes les langues de l’UE, ce qui ralentirait le traitement de la demande.
Par exemple, si un demandeur choisit le terme «chaussures de course» (un terme non repris dans Eurolocarno) pour désigner les produits dans lesquels le dessin ou modèle est destiné à être incorporé, l’examinateur remplace ce terme par «Chaussures» (l’intitulé de la sous-classe 02-04) ou «Souliers» (un terme de la sous-classe 02-04).
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Bien que la désignation des produits ne porte pas atteinte à l’étendue de la protection d’un dessin ou modèle communautaire en tant que tel, l’examinateur s’abstient de remplacer les termes choisis par le demandeur par des termes plus spécifiques.
Les produits et leurs parties; ensembles
Lorsqu’un dessin ou modèle représente l’apparence d’une partie de produit et que ce produit dans son ensemble est indiqué dans la demande (par exemple une demande déposée pour le dessin ou modèle d’un manche de couteau indique que les produits dans lesquels ce dessin ou modèle est destiné à être incorporé sont des «Couteaux» compris dans la sous-classe 08 03), l’examinateur remplace cette désignation par la désignation «Produit(s) X (partie de -)», à condition que la partie en question et le produit dans son ensemble appartiennent à la même classe de la classification de Locarno.
Lorsqu’un dessin ou modèle représente un ensemble de produits et que ces produits sont indiqués dans la demande (par exemple une demande déposée pour le dessin ou modèle d’un ensemble de plats indique que les produits dans lesquels le dessin ou modèle est destiné à être incorporé sont des «Plats» compris dans la sous- classe 07-01), l’examinateur remplace cette désignation par la désignation «Produit(s) X (ensemble de -)».
Ornementation
Le même raisonnement s’applique lorsque le dessin ou modèle représente une ornementation pour un produit donné et que le produit dans son ensemble est indiqué dans la demande. L’examinateur remplace cette désignation par la désignation «Produit(s) X (ornementation pour -)». Le produit est ainsi classé dans la classe 32-00 de la classification de Locarno.
En outre, lorsque la désignation du produit est «Ornementation» et que le dessin ou modèle ne se limite pas à représenter cette ornementation, mais présente aussi le produit auquel l’ornementation est destinée à être appliquée ou une partie de ce produit, sans qu’il soit renoncé à ses contours, ce produit est ajouté à la désignation des produits et la classification est modifiée en conséquence.
Une liste de produits combinant une «ornementation» avec d’autres produits appartenant à différentes classes de la classification de Locarno est refusée si plusieurs dessins ou modèles sont combinés en une demande multiple (voir le point 7.2.3).
Notification de la modification d’office de la désignation des produits
En l’absence d’irrégularité, l’examinateur enregistre le ou les dessins ou modèles communautaires et informe le demandeur de la modification d’office de la désignation des produits.
Si le demandeur s’oppose à cette modification d’office, il peut demander la rectification de l’inscription correspondante au registre (voir point 11.1) et le maintien des termes originaux utilisés dans la demande, à condition que la clarté et la précision de ces termes ou de leur classification soient garanties (article 20 du REDC, voir la décision du 5 juillet 2007, R 1421-2006-3, «Cash registers»). Dans un tel cas, cependant, le
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demandeur est informé que la traduction des termes originaux dans toutes les langues officielles de l’Union est susceptible de ralentir la procédure d’enregistrement du ou des dessins communautaires.
6.1.5 Longues listes de produits
Plusieurs produits peuvent être indiqués dans la demande.
Toutefois, pour que le registre des dessins ou modèles communautaires reste consultable et que les frais de traduction soient réduits au minimum, dans les cas où une demande indique plus de cinq produits différents relevant de la même sous-classe de la classification de Locarno, l’examinateur suggère de remplacer la désignation des produits par l’intitulé de la sous-classe en question.
Par exemple, imaginons qu’une demande contienne la liste de produits suivante: dispositifs de verrouillage ou de fermeture, clés pour véhicules, baguettes antivol (interverrouillage) pour portes, poteaux antivol pour motos, cadenas (partie de -), gâches de serrures, loquets, menottes, montures de sacs à main, moraillons, pênes de serrures, fermetures de portes ou fenêtres, ouvre-porte [électrique], verrous de portes, serrures, fermoirs de porte-monnaie et de sacs à main, targettes, cadenas, verrouillage (dispositifs de -), fermoirs d’articles de maroquinerie, ferme-porte, crémones de fenêtres ou de portes, arrêts de persiennes, clés de contact électrique, câbles antivol pour cycles, serrures antivol, clés, fermetures de boîtes, freins de ferme-porte, serrures à gorge, serrures de portières de véhicules, serrures de ridelles de camions, serrures de sûreté pour cycles, fermoirs d’étuis à cigarettes, tourniquets de contrevents, sabots de Denver, menottes, serrures (partie de -).
Puisque tous ces produits sont classés dans la même sous-classe de la classification de Locarno, l’examinateur propose de remplacer la liste par l’intitulé de la sous-classe 08-07, à savoir «Dispositifs de verrouillage ou de fermeture».
Lorsque la liste de produits indiquée dans la demande contient plus de cinq produits qui n’appartiennent pas à la même sous-classe de la classification de Locarno, l’examinateur suggère au demandeur de limiter le nombre de produits à cinq et de sélectionner les produits en conséquence.
Si, dans le délai imparti dans la communication de l’examinateur, le demandeur exprime le souhait de maintenir la liste de produits originale, il est procédé à l’examen sur la base de cette liste.
Si le demandeur ne répond pas dans ce délai ou accepte expressément la proposition de l’examinateur, il est procédé à l’examen sur la base de la liste de produits proposée par l’examinateur.
6.1.6 Objections aux indications de produits
Lorsque l’examinateur soulève une objection, le demandeur dispose d’un délai de deux mois pour présenter ses observations et remédier à toute irrégularité constatée (article 10, paragraphe 3, du REDC).
L’examinateur peut inviter le demandeur à indiquer la nature et la finalité des produits afin qu’ils puissent être classés correctement, ou peut suggérer des termes issus d’Eurolocarno afin d’aider le demandeur.
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S’il n’est pas remédié à l’irrégularité dans le délai prescrit, la demande est rejetée (article 10, paragraphe 4, du REDC).
6.1.6.1 Absence de désignation des produits
Une objection est soulevée si la demande ne contient aucune indication des produits concernés (article 36, paragraphe 2, du RDC). Toutefois, si la description ou le document de revendication d’une priorité contient une indication, l’examinateur l’enregistre en tant qu’indication des produits (décision du 21 mars 2011 dans l’affaire R 2432/2010-3, «Kylkropp för elektronikbärare», paragraphe 14).
6.1.6.2 Constatation d’irrégularités dans la désignation des produits
L’examinateur refuse également la désignation des produits si elle ne permet pas de classer chaque produit dans une seule classe et une seule sous-classe de la classification de Locarno (article 3, paragraphe 3, du REDC).
C’est le cas lorsque la désignation est trop vague ou ambiguë pour pouvoir déterminer la nature et la finalité des produits en question, par exemple marchandises, articles de fantaisie, présents, souvenirs, accessoires ménagers, appareils électriques, etc.
C’est également le cas lorsque la désignation concerne un service plutôt qu’un produit, par exemple l’envoi ou traitement d’informations.
6.1.6.3 Absence manifeste de correspondance
Étant donné que le principal objectif de la désignation et de la classification des produits est de permettre la consultation du registre des dessins ou modèles communautaires par des tiers, l’examinateur soulève une objection lorsque la désignation du produit ne correspond manifestement pas au produit présenté dans la représentation du dessin ou modèle.
6.2 Éléments facultatifs
Une demande peut contenir plusieurs éléments facultatifs, énoncés à l’article 1er, paragraphe 1, points f) et g), et à l’article 1er, paragraphe 2, du REDC, à savoir:
une revendication de priorité d’une demande antérieure ou de priorité d’exposition;
une description; l’indication de la classification de Locarno des produits concernés par la
demande; la désignation du ou des créateurs; une demande d’ajournement.
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6.2.1 Priorité et priorité d’exposition
6.2.1.1 Priorité
Principes généraux
Une demande d’enregistrement d’un dessin ou modèle communautaire peut revendiquer la priorité d’une ou plusieurs demandes antérieures pour le même dessin ou modèle ou modèle d’utilité dans ou pour l’un des États parties à la Convention de Paris ou à l’Accord instituant l’Organisation mondiale du commerce, ou dans ou pour un autre État avec lequel a été conclu un accord de réciprocité (article 41 du RDC; article 8 du REDC). Cette «priorité en vertu de la Convention de Paris» est de six mois à compter de la date de dépôt de la première demande.
Par l’effet du droit de priorité, la date de priorité est considérée comme date de dépôt de la demande d’enregistrement d’un dessin ou modèle communautaire, aux fins des articles 5, 6, 7 et 22, de l’article 25, paragraphe 1, point d), et de l’article 50, paragraphe 1 du RDC (article 43 du RDC).
Les revendications de priorité sont soumises aux conditions de forme suivantes :
la priorité doit être revendiquée dans les six mois à compter du dépôt de la première demande;
la demande antérieure constituait un premier dépôt de dessin ou modèle ou de modèle d’utilité dans un État partie à la Convention de Paris ou à l’Organisation mondiale du commerce (OMC), ou dans un autre État avec lequel a été conclu un accord de réciprocité;
le titulaire est le même ou un document de transfert établit le droit du demandeur de dessin ou modèle communautaire de revendiquer la priorité d’une demande antérieure initialement déposée par un autre demandeur ;
la priorité a été revendiquée lors du dépôt de la demande ou dans un délai d’un mois à compter de la date de dépôt de la demande ;
les détails et la copie certifiée de la demande antérieure doivent être produits en temps utile (dans un délai de trois mois à compter de la date de dépôt ou, le cas échéant, de la date de réception de la déclaration de priorité).
S’agissant des conditions de fond, le dessin ou modèle communautaire doit concerner «le même dessin ou modèle ou [...] le même modèle d’utilité» que celui pour lequel la priorité est revendiquée (article 41, paragraphe 1, du RDC). Cela signifie que l’objet de la demande antérieure doit être identique à celui du dessin ou modèle communautaire correspondant, sans ajout ni suppression de caractéristiques. Une revendication de priorité est cependant valable si le dessin ou modèle communautaire et le dessin ou modèle ou le modèle d’utilité dont la priorité est revendiquée ne se distinguent que par des détails insignifiants, au sens de l’article 5 du RDC.
Lors de l’examen d’une demande de dessin ou modèle communautaire, l’Office ne vérifie pas que la demande concerne «le même dessin ou modèle ou [...] le même modèle d’utilité» que celui pour lequel la priorité est revendiquée. Par conséquent, il incombe exclusivement au demandeur de s’assurer qu’il est satisfait à cette condition, faute de quoi la validité de la revendication de priorité pourrait être contestée à un stade ultérieur.
Une revendication de priorité est examinée aux fins des articles 5, 6 et 7 et de l’article 25, paragraphe 1, point d), du RDC par l’Office au cours d’une procédure en
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nullité si un tiers conteste la validité de cette revendication ou si le titulaire conteste les effets de la divulgation d’un dessin ou modèle, lorsque cette divulgation a eu lieu dans le délai de priorité (voir les Directives relatives à l’examen des demandes en nullité de dessins ou modèles, point 5.5.1.8: Divulgation dans le délai de priorité).
Durant la phase d’examen d’une demande de dessin ou modèle communautaire, l’Office se limite à vérifier s’il est satisfait aux conditions de forme relatives aux revendications de priorité (article 45, paragraphe 2, point d), du RDC).
Revendication de priorité
Le demandeur peut revendiquer la priorité d’une ou de plusieurs demandes de dessin ou modèle ou de modèle d’utilité. Ainsi, la priorité de plusieurs demandes antérieures peut être revendiquée lorsqu’au moins deux dessins ou modèles communautaires sont combinés en une demande multiple.
Si la priorité de la même demande antérieure est revendiquée pour tous les dessins ou modèles d’une demande multiple, la case «Priorité identique pour tous les dessins/modèles» devrait être cochée dans le formulaire de demande (version papier).
Est reconnu comme donnant naissance au droit de priorité tout dépôt ayant la valeur d’un dépôt national régulier en vertu de la législation nationale applicable. Par «dépôt national régulier», on entend tout dépôt qui suffit à établir la date à laquelle la demande a été déposée dans le pays concerné, quel que soit le sort ultérieur réservé à cette demande (article 41, paragraphe 3, du RDC).
La priorité peut être revendiquée soit lors du dépôt de la demande de dessin ou modèle communautaire, soit dans un délai d’un mois à compter de la date de dépôt de la demande. Le demandeur produit, dans ce délai d’un mois à compter de la date de dépôt de la demande, la déclaration de priorité, indiquant la date de la demande antérieure et l’État dans lequel elle a été déposée (article 8, paragraphe 2, du REDC).
En l’absence d’indication de la revendication dans la demande, la production de documents de priorité dans un délai d’un mois à compter de la date de dépôt de la demande est considérée comme une déclaration de priorité.
Sauf indication expresse d’une revendication de priorité ultérieure dans la demande, la demande est examinée sans délai et, en l’absence de constatation d’irrégularités, est enregistrée sans tenir compte d’un délai d’un mois pour la production d’une éventuelle déclaration de priorité. En cas de dépôt régulier d’une déclaration de priorité après l’enregistrement de la demande de dessin ou modèle communautaire, une inscription correspondante est ultérieurement portée au registre.
Le demandeur dispose d’un délai de trois mois à compter de la date de dépôt ou, le cas échéant, de la date de réception de la déclaration de priorité par l’Office pour indiquer le ou les numéros de dossier attribués à la ou aux demandes antérieures et pour produire une copie de cette ou ces demandes (article 8 du REDC).
Irrégularités
L’Office se contente de vérifier s’il est satisfait aux conditions de forme relatives à une revendication de priorité (article 45, paragraphe 2, point d), du RDC), c’est-à-dire:
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si la priorité a été revendiquée dans les six mois à compter du dépôt de la première demande;
si la priorité a été revendiquée lors du dépôt de la demande ou dans un délai d’un mois à compter de la date de dépôt de la demande;
si les détails et la copie de la demande antérieure ont été produits en temps utile (dans un délai de trois mois à compter de la date de dépôt ou, le cas échéant, de la date de réception de la déclaration de priorité);
si la demande antérieure concerne un dessin ou modèle ou un modèle d’utilité; si la demande antérieure a été déposée dans un État partie à la Convention de
Paris ou à l’Organisation mondiale du commerce (OMC), ou dans un autre État avec lequel a été conclu un accord de réciprocité;
si la demande antérieure constituait un premier dépôt (la revendication de priorité doit être refusée si la demande prioritaire revendique elle-même une priorité);
si le titulaire est le même ou si un document de transfert établit le droit du demandeur de dessin ou modèle communautaire de revendiquer la priorité d’une demande antérieure initialement déposée par un autre demandeur.
Lorsque l’examinateur constate des irrégularités qui peuvent être rectifiées, il invite le demandeur à y remédier dans un délai de deux mois.
Si les irrégularités ne peuvent être rectifiées ou si le demandeur n’y remédie pas dans le délai prescrit, l’Office informe le demandeur que le droit de priorité pour la demande est perdu et lui indique la possibilité de demander une décision formelle (c’est-à-dire susceptible de recours) sur cette perte (article 46, paragraphes 1 et 4, du RDC; article 40, paragraphe 2, du REDC)
Si les irrégularités auxquelles il n’est pas remédié ne concernent que certains des dessins ou modèles compris dans une demande multiple, l’Office ne refuse le droit de priorité que pour les dessins ou modèles entachés d’irrégularité (article 10, paragraphe 8, du REDC).
Si la priorité a été revendiquée dans les six mois à compter du dépôt de la première demande
L’examinateur examine si la date de dépôt attribuée au dessin ou modèle communautaire n’est pas postérieure à la date d’expiration du délai de six mois suivant la date de dépôt de la première demande. Le demandeur doit tenir compte du fait que la date de dépôt accordée par l’Office peut ne pas toujours correspondre à la date de réception de la demande de dessin ou modèle communautaire (voir le point 3).
Pour accélérer la procédure d’enregistrement, lorsque la date de dépôt de la demande de dessin ou modèle communautaire est incontestablement et irrémédiablement largement postérieure à la date d’expiration de ce délai de six mois, l’Office rejette la revendication de priorité sans informer formellement le demandeur de cette irrégularité.
Lorsque la date de dépôt n’est que légèrement postérieure à la date d’expiration de ce délai de six mois, l’examinateur vérifie s’il convient de proroger ce délai en application de l’une des conditions prévues à l’article 58 du REDC.
Le droit de priorité revendiqué doit systématiquement être une demande antérieure, qui, précisément pour cette raison, ne peut porter la même date que la demande de dessin ou modèle communautaire.
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Si la priorité a été revendiquée lors du dépôt de la demande ou dans un délai d’un mois à compter de la date de dépôt de la demande
L’examinateur vérifie que la priorité a été revendiquée dans un délai d’un mois à compter de la date de dépôt du dessin ou modèle communautaire.
Si les détails de la demande antérieure et la copie du document de priorité ont été produits en temps utile
Lorsque la priorité est revendiquée au moment du dépôt ou par la production d’une déclaration de priorité, le demandeur doit mentionner la date de la demande antérieure et l’État dans lequel ou pour lequel elle a été déposée [article 1er, paragraphe 1, point f), du REDC]. Cependant, l’absence de mention de ces informations ne donne pas lieu à une objection: l’examinateur attend que soit produit le document de priorité.
Le demandeur dispose d’un délai de trois mois à compter de la date de dépôt de la demande de dessin ou modèle communautaire ou de la production de la déclaration de priorité pour indiquer le numéro de dossier attribué à la demande antérieure et pour produire une copie du document établissant le droit de priorité (article 8 du REDC).
Le document de priorité doit consister en une copie certifiée de la demande ou de l’enregistrement antérieur, délivrée par l’autorité qui l’a reçu, et être accompagnée d’un certificat indiquant la date de dépôt de cette demande. Le demandeur peut choisir de délivrer le document original ou une photocopie conforme. Dans la mesure où l’original du document de priorité contient une représentation de la marque en couleur, la photocopie doit également être en couleur (décision n° EX-03-5 du président de l’Office du 20 janvier 2003 concernant les conditions formelles relatives à une revendication d’ancienneté ou de priorité). Le demandeur revendiquant la priorité d’une demande de brevet (dessin ou modèle) américain est autorisé à produire la copie certifiée conforme de cette demande sur CD-ROM (communication n° 12/04 du président de l’Office du 20 octobre 2004).
Lorsque la priorité d’une demande de dessin ou modèle communautaire antérieure est revendiquée, le demandeur doit indiquer le numéro de la demande de dessin ou modèle communautaire antérieure et sa date de dépôt. Aucune autre information ni aucun autre document n’est requis (décision n° EX-03-5 susmentionnée).
Si la langue de la demande antérieure n’est pas une des cinq langues de l’Office, l’examinateur peut inviter le demandeur à transmettre une traduction de la demande antérieure dans un délai de deux mois (article 42 du RDC). Il n’est pas nécessaire que le document soit traduit dans son intégralité; il suffit que soient uniquement traduites les informations permettant à l’examinateur de vérifier la nature du droit (dessin ou modèle ou modèle d’utilité), le pays de dépôt, le numéro de dossier, la date de dépôt et le nom du demandeur.
Pour accélérer la procédure d’enregistrement, lorsqu’un examinateur constate des irrégularités dans la revendication de priorité, une notification d’irrégularité est délivrée avant l’expiration du délai prescrit pour la transmission de tous les détails de la demande antérieure, dont le numéro de dossier et le document de priorité. Le délai accordé pour remédier aux irrégularités n’est pas inférieur à trois mois à compter de la date de dépôt ou de la date de réception de la déclaration de priorité.
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Si la demande antérieure concerne un dessin ou modèle ou un modèle d’utilité
La priorité d’une demande de dessin ou modèle ou de modèle d’utilité antérieure peut être revendiquée, de même que celle d’un enregistrement d’un dessin ou modèle communautaire ou international antérieur.
Bon nombre de législations nationales ne prévoient pas la protection des modèles d’utilité, par exemple la législation des États-Unis d’Amérique. Dans l’Union européenne, les modèles d’utilité peuvent être enregistrés notamment en Autriche, en République tchèque, au Danemark, en Finlande, en Allemagne, en Italie, en Hongrie, en Pologne, au Portugal, en Slovaquie et en Espagne. Les modèles d’utilité peuvent également être enregistrés au Japon.
Une revendication de priorité fondée sur une demande de brevet antérieure est en principe refusée. Cependant, la priorité d’une demande internationale déposée en vertu du traité de coopération en matière de brevets (PCT) peut être revendiquée au titre de l’article 2 de ce traité, qui définit le terme «brevet» au sens large, de manière à englober les modèles d’utilité.
Une revendication de priorité ne peut être fondée sur une demande antérieure déposée auprès de l’Office des brevets et des marques des États-Unis (USPTO) que si l’objet de la demande antérieure concerne un «brevet de dessin ou modèle» et non un «brevet».
Si la demande antérieure a été déposée dans un État partie à la Convention de Paris ou à l’Organisation mondiale du commerce (OMC), ou dans un autre État avec lequel a été conclu un accord de réciprocité
Les États et autres territoires cités ci-dessous ne sont parties à aucune convention concernée ni ne bénéficient d’accords de réciprocité. Dès lors, les revendications de priorité fondées sur des demandes déposées dans ces États ou territoires sont refusées:
Afghanistan (AF) Abkhazie Samoa américaines (AS) Anguilla (AI) Aruba (AW) Bermudes (BM) Îles Caïmans (KY) Îles Cook (CK) Érythrée (ER) Éthiopie (ET) Îles Falkland (FK) Guernesey (îles anglo-normandes) (GG) Île de Man (IM) Jersey (îles anglo-normandes) (JE) Kiribati (KI) Îles Marshall (MH) Micronésie (États fédérés de) (FM) Montserrat (MS) Nauru (NR) Palau (PW)
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Pitcairn (Îles) (PN) Sainte-Hélène (SH) Somalie (SO) Îles Turks-et-Caïcos (TC) Tuvalu (TV) Îles Vierges britanniques (VG)
Pour accélérer la procédure d’enregistrement, lorsque la demande antérieure a été incontestablement et irrémédiablement déposée dans l’un des États ou territoires susmentionnés, l’Office rejette la revendication de priorité sans informer formellement le demandeur de cette irrégularité.
Si la demande antérieure constitue un premier dépôt
En principe, la demande antérieure doit être un premier dépôt. L’examinateur vérifie par conséquent que le document de priorité ne concerne pas une priorité revendiquée pour une demande encore plus antérieure.
À titre exceptionnel, afin de déterminer la priorité, est considérée comme première demande, une demande ultérieure d’enregistrement d’un dessin ou modèle qui a déjà fait l’objet d’une première demande antérieure dans ou pour le même État, sous réserve que, à la date de dépôt de la demande ultérieure, la demande antérieure ait été retirée, abandonnée ou refusée sans avoir été soumise à l’inspection publique et sans laisser subsister de droits et qu’elle n’ait pas encore servi de base pour la revendication du droit de priorité. La demande antérieure ne peut plus servir alors pour la revendication du droit de priorité (article 41, paragraphe 4, du RDC).
Si le titulaire est le même ou si un transfert a eu lieu
La priorité peut être revendiquée par le demandeur ayant déposé la première demande ou par son ayant droit. Dans ce dernier cas, la première demande doit avoir été transférée avant la date de dépôt de la demande de dessin ou modèle communautaire et les pièces justificatives doivent être produites.
Le droit de priorité en tant que tel peut être transféré indépendamment de la première demande. La revendication de la priorité peut dès lors être acceptée même si les titulaires du dessin ou modèle communautaire et de la demande antérieure sont différents, à condition que la preuve du transfert du droit de priorité soit fournie. Dans ce cas, la date d’exécution du transfert doit être antérieure à la date de dépôt de la demande de dessin ou modèle communautaire.
Les filiales et sociétés associées du demandeur ne sont pas considérées comme étant la même entité juridique que le demandeur de dessin ou modèle communautaire lui-même.
Lorsque, en réponse à une objection soulevée par l’examinateur concernant une différence entre l’identité du demandeur et celle du titulaire de la demande antérieure, le demandeur explique que cette différence est due à un changement de dénomination sociale, un document établissant ce changement de dénomination sociale doit être produit dans un délai de deux mois.
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6.2.1.2 Priorité d’exposition
Principes généraux
Par l’effet du droit de priorité d’exposition, la date à laquelle le dessin ou modèle a été divulgué lors d’une exposition officiellement reconnue est considérée comme date de dépôt de la demande d’enregistrement d’un dessin ou modèle communautaire, aux fins des articles 5, 6, 7 et 22, de l’article 25, paragraphe 1, point d), et de l’article 50, paragraphe 1, du RDC (article 43 du RDC).
Le demandeur peut se prévaloir d’un droit de priorité d’exposition dans un délai de six mois à compter de la date de la première divulgation. Il doit apporter la preuve de cette divulgation (article 44, paragraphes 1 et 2, du RDC).
Une priorité d’exposition ne prolonge pas le délai de «priorité en vertu de la Convention de Paris» de six mois (article 44, paragraphe 3, du RDC).
Revendication de priorité d’exposition
À l’instar de la «priorité en vertu de la Convention de Paris» (voir le point 6.2.1 ci-dessus), la priorité d’exposition peut être revendiquée lors du dépôt d’une demande de dessin ou modèle communautaire ou ultérieurement. Si le demandeur entend revendiquer la priorité d’exposition postérieurement au dépôt de la demande, la déclaration de priorité, indiquant le nom de l’exposition et la date de la première présentation du produit dans lequel le dessin ou modèle a été incorporé ou auquel il a été appliqué, doit être produite dans un délai d’un mois à compter de la date de dépôt (article 9, paragraphe 2, du REDC).
Le demandeur dispose d’un délai de trois mois à compter de la date de dépôt ou de la réception de la déclaration de priorité pour produire une attestation délivrée au cours de l’exposition par l’autorité compétente. L’attestation doit établir que le dessin ou modèle a été présenté à l’exposition, et mentionner la date d’ouverture de l’exposition et la date de la première présentation du produit, lorsque celle-ci ne coïncide pas avec la date d’ouverture de l’exposition. Elle doit être accompagnée d’une description de la présentation effective du produit dans lequel le dessin ou modèle a été incorporé, dûment attestée par l’autorité susvisée (article 9, paragraphes 1 et 2, du REDC).
Il n’est possible de se prévaloir d’une priorité d’exposition que lorsque la demande de dessin ou modèle communautaire est déposée dans un délai de six mois à compter de la date de la première divulgation lors d’une exposition reconnue à cet effet, à savoir une exposition universelle au sens de la convention relative aux expositions internationales signée à Paris le 22 novembre 1928. De telles expositions sont rares et l’article 44 du RDC ne couvre pas la divulgation lors d’autres expositions, nationales ou internationales. Ces expositions sont mentionnées sur le site internet du Bureau International des Expositions: http://www.bie-paris.org/site/fr/.
Irrégularités
L’Office se contente de vérifier s’il est satisfait aux conditions de forme relatives à une revendication de priorité d’exposition (article 45, paragraphe 2, point d), du RDC), c’est-à-dire:
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si la date de dépôt du dessin ou modèle communautaire est comprise dans le délai de six mois suivant la date de la première divulgation du produit;
si la priorité a été revendiquée lors du dépôt de la demande ou dans un délai d’un mois à compter de la date de dépôt de la demande;
si la demande ou la déclaration de priorité ultérieure fournit des détails sur le nom de l’exposition et indique la date de la première divulgation du produit;
si l’exposition était une exposition universelle au sens de la convention sur les expositions internationales du 22 novembre 1928;
si l’attestation délivrée au cours de l’exposition par l’autorité compétente a été produite en temps utile;
si le titulaire nommé dans cette attestation et le demandeur ne font qu’un.
Lorsque l’examinateur constate des irrégularités qui peuvent être rectifiées, il invite le demandeur à y remédier dans un délai au moins équivalent au délai de trois mois accordé pour produire l’attestation susmentionnée.
Si les irrégularités ne peuvent être rectifiées ou si le demandeur n’y remédie pas dans le délai prescrit, l’Office informe le demandeur que le droit de priorité pour la demande est perdu et lui indique la possibilité de demander une décision formelle (c’est-à-dire susceptible de recours) sur cette perte (article 46, paragraphes 1 et 4, du RDC; article 40, paragraphe 2, du REDC).
Si l’irrégularité ne concerne que certains des dessins ou modèles compris dans une demande multiple, l’Office ne refuse le droit de priorité que pour les dessins ou modèles entachés d’irrégularité (article 10, paragraphe 8, du REDC).
6.2.2 Description
La demande peut contenir une description, de 100 mots au maximum, expliquant la représentation du dessin ou modèle ou du spécimen (voir le point 3.3.5 ci-dessus). La description ne doit porter que sur les caractéristiques qui figurent sur les reproductions du dessin ou modèle ou du spécimen. Elle ne comporte pas de déclarations sur la prétendue nouveauté ou le caractère individuel du dessin ou modèle, ou sur sa valeur technique (article 1er, paragraphe 2, point a), du REDC).
Cette description ne porte pas atteinte à l’étendue de la protection du dessin ou du modèle en tant que tel (article 36, paragraphe 6, du RDC).
Elle peut toutefois préciser la nature ou la finalité de certaines caractéristiques du dessin ou modèle afin de remédier à une objection éventuelle. Par exemple, lorsque différentes vues du même dessin ou modèle présentent différentes couleurs, soulevant ainsi le doute quant à leur cohérence (voir le point 5.2.5 ci-dessus), la description peut expliquer que les couleurs du dessin ou modèle changent lorsque le produit dans lequel le dessin ou modèle est destiné à être incorporé est utilisé.
Les descriptions soumises postérieurement à la date de dépôt de la demande ne sont pas acceptées.
Le registre inclut une mention indiquant qu’une description a été déposée, mais la description en tant que telle n’est pas publiée. Elle est cependant conservée au dossier administratif de la demande et est ouverte à l’inspection publique par des tiers dans les conditions fixées à l’article 74 du RDC et aux articles 74 et 75 du REDC.
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6.2.3 Indication de la classification de Locarno
6.2.3.1 Principes généraux
Le demandeur peut lui-même procéder à la classification, sur la base de la classification de Locarno, des produits indiqués dans la demande (voir le point 6.1.4 ci-dessus).
Si le demandeur fournit une classification, les produits doivent être regroupés sur le modèle de la classification de Locarno, chaque groupe étant précédé du numéro de la classe à laquelle appartient le groupe de produits et présenté dans l’ordre des classes et sous-classes de cette classification (article 3 du REDC).
Étant donné que la classification est facultative, aucune objection n’est soulevée si le demandeur ne présente pas une classification ou ne groupe ni ne trie les produits correctement, à condition qu’aucune objection ne soit soulevée concernant la désignation des produits (point 4.6 ci-dessus). Si aucune objection de ce type n’est soulevée, l’examinateur classe les produits d’office sur le modèle de la classification de Locarno.
Si le demandeur n’a indiqué que la classe, mais pas la sous-classe, l’examinateur sélectionne la sous-classe qui semble adéquate au vu du dessin ou modèle montré dans la représentation. Par exemple, lorsqu’une demande de dessin ou modèle indique emballages compris dans la classe 9 de la classification de Locarno, et que le dessin ou modèle représente une bouteille, l’examinateur sélectionne la sous- classe 09-01 (dont l’intitulé est Bouteilles, flacons, pots, bonbonnes, récipients munis d’un système à pression).
Si le demandeur a présenté une classification incorrecte, l’examinateur corrige d’office cette dernière.
Les produits qui combinent différentes pièces de manière à remplir plus d’une fonction peuvent être classés dans autant de classes et de sous-classes qu’il existe de finalités pour ces produits. Par exemple, l’indication de produit Boîtes frigorifiques avec radios et lecteurs de CD est classée dans les classes 14-01 (Appareils d’enregistrement ou de reproduction de sons ou d’images), 14-03 (Appareils de télécommunication et de télécommande sans fil, amplificateurs-radio) et 15-07 (Machines et appareils de réfrigération) de la classification de Locarno.
6.2.3.2 Demande multiple et règle de l’«unité de classe»
Si la même indication du (des) produit(s) s’applique à tous les dessins ou modèles contenus dans une demande multiple, la case correspondante «Indication du (des) produit(s) identique pour tous les dessins/modèles» devrait être cochée dans le formulaire de demande (version papier) et le champ «Indication du (des) produit(s)» devrait être laissé vide pour les dessins ou modèles suivants.
Si plusieurs dessins ou modèles autres qu’une ornementation sont combinés en une demande multiple, la demande est divisée si les produits dans lesquels les dessins ou modèles sont destinés à être incorporés ou auxquels ils sont destinés à être appliqués font partie de plusieurs classes de la classification de Locarno (article 37, paragraphe 1, du RDC; article 2, paragraphe 2, du REDC; voir point 7.2.3).
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6.2.4 Désignation du ou des créateurs
La demande peut contenir:
a) la désignation du ou des créateurs; ou b) la désignation collective de l’équipe de créateurs; ou c) une déclaration attestant que le créateur ou l’équipe de créateurs a renoncé au
droit à être désigné (article 18 du RDC; article 1er, paragraphe 2, point d), du REDC).
La désignation, la renonciation et la déclaration relative au(x) créateur(s) sont purement facultatives et ne sont pas soumises à un examen.
Si le créateur ou l’équipe de créateurs est identique pour l’ensemble des dessins ou modèles figurant dans une demande multiple, il convient de le mentionner en cochant la case «Créateur identique pour tous les dessins/modèles» dans le formulaire de demande (version papier).
Étant donné que le droit du créateur à être désigné n’est pas limité dans le temps, son nom peut aussi être inscrit au registre après l’enregistrement du dessin ou modèle (article 69, paragraphe 2, point j), du REDC).
6.2.5 Demande d’ajournement
6.2.5.1 Principes généraux
Le demandeur d’un dessin ou modèle communautaire enregistré peut demander, au moment du dépôt de sa demande, l’ajournement de la publication du dessin ou modèle communautaire enregistré pendant un délai de trente mois à compter de la date de dépôt de la demande ou, si une priorité a été revendiquée, à compter de la date de priorité (article 50, paragraphe 1, du RDC).
Si aucune irrégularité n’est constatée, le dessin ou modèle communautaire est enregistré. Les informations publiées dans la partie A.2. du Bulletin des dessins ou modèles communautaires sont le numéro de dossier, la date de dépôt, la date et le numéro d’enregistrement, le nom et l’adresse du titulaire et le nom et l’adresse professionnelle du représentant (le cas échéant). Aucune autre information telle que la représentation du dessin ou modèle ou l’indication des produits n’est publiée (article 14, paragraphe 3, du REDC).
Néanmoins, des tiers peuvent procéder à l’inspection de l’intégralité du dossier avec l’accord préalable du demandeur ou s’ils justifient d’un intérêt légitime (article 74, paragraphes 1 et 2, du RDC).
Cette disposition s’applique en particulier si l’intéressé prouve que le titulaire du dessin ou modèle communautaire enregistré dont la publication est ajournée a entrepris des démarches pour se prévaloir, à son encontre, des droits conférés par le dessin ou modèle communautaire enregistré.
Aucun certificat d’enregistrement n’est émis tant que dure l’ajournement de la publication d’un dessin ou modèle. Le titulaire du dessin ou modèle dont la publication est ajournée peut toutefois demander des extraits certifiés conformes ou non certifiés du registre, comportant la représentation du dessin ou modèle ou d’autres informations
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permettant d’identifier son apparence (article 73, point b), du REDC), pour se prévaloir de ses droits à l’encontre de tiers (article 50, paragraphe 6, du RDC).
La procédure décrite dans la présente section ne s’applique pas aux enregistrements internationaux désignant l’Union européenne (voir le point 12 ci-dessous).
6.2.5.2 Demande d’ajournement
L’ajournement de la publication doit être demandé dans la demande (article 50, paragraphe 1, du RDC). Les demandes d’ajournement ultérieures ne sont pas acceptées, même si elles sont reçues le même jour.
Le demandeur doit être conscient du fait que les dessins ou modèles peuvent être enregistrés et acceptés à la publication dans les deux jours ouvrables, voire le jour même de la réception de la demande (voir le point 2.7.1 ci-dessus). Si, par erreur, une demande ne contient pas une demande d’ajournement, la demande devrait être retirée afin d’éviter la publication. Compte tenu de la rapidité des procédures d’enregistrement et de publication, ce retrait devrait être effectué immédiatement après le dépôt. Le demandeur devrait également contacter un examinateur le jour même du retrait.
Une demande d’ajournement de la publication peut ne concerner que certains dessins ou modèles d’une demande multiple. Dans pareil cas, les dessins ou modèles dont la publication doit être ajournée doivent être clairement identifiés en cochant la case «Demande d’ajournement de la publication» du formulaire de demande (version papier) ou la case «Publication to be deferred (à ajourner)» (dépôt électronique) pour chaque dessin ou modèle concerné.
Le demandeur doit payer une taxe d’ajournement de la publication en sus de la taxe d’enregistrement (voir la rubrique 8 ci-dessous). Le paiement de la taxe de publication est facultatif au stade du dépôt.
6.2.5.3 Demande de publication
Lors du dépôt de la demande, ou au moins trois mois avant l’expiration de la période d’ajournement de trente mois (soit au plus tard le dernier jour du vingt-septième mois à compter de la date de dépôt ou, le cas échéant, de la date de priorité), le demandeur doit satisfaire aux conditions requises pour la publication (article 15 du REDC), énoncées ci-après:
payer la taxe de publication pour le ou les dessins ou modèles dont la publication doit être ajournée (voir le point 8);
déposer une représentation du dessin ou modèle conformément à l’article 4 du REDC (voir le point 5), si une représentation du dessin ou modèle a été remplacée par un spécimen conformément à l’article 5 du REDC (voir le point 3.3.5 plus haut);
dans le cas d’une demande multiple, indiquer clairement les dessins ou modèles qui, parmi ceux pour lesquels l’ajournement est demandé, doivent faire l’objet de la publication ou de la renonciation ou, le cas échéant, pour lesquels l’ajournement doit être poursuivi.
Si le titulaire du ou des dessins ou modèles communautaires informe l’Office, à tout moment avant l’expiration des vingt-sept mois, de son souhait de voir son ou ses
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dessins ou modèles publiés («demande de publication anticipée»), il doit spécifier si la publication devrait avoir lieu dès que les conditions techniques le permettent (article 16, paragraphe 1, du REDC) ou à l’expiration de la période d’ajournement de trente mois. En l’absence de demande spécifique du demandeur, les dessins ou modèles sont publiés à l’expiration de la période d’ajournement.
Si le titulaire, en dépit d’une demande de publication antérieure, décide finalement de ne pas faire publier le dessin ou modèle, il doit présenter une demande écrite de renonciation bien avant la date prévue de publication du dessin ou modèle. Les taxes de publication acquittées ne seront pas remboursées.
6.2.5.4 Respect des délais
Les titulaires de dessins ou modèles communautaires devraient avoir conscience du fait que l’Office ne leur adresse pas de rappel pour leur signaler l’expiration de la période de vingt-sept mois avant laquelle il leur incombe de veiller à ce que les conditions requises pour la publication soient remplies. Il incombe dès lors au demandeur (ou à son représentant, le cas échéant) de s’assurer du respect du délai fixé.
Il convient d’accorder une attention particulière aux dossiers pour lesquels une date de priorité a été revendiquée dans la demande ou ultérieurement car cette date de priorité détermine le délai applicable à l’ajournement. En outre, les délais applicables à l’ajournement peuvent différer selon le dessin ou modèle concerné d’une demande multiple, lorsque des dates de priorité différentes sont revendiquées pour chaque dessin ou modèle.
Si le délai prescrit pour satisfaire aux conditions requises pour la publication n’est pas respecté, résultant en une perte de droits, le titulaire du ou des dessins ou modèles communautaires peut présenter une requête en restitutio in integrum [article 67 du RDC; voir aussi les Directives relatives à l’examen pratiqué à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles), Partie A, Section 8, Restitutio in integrum].
6.2.5.5 Irrégularités
Irrégularités au stade de l’examen
Si les informations contenues dans la demande sont contradictoires (par exemple la taxe d’ajournement a été payée, mais le demandeur n’a pas coché la case «Demande d’ajournement de la publication») ou incohérentes (par exemple le montant des taxes d’ajournement payées pour une demande multiple ne correspond pas au nombre de dessins ou modèles dont la publication doit être ajournée), l’examinateur adresse au demandeur une notification d’irrégularité, l’invitant à confirmer la demande d’ajournement et, le cas échéant, le ou les dessins ou modèles d’une demande multiple concernés par cette demande d’ajournement, et/ou à payer les taxes correspondantes.
Irrégularités concernant les conditions requises pour la publication
Si, à l’expiration de la période de vingt-sept mois à compter de la date de dépôt ou de la date de priorité de l’enregistrement du dessin ou modèle communautaire, le titulaire
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ne respecte pas les «conditions requises pour la publication», l’examinateur lui adresse une notification d’irrégularité l’invitant à remédier aux irrégularités dans un délai de deux mois (article 15, paragraphe 2, du REDC).
Si une irrégularité concerne le paiement des taxes de publication, le demandeur est invité à s’acquitter du montant exact de ces taxes en même temps que des taxes pour paiement tardif (soit 30 EUR par dessin ou modèle et, dans le cas de demandes multiples, 25 % des taxes de publication pour chaque dessin ou modèle supplémentaire; article 15, paragraphe 4, du REDC; articles 8 et 10 de l’annexe du RTDC).
Les demandeurs devraient être conscients du fait que le délai imparti par l’examinateur ne peut en aucun cas expirer postérieurement à la période d’ajournement de trente mois (article 15, paragraphe 2, du REDC).
Si le titulaire ne remédie pas aux irrégularités constatées dans le délai prescrit, le ou les dessins ou modèles communautaires enregistrés pour lequel ou lesquels l’ajournement est demandé sont réputés ne pas avoir eu, dès l’origine, les effets mentionnés dans le RDC (article 15, paragraphe 3, point a), du REDC).
L’examinateur en informe le titulaire après l’expiration de la période d’ajournement de trente mois.
Dans le cas d’une «demande de publication anticipée» (voir le point 6.2.5.3), le non-respect des conditions requises pour la publication a pour effet que la demande est réputée ne pas avoir été déposée (article 15, paragraphe 3, point b), du REDC). Toute taxe de publication acquittée est alors remboursée. Le titulaire peut cependant déposer une autre demande de publication s’il dispose encore de plus de trois mois avant que n’expire le délai de vingt-sept mois.
Lorsque l’irrégularité concerne un paiement insuffisant pour couvrir l’ensemble des taxes de publication dues pour tous les dessins ou modèles d’une demande multiple pour lesquels l’ajournement est demandé, ainsi que la taxe pour paiement tardif, tous les dessins ou modèles pour lesquels les taxes n’ont pas été payées sont réputés ne pas avoir eu, dès l’origine, les effets mentionnés dans le RDC. À moins qu'il n'apparaisse clairement quels dessins ou modèles le montant payé est destiné à couvrir, l’examinateur prend en considération les dessins ou modèles, dans l’ordre numérique dans lequel ils sont représentés (article 15, paragraphe 4, du REDC).
Publication après ajournement
En l’absence d’irrégularités ou s’il est remédié aux irrégularités en temps utile, l’enregistrement est publié dans la partie A.1. du Bulletin des dessins ou modèles communautaires.
Le titulaire peut demander que seuls certains dessins ou modèles d’une demande multiple soient publiés.
La publication contient une mention du fait que la demande contenait une demande d’ajournement de la publication et, le cas échéant, qu’un spécimen a été déposé (article 16 du REDC).
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7 Demandes multiples
7.1 Principes généraux
Une demande multiple est une demande d’enregistrement de plusieurs dessins ou modèles formulée dans une seule et même demande. Chacun des dessins ou modèles compris dans une demande multiple ou un enregistrement multiple est examiné et traité indépendamment des autres. Il peut notamment, indépendamment des autres, être mis en œuvre, faire l’objet de licences, de droits réels, d’une exécution forcée, être compris dans une procédure d’insolvabilité, faire l’objet d’une renonciation, d’un renouvellement, d’une cession, d’un ajournement de la publication ou être déclaré nul (article 37, paragraphe 4, du RDC).
Les demandes multiples font l’objet de taxes d’enregistrement et de publication spécifiques, qui diminuent en fonction du nombre de dessins ou modèles qu’elles contiennent (voir le point 8 ci-dessous).
7.2 Conditions de forme applicables aux demandes multiples
7.2.1 Conditions générales
Tous les dessins ou modèles contenus dans une demande multiple doivent avoir le ou les mêmes titulaires et représentants (le cas échéant).
Le nombre de dessins ou modèles que peut contenir une demande multiple est illimité. Les dessins ou modèles ne doivent pas obligatoirement être liés les uns aux autres ni être autrement similaires en ce qui concerne leur apparence, leur nature ou leur finalité.
Le nombre de dessins ou modèles ne doit pas être confondu avec le «nombre de vues» représentant les dessins ou modèles (voir le point 5.1 ci-dessus).
Le demandeur numérote les dessins ou modèles compris dans une demande multiple, dans l’ordre et en chiffres arabes (article 2, paragraphe 4, du REDC).
Pour chaque dessin ou modèle compris dans une demande multiple, le demandeur fournit une représentation adéquate du dessin ou modèle et l’indication du produit dans lequel le dessin ou modèle est destiné à être incorporé ou auquel il est destiné à être appliqué (article 2, paragraphe 3, du REDC, voir le point 6.1.4 ci-dessus).
7.2.2 Examen distinct
Chacun des dessins ou modèles compris dans une demande multiple est examiné indépendamment des autres. S’il n’est pas remédié, dans le délai imparti, à une irrégularité concernant certains des dessins ou modèles compris dans une demande multiple, l’Office ne rejette la demande que pour les dessins ou modèles entachés d’irrégularité (article 10, paragraphe 8, du REDC).
Les décisions relatives à l’enregistrement ou au rejet des dessins ou modèles compris dans une demande multiple sont toutes prises au même moment.
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Même si certains des dessins ou modèles compris dans une demande multiple satisfont aux conditions tant de fond que de forme, ils ne sont pas enregistrés tant qu’il n’a pas été remédié aux irrégularités affectant les autres dessins ou modèles ou tant que ces derniers n’ont pas été rejetés sur décision d’un examinateur.
7.2.3 La règle de l’«unité de classe»
7.2.3.1 Principe
En règle générale, tous les produits indiqués pour les dessins ou modèles compris dans une demande multiple doivent être classés dans une seule des 32 classes de la classification de Locarno.
À titre d’exception, l’indication Ornementation ou Produit(s) X (Ornementation pour -) comprise dans la classe 32-00 peut être combinée avec des indications de produits appartenant à une autre classe de la classification de Locarno.
7.2.3.2 Produits autres qu’une ornementation
Les produits dans lesquels un dessin ou modèle d’une demande multiple est destiné à être incorporé ou auquel il est destiné à être appliqué peuvent différer de ceux dans lesquels les autres dessins ou modèles de cette même demande multiple sont destinés à être incorporés ou auxquels ils sont destinés à être appliqués.
Cependant, sauf lorsqu’il s’agit d’ornementations (voir le point 7.2.3.3 ci-dessous), les produits dans lesquels les dessins ou modèles sont destinés à être incorporés ou auxquels ils sont destinés à être appliqués doivent tous faire partie de la même classe de la classification de Locarno (article 37, paragraphe 1, du RDC; article 2, paragraphe 2, du REDC). Cette règle de l’«unité de classe» est réputée observée même si les produits appartiennent à différentes sous-classes d’une même classe de la classification de Locarno.
Par exemple, une demande multiple est acceptable si elle comprend un dessin ou modèle accompagné de l’indication Véhicules automobiles (classe 12, sous-classe 08) et un dessin ou modèle accompagné de l’indication Intérieurs de véhicules (classe 12, sous-classe 16), ou si les deux dessins ou modèles indiquent ces deux termes. Il s’agit d’un exemple de deux dessins ou modèles compris dans différentes sous-classes, mais relevant de la même classe, à savoir la classe 12 de la classification de Locarno.
Une objection serait toutefois soulevée si, dans l’exemple susmentionné, les produits indiqués étaient Véhicules automobiles (classe 12, sous-classe 08) et Feux de véhicules, étant donné que le deuxième terme appartient à la classe 26, sous-classe 06, de la classification de Locarno. L’examinateur demanderait ensuite que soit divisée la demande multiple, ainsi qu’il est expliqué au point 7.2.3.4 ci- dessous.
Une demande multiple ne peut être divisée à moins qu’une irrégularité n’affecte la règle de l’«unité de classe» (article 37, paragraphe 4, du RDC).
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7.2.3.3 Ornementation
L’ornementation est un élément décoratif qui peut être appliqué à la surface d’une variété de produits sans en modifier les contours. Il peut s’agir d’un motif bidimensionnel ou d’un moulage ou d’une sculpture tridimensionnel(le), dans lequel ou laquelle le dessin ou modèle se détache d’une surface plate.
Bien que l’ornementation soit, en soi, un produit au sens de la classification de Locarno (classe 32), elle a pour finalité première de constituer l’une des caractéristiques d’autres produits.
Une demande multiple peut, dès lors, combiner des dessins ou modèles pour une ornementation avec des dessins ou modèles pour des produits tels que ceux auxquels cette ornementation est destinée à être appliquée, à condition que tous les produits appartiennent à la même classe de la classification de Locarno.
Pour certains dessins ou modèles, l’indication Ornementation ou Produit(s) X (Ornementation pour -) comprise dans la classe 32 de la classification de Locarno est neutre et, par conséquent, n’est pas prise en compte, aux fins de l’examen du respect de la règle de l’«unité de classe», par l’indication des produits dans lesquels les autres dessins ou modèles sont destinés à être incorporés ou auxquels ils sont destinés à être appliqués.
Le même raisonnement s’applique aux indications des produits suivants de la classe 32 de la classification de Locarno: symboles graphiques, logos et motifs de surface.
Par exemple, une demande multiple est acceptable si elle combine des dessins ou modèles pour des produits dont l’indication est Ornementation ou Porcelaine (Ornementation pour -) de la classe 32 avec des dessins ou modèles représentant des pièces d’un service à thé pour des produits dont l’indication est Porcelaine de la classe 7, sous-classe 01. En revanche, si l’indication Linge de table était choisie pour désigner un produit dans lequel l’un de ces dessins ou modèles est destiné à être incorporé ou auquel il est destiné à être appliqué, une objection serait soulevée car ce produit appartient à la classe 6, sous-classe 13, de la classification de Locarno, c’est-à- dire à une classe différente.
Si le demandeur a désigné le produit comme étant une Ornementation ou un/des Produit(s) X (Ornementation pour -), l’examinateur vérifie de prime abord s’il s’agit effectivement d’une ornementation en examinant le dessin ou modèle en question. S’il estime qu’il s’agit d’une ornementation, le produit est classé dans la classe 32.
S’il estime qu’il ne s’agit pas d’une ornementation, il adresse au demandeur une notification d’irrégularité au motif d’une absence manifeste de correspondance entre les produits désignés et le dessin ou modèle concerné (voir le point 6.1.6.3 ci-dessus).
Lorsque la représentation du dessin ou modèle ne se limite pas à l’ornementation en tant que telle mais présente également le produit auquel cette ornementation est appliquée, sans que les contours dudit produit soient revendiqués, ce produit spécifique doit être ajouté à la liste des produits et la classification doit être modifiée en conséquence (voir le point 6.1.4.4).
Cette situation peut donner lieu à une objection lorsqu’une demande multiple combine plusieurs de ces dessins ou modèles appliqués à des produits qui appartiennent à différentes classes de la classification de Locarno.
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7.2.3.4 Irrégularités
Par exemple, supposons que trois dessins ou modèles représentant des véhicules automobiles sont combinés en une demande multiple et que l’indication des produits pour chaque dessin ou modèle est Voitures (sous-classe 12-08) et Modèles réduits (sous-classe 21-01).
L’examinateur soulève une objection et invite le demandeur à:
supprimer une partie des indications des produits afin que les produits restants puissent être classés dans une seule classe de la classification de Locarno; ou
diviser la demande en deux demandes multiples pour chacune des classes de la classification de Locarno concernées, et acquitter les taxes supplémentaires correspondantes; ou
diviser la demande en trois demandes uniques pour chacun des dessins ou modèles concernés, et acquitter les taxes supplémentaires correspondantes.
Dans certains cas, il n’est pas possible de supprimer des indications de produits, par exemple, lorsqu’un produit donné doit être classé dans deux classes, voire davantage, en raison de la pluralité des finalités de ce produit (voir le point 6.2.3.1).
Le demandeur est invité à se conformer à la requête de l’examinateur dans un délai de deux mois et à acquitter le montant total des taxes dues pour toutes les demandes résultant de la division de la demande multiple ou à supprimer certains produits afin de respecter la règle de l’«unité de classe».
Le montant total dû est calculé par l’examinateur et notifié au demandeur dans le rapport d’examen. L’examinateur propose la solution économiquement la plus avantageuse entre la division de la demande multiple en autant de demandes qu’il existe de classes de la classification de Locarno concernées et la division de la demande multiple en autant de demandes qu’il existe de dessins ou modèles concernés.
Si le demandeur ne remédie pas aux irrégularités constatées dans le délai imparti, la demande multiple est rejetée dans son intégralité.
8 Paiement des taxes
8.1 Principes généraux
Les demandes de dessins ou modèles communautaires sont soumises à diverses taxes, que le demandeur doit payer au moment du dépôt (article 6, paragraphe 1, du REDC), y compris la taxe d’enregistrement et la taxe de publication ou, lorsque la demande inclut une demande d’ajournement de la publication, la taxe d’ajournement.
Dans le cas de demandes multiples, des taxes supplémentaires d’enregistrement, de publication ou d’ajournement doivent être acquittées pour chaque dessin ou modèle supplémentaire. Si le paiement n’a pas été effectué au moment du dépôt de la demande, des taxes pour paiement tardif doivent également être acquittées.
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En cas d’ajournement, le demandeur peut, lors du dépôt, choisir de payer non seulement les taxes d’enregistrement et d’ajournement, mais également la taxe de publication.
S’agissant des taxes relatives aux demandes internationales désignant l’Union européenne, voir point 12.1.2.3. ci-dessous.
8.2 Devise et montants
Toutes les taxes doivent être acquittées en euros. Les payements effectués dans d’autres devises ne sont pas acceptés.
Les taxes à acquitter pour le dépôt d’une demande sont les suivantes:
Taxes d’enregistrement
Dessin ou modèle unique ou premier dessin ou modèle d’une demande multiple 230 EUR
Du deuxième au dixième dessin ou modèle d’une demande multiple 115 EUR par dessin oumodèle
À partir du onzième dessin ou modèle d’une demande multiple 50 EUR par dessin oumodèle
Taxes de publication
Dessin ou modèle unique ou premier dessin ou modèle d’une demande multiple à publier 120 EUR
Du deuxième au dixième dessin ou modèle d’une demande multiple à publier 60 EUR par dessin oumodèle
À partir du onzième dessin ou modèle d’une demande multiple à publier 30 EUR par dessin oumodèle
Taxes d’ajournement (en cas de demande d’ajournement de la publication)
Dessin ou modèle unique ou premier dessin ou modèle d’une demande multiple dont la publication doit être ajournée 40 EUR
Du deuxième au dixième dessin ou modèle d’une demande multiple dont la publication doit être ajournée
20 EUR par dessin ou modèle
À partir du onzième dessin ou modèle d’une demande multiple dont la publication doit être ajournée
10 EUR par dessin ou modèle
Exemple de taxes dues pour le dépôt d’une demande multiple pour laquelle seule la publication de certaines dessins ou modèles doit être ajournée
Numéro de dessin ou modèle Ajournement
Taxe d’enregistrement Taxe de publication Taxe d’ajournement
xxxxxxxx-0001 Oui 230 EUR - 40 EUR
xxxxxxxx-0002 Oui 115 EUR - 20 EUR
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xxxxxxxx-0003 Non 115 EUR 120 EUR -
xxxxxxxx-0004 Non 115 EUR 60 EUR -
xxxxxxxx-0005 Non 115 EUR 60 EUR -
Si, après l’enregistrement, la publication est demandée pour le dessin ou modèle xxxxxxxx-0001, celui-ci sera en réalité le quatrième dessin ou modèle à être publié et la taxe de publication sera de 60 EUR.
8.3 Moyens de paiement, détails du paiement et remboursement
La question des moyens de paiement, des données devant accompagner le paiement et des conditions de remboursement des taxes acquittées est expliquée dans les Directives relatives à l’examen pratiqué à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) sur les marques communautaires, Partie A, Dispositions générales, Section 3, Paiement des taxes, frais et tarifs.
Les taxes sont remboursées lorsque la demande est retirée ou refusée sans qu’une date de dépôt n’ait été attribuée (la demande «n’est pas traitée en tant que demande de dessin ou modèle communautaire»).
L’Office rembourse également les montants acquittés qui sont insuffisants pour couvrir les taxes d’enregistrement et de publication (ou d’ajournement) du dessin ou modèle ou d’au moins un dessin ou modèle d’une demande multiple.
9 Retrait et rectifications
9.1 Introduction
Le demandeur peut, à tout moment durant la phase d’examen, retirer une demande de dessin ou modèle communautaire enregistré ou, dans le cas d’une demande multiple, certains des dessins ou modèles compris dans la demande multiple. Les rectifications ne sont autorisées que dans certaines situations spécifiques.
Toute rectification ou modification portée au registre et/ou dans l’enregistrement publié, c’est-à-dire après l’enregistrement du dessin ou modèle par l’examinateur, doit être traitée conformément aux dispositions prévues au point 11 ci-dessous.
9.2 Retrait de la demande
Avant l’enregistrement, le demandeur peut, à tout moment, retirer une demande de dessin ou modèle communautaire ou, dans le cas d’une demande multiple, certains des dessins ou modèles compris dans la demande multiple (article 12, paragraphe 1, du REDC). L’examinateur confirme le retrait au demandeur.
Les demandes de retrait doivent être présentées par écrit et inclure:
le numéro de dossier de la demande de dessin ou modèle communautaire enregistré ou, si la demande de retrait est présentée avant qu’un numéro de dossier n’ait été attribué, toute information permettant d’identifier la demande, telle que le numéro de référence du demandeur/représentant et/ou le numéro de
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dossier provisoire mentionné dans l’accusé de réception automatique pour les demandes déposées via le système de dépôt électronique;
dans le cas d’une demande multiple, une indication du ou des dessins ou modèles que le demandeur souhaite retirer, si seuls certains d’entre eux sont concernés par la demande de retrait;
le nom et l’adresse du demandeur et/ou, le cas échéant, le nom et l’adresse du représentant.
La «date de retrait» est la date à laquelle l’Office reçoit la demande de retrait.
Les taxes ne sont pas remboursées lorsqu’une date de dépôt a été attribuée, à moins que le montant des taxes acquittées par le demandeur ne suffise pas à couvrir les taxes afférentes à l’enregistrement et à la publication (ou, le cas échéant, à l’ajournement) pour le dessin ou modèle, ou pour au moins un dessin ou modèle dans le cas d’une demande multiple.
Les demandes de retrait reçues par l’Office à la date d’enregistrement du dessin ou modèle ou à une date postérieure sont traitées en tant que demandes de renonciation.
Les demandes de retrait reçues par l’Office à la date de dépôt de la demande de dessin ou modèle sont acceptées même si le dessin ou modèle est enregistré le jour même.
9.3 Rectifications de la demande
9.3.1 Éléments susceptibles de rectification
Seuls les nom et adresse du demandeur ou du représentant, les fautes d’orthographe ou de copie ainsi que les erreurs manifestes peuvent être rectifiés, à la requête du demandeur (article 12, paragraphe 2, du REDC).
Outre les nom et adresse du demandeur ou du représentant, les éléments suivants peuvent être rectifiés, à la requête du demandeur, s’ils contiennent des erreurs d’orthographe ou de copie ou des erreurs manifestes:
la date de dépôt, lorsque la demande a été déposée au service central de la propriété industrielle d’un État membre ou, pour les pays du Benelux, à l’Office Benelux de la Propriété intellectuelle (OBPI), sur notification de l’office concerné qu’une erreur a été faite concernant la date de dépôt;
le nom du créateur ou de l’équipe de créateurs; la deuxième langue; une indication du ou des produits; la classification de Locarno du ou des produits concernés par la demande; le pays, la date et le numéro de la demande antérieure en cas de revendication
d’une priorité en vertu de la Convention de Paris; le nom, le lieu et la date de la première exposition du dessin ou modèle en cas
de revendication d’une priorité d’exposition; la description.
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9.3.2 Éléments non susceptibles de rectification
En principe, la représentation du ou des dessins ou modèles ne peut être altérée après le dépôt de la demande (article 12, paragraphe 2, du REDC). Le dépôt de vues supplémentaires ou le retrait de certaines vues à un stade ultérieur n’est pas accepté, à moins qu’il ne soit expressément demandé ou proposé par l’Office (voir les points 5.2 et 5.5 ci-dessus).
Lorsqu’une demande de rectification altère la représentation du ou des dessins ou modèles, le demandeur est informé que sa demande est inacceptable. Il doit alors décider s’il souhaite poursuivre la procédure d’enregistrement ou déposer une nouvelle demande pour laquelle il devra s’acquitter des taxes dues.
9.3.3 Procédure de dépôt d’une requête en rectification
Une requête en rectification de la demande contient:
a) le numéro de dossier de la demande; b) les nom et adresse du demandeur; c) si le demandeur a désigné un représentant, les nom et adresse professionnelle
de ce dernier; d) l’indication de l’élément à rectifier dans la demande et de l’élément tel qu’il doit
figurer après rectification.
Le demandeur peut ne présenter qu’une seule requête, lorsqu’il requiert la rectification d’un même élément dans plusieurs demandes qu’il a déposées.
Si toutes les conditions sont remplies, l’examinateur envoie au demandeur une confirmation de la rectification.
Les rectifications et modifications après enregistrement sont traitées par le service de soutien aux opérations (voir le point 11 ci-dessous).
9.3.4 Irrégularités
Lorsqu’une requête en rectification ne satisfait pas aux conditions susvisées et qu’il peut être remédié à l’irrégularité, l’examinateur invite le demandeur à remédier à l’irrégularité dans un délai de deux mois. S’il n’est pas remédié à l’irrégularité avant l’expiration du délai imparti, l’examinateur rejette la requête en rectification.
Les requêtes en rectification qui auraient pour effet d’altérer la représentation du ou des dessins ou modèles sont irrémédiablement refusées.
Les descriptions déposées après la date de dépôt de la demande ne sont pas acceptées (voir le point 6.2.2 ci-dessus). Les requêtes en rectification impliquant le dépôt d’une description après la date de dépôt de la demande sont, dès lors, rejetées.
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10 Enregistrement, publication et certificats
10.1 Enregistrement
Au terme de la procédure d’examen des motifs absolus de refus et des conditions de forme, l’examinateur s’assure qu’il est en possession de tous les éléments mentionnés à l’article 14 du REDC (les éléments qui doivent obligatoirement fournis par le demandeur dans le dépôt sont écrits en gras):
a) la date du dépôt de la demande; b) le numéro de dossier attribué à la demande et le numéro de dossier attribué à
chaque dessin ou modèle compris dans une demande multiple; c) la date de publication de l’enregistrement; d) le nom, l’adresse et la nationalité du demandeur, ainsi que l’État sur le
territoire duquel il a son domicile, son siège ou un établissement; e) le nom et l’adresse professionnelle du représentant, dans la mesure où il ne
s’agit pas d’un employé désigné en tant que représentant conformément à l’article 77, paragraphe 3, premier alinéa, du RDC; s’il y a plusieurs représentants, seuls sont inscrits les nom et adresse professionnelle du premier représentant cité, le nom étant suivi des mots «et al»; en cas de groupement de représentants, seuls sont inscrits les nom et adresse du groupement;
f) la représentation du dessin ou modèle; g) la désignation des produits, précédés du numéro des classes et sous-classes
correspondantes de la classification de Locarno et regroupés suivant celles-ci; h) des indications relatives à la revendication de priorité conformément à l’article 42
du RDC; i) des indications relatives à la revendication de la priorité d’exposition
conformément à l’article 44 du RDC; j) la désignation du créateur ou de l’équipe de créateurs ou une déclaration
attestant que le créateur ou l’équipe de créateurs a renoncé au droit à être désigné;
k) la langue dans laquelle la demande a été déposée et la deuxième langue indiquée par le demandeur conformément à l’article 98, paragraphe 2, du RDC;
l) la date d’inscription du dessin ou modèle au registre et le numéro d’enregistrement;
m) la mention de toute demande d’ajournement de la publication conformément à l’article 50, paragraphe 3, du RDC, précisant la date d’expiration de la période d’ajournement;
n) la mention du dépôt d’un spécimen en vertu de l’article 5, point a), du REDC; o) la mention du dépôt d’une description en vertu de l’article 1er, paragraphe 2,
point a), du REDC; p) la mention de l’inclusion d’un élément verbal dans la représentation du dessin ou
modèle.
Dès que toutes les indications reprises dans la liste récapitulative ont été versées au dossier, l’examinateur vérifie si toutes les taxes dues ont été acquittées.
Si aucune irrégularité n’est constatée, le dessin ou modèle communautaire est enregistré.
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10.2 Publication
10.2.1 Principes généraux
Tous les dessins ou modèles communautaires enregistrés sont publiés au Bulletin des dessins ou modèles communautaires, qui est publié en format électronique uniquement, sur le site internet de l’OHMI.
Toutefois, les enregistrements internationaux désignant l’Union européenne sont publiés par l’OMPI (Bulletin Hague Express) (voir le point 12 ci-dessous).
À moins qu’une demande ne contienne une demande d’ajournement de la publication, la publication a lieu immédiatement après l’enregistrement; la publication est quotidienne.
Lorsqu’une demande contient une demande d’ajournement de la publication, la publication se fait dans la partie A.2. du Bulletin et se limite aux informations suivantes: le numéro du dessin ou modèle, la date de dépôt, la date d’enregistrement et les noms du demandeur et du représentant, le cas échéant.
Lorsqu’une demande comprend une demande d’ajournement de la publication pour certains dessins ou modèles seulement d’une demande multiple, seuls les dessins ou modèles pour lesquels l’ajournement n’a pas été demandé sont publiés dans leur intégralité.
10.2.2 Format et structure de la publication
Le Bulletin des dessins ou modèles communautaires est disponible sous deux formats:
HTML; PDF.
Ces deux formats sont tous deux valides à des fins de publication et de recherche.
Le Bulletin des dessins ou modèles communautaires est composé des quatre parties suivantes:
La partie A. se rapporte aux enregistrements de dessins ou modèles communautaires et comporte trois sections:
o Partie A.1.: enregistrements des dessins ou modèles communautaires conformément aux articles 48 et 50 du RDC.
o Partie A.2.: enregistrements des dessins ou modèles communautaires comprenant une demande d’ajournement et leur première publication conformément à l’article 50 du RDC et à l’article 14, paragraphe 3, du REDC.
o Partie A.3.: erreurs et fautes dans la partie A. (erreurs et fautes dans les enregistrements). A.3.1.: erreurs absolues; A.3.2.: erreurs relatives.
La partie B. se rapporte aux inscriptions portées au registre après l’enregistrement, telles que les modifications, les transferts, les licences, etc. et comporte huit sections:
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o Partie B.1.: erreurs et fautes. o Partie B.2.: transferts. o Partie B.3.: procédures de nullité et actions en revendication. o Partie B.4.: renonciations et dessins ou modèles sans effet. o Partie B.5.: licences. o Partie B.6.: droits réels. o Partie B.7.: procédures d’insolvabilité. o Partie B.8.: exécution forcée (saisies).
La partie C. se rapporte aux renouvellements ainsi qu’aux informations relatives à l’expiration des enregistrements et comporte trois sections:
o Partie C.1.: renouvellements conformément à l’article 13, paragraphe 4, du RDC et à l’article 69, paragraphe 3, point m), du REDC.
o Partie C.2.: enregistrements parvenus à expiration, conformément aux articles 22, paragraphe 5, et 69, paragraphe 3, point n), du REDC.
o Partie C.3.: rectification des erreurs et des fautes commises au niveau des renouvellements et des enregistrements parvenus à expiration.
La partie D. concerne la restitutio in integrum (article 67 du RDC) et comporte deux sections.
o Partie D.1.: restitutio in integrum. o Partie D.2.: rectification d’erreurs ou de fautes dans la partie D.
Dans le Bulletin, chaque indication est précédée du code INID correspondant, conformément à la norme ST.80 de l’OMPI. Toute information est publiée, s’il y a lieu, dans toutes les langues officielles de l’Union européenne (article 70, paragraphe 4, du REDC).
Les codes INID utilisés pour les indications publiées par exemple dans la partie A.1. du Bulletin sont les suivants:
21 Numéro de dossier; 25 Langue de la demande et deuxième langue; 22 Date de dépôt de la demande; 15 Date d’inscription au registre; 45 Date de publication; 11 Numéro d’enregistrement; 46 Date d’expiration du délai d’ajournement 72 Nom du ou des créateurs ou de l’équipe de créateurs 73 Nom et adresse du titulaire; 74 Nom et adresse professionnelle du représentant; 51 Classification de Locarno; 54 Désignation du ou des produits; 30 Pays, date et numéro de la demande dont la priorité est revendiquée (priorité en
vertu de la Convention de Paris); 23 Nom, lieu et date à laquelle le dessin ou modèle a été exposé pour la première fois (priorité d’exposition); 29 Indication selon laquelle un spécimen a été déposé ; 57 Indication selon laquelle une description a été déposée ; 55 Représentation du dessin ou modèle.
La publication se fait dans toutes les langues de l’UE qui sont officielles à la date de la demande.
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10.3 Certificat d’enregistrement
Un certificat d’enregistrement est délivré après la publication complète du dessin ou modèle communautaire enregistré (publication dans la partie A.1.).
Toutefois, l’Office ne délivre pas de certificat d’enregistrement pour les enregistrements internationaux désignant l’Union européenne (voir le point 12 ci-dessous).
Depuis le 15 novembre 2010, seuls des certificats d’enregistrement électroniques sont délivrés. Les titulaires d’enregistrements de dessins ou modèles communautaires sont invités à télécharger le certificat à compter du jour suivant la publication, à l’aide de l’outil « eSearch plus » disponible sur le site Internet de l’Office. L’Office ne délivre aucune copie papier du certificat d’enregistrement. Cependant, des copies certifiées ou non certifiées des certificats d’enregistrement peuvent être délivrées sur demande.
Le certificat contient toutes les informations inscrites au registre des dessins ou modèles communautaires à la date de l’enregistrement. Aucun nouveau certificat n’est délivré à la suite de modifications apportées au registre après la date d’enregistrement. Néanmoins, un extrait du registre, reflétant le statut administratif actuel du ou des dessins ou modèles, peut être délivré sur demande.
Un certificat rectifié est délivré après publication d’une erreur relative constatée dans un enregistrement de dessin ou modèle (partie A.3.2.) ou après publication d’une erreur relative constatée dans une inscription (partie B.1.2.). Une erreur relative est une erreur imputable à l’Office qui modifie l’étendue de la protection de l’enregistrement.
11 Rectifications et modifications au registre et dans la publication d’enregistrements de dessins ou modèles communautaires
11.1 Rectifications
11.1.1 Principes généraux
Seuls les nom et adresse du demandeur, les fautes d’orthographe ou de copie ainsi que les erreurs manifestes peuvent être rectifiés, à la requête du demandeur, à condition que cette rectification n’altère pas la représentation du dessin ou modèle (article 12, paragraphe 2, du REDC) (décision du 3 décembre 2013, dans l’affaire R 1332/2013-3 – «Adapters», paragraphes 14 et ss.). Aucune taxe n’est à acquitter pour de telles requêtes.
Si l’enregistrement du dessin ou modèle ou l’enregistrement publié comporte une erreur ou une faute imputable à l’Office, ce dernier rectifie, d’office ou sur la requête du titulaire, l’erreur ou la faute constatée (article 20 du REDC). Aucune taxe n’est à acquitter pour de telles requêtes.
Une requête en rectification d’erreurs ou de fautes imputables à l’Office ne peut porter que sur le contenu de l’enregistrement publié (articles 49, 73 et 99, du RDC et articles 14 et 70 du REDC) et sur les inscriptions portées au registre (articles 48, 72 et 99 du RDC et articles 13 et 69 du REDC).
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À moins que l’Office ait lui-même commis une erreur lors de la publication de la représentation du ou des dessins ou modèles (par exemple en déformant ou en tronquant la représentation), le titulaire n’est pas autorisé à demander la rectification de son dessin ou modèle communautaire si cette rectification a pour effet d’altérer la représentation de ce dernier (article 12, paragraphe 2, du REDC) (décision du 3 décembre 2013, dans l’affaire R 1332/2013-3 – «Adapters», paragraphes 14 et ss.).
Les rectifications sont apportées dès que l’erreur ou la faute est constatée, y compris, s’il y a lieu, des années après l’inscription initiale au registre.
11.1.2 Requête en rectification
Conformément aux articles 12 et 19 du REDC, les requêtes en correction d’erreurs ou de fautes au registre et dans l’enregistrement publié doivent contenir:
a) le numéro d’enregistrement du dessin ou modèle communautaire enregistré; b) le nom et l’adresse du titulaire tels qu’ils sont enregistrés ou le nom du titulaire et
le numéro d’identification attribué par l’Office au titulaire; c) lorsque le titulaire a désigné un représentant, le nom et l’adresse professionnelle
du représentant ou le nom du représentant et le numéro d’identification attribué par l’Office au représentant;
d) l’indication de l’inscription au registre et/ou du contenu de l’enregistrement publié à rectifier dans la demande et de l’élément tel qu’il doit figurer après rectification.
Une requête unique peut être présentée pour la rectification d’erreurs ou de fautes se rapportant à plusieurs enregistrements du même titulaire (article 19, paragraphe 4, et article 20 du REDC).
Si les conditions requises pour l’apport de telles corrections ne sont pas remplies, l’Office informe le demandeur des irrégularités constatées. S’il n’est pas remédié auxdites irrégularités dans le délai imparti par l’Office, ce dernier rejette la requête (article 19, paragraphe 5, et article 20 du REDC).
Les requêtes en rectification d’erreurs ou fautes ne figurant pas au registre et/ou ne se rapportant pas aux contenus de l’enregistrement publié sont rejetées. Dès lors, les requêtes en rectification de la description de la représentation du dessin ou modèle ou du spécimen sont rejetées.
Les erreurs de traduction dans l’indication des produits dans les langues officielles de l’Union européenne sont considérées comme des erreurs imputables à l’Office et rectifiées, dans la mesure où ces traductions sont des inscriptions au registre et des contenus de l’enregistrement publié, et bien qu’elles soient réalisées par le Centre de traduction des organes de l’Union européenne, et non par l’Office (communication n° 4/05 du Président de l’Office du 14 juin 2005 concernant la rectification des erreurs et des fautes figurant au registre et dans l’enregistrement publié de dessins ou modèles communautaires).
En cas de doute, le texte dans la langue de l’Office dans laquelle la demande de dessin ou modèle communautaire a été déposée fait foi (article 99, paragraphe 3, du RDC). Si le dépôt a eu lieu dans une langue officielle de l’Union européenne autre que l’une des langues de l’Office, le texte établi dans la deuxième langue indiquée par le demandeur fait foi.
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11.1.3 Publication des rectifications
Toute modification apportée au registre est notifiée au titulaire (article 69, paragraphe 5, du REDC).
L’Office publie les rectifications dans la partie A.3. du Bulletin des dessins ou modèles communautaires et les inscrit au registre avec la date d’enregistrement (articles 20 et 69, paragraphe 3, point e), du REDC).
Lorsque l’erreur ou la faute est imputable à l’Office, ce dernier délivre au titulaire, après la publication de l’erreur ou de la faute, un certificat d’enregistrement qui reproduit les mentions et renseignements inscrits au registre (article 69, paragraphe 2, du REDC) ainsi qu’une déclaration attestant que ces mentions et renseignements ont bien été inscrits au registre (article 17 du REDC).
Lorsque l’erreur ou la faute est imputable au titulaire, l’Office ne délivre un certificat d’enregistrement reproduisant la rectification que lorsqu’aucun certificat n’a été précédemment délivré. Dans tous les cas, les titulaires peuvent toujours demander à l’Office de délivrer un extrait du registre (certifié ou non) reflétant le statut actuel de leur(s) dessin(s) ou modèle(s).
11.2 Modifications au registre
11.2.1 Introduction
La présente section décrit les modifications apportées au registre des dessins ou modèles communautaires:
renonciation à un dessin ou modèle communautaire avec ou sans ajournement, notamment renonciation partielle;
modification des nom et adresse du demandeur et/ou du représentant, le cas échéant, qui a été notifiée à l’Office avant l’enregistrement du dessin ou modèle communautaire (c’est-à-dire avant la délivrance de la notification d’enregistrement);
modification des nom et adresse du titulaire et/ou du représentant, le cas échéant, pour un dessin ou modèle pour lequel l’ajournement de la publication a été demandé et qui n’a pas encore été publié;
inscription de transferts; inscription de licences.
11.2.2 Renonciation au dessin ou modèle communautaire enregistré
11.2.2.1 Principes généraux
Le titulaire peut renoncer à son dessin ou modèle communautaire à tout moment après l’enregistrement. La renonciation à un dessin ou modèle communautaire enregistré est déclarée par écrit à l’Office par le titulaire (article 51 du RDC).
Par contre, toute demande de renonciation à un dessin ou modèle international désignant l’Union européenne est déposée auprès du Bureau international de l’OMPI
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et inscrite au registre international par ce dernier (voir l’article 16 de l’acte de Genève et le point 12.2.2.5 ci-dessous).
La renonciation peut aussi être déclarée pour certains des dessins ou modèles contenus dans un enregistrement multiple (article 27, paragraphe 1, point d), du REDC).
Une déclaration de renonciation prend effet à la date à laquelle la renonciation est inscrite au registre des dessins ou modèles communautaires, sans effet rétroactif (article 51, paragraphe 1, du RDC). Toutefois, en cas de renonciation à un dessin ou modèle communautaire dont la publication est ajournée, ledit dessin ou modèle communautaire est réputé ne pas avoir eu, dès l’origine, les effets mentionnés dans le RDC (article 51, paragraphe 2, du RDC).
Un dessin ou modèle communautaire enregistré peut faire l’objet d’une renonciation partielle, à condition que la forme modifiée de ce dessin ou modèle réponde aux critères d’octroi de la protection et que l’identité du dessin ou modèle soit conservée (article 51, paragraphe 3, du RDC). La renonciation partielle est donc limitée aux cas dans lesquels les caractéristiques supprimées ou faisant l’objet d’une renonciation ne contribuent ni à la nouveauté ni au caractère individuel d’un dessin ou modèle communautaire, notamment:
lorsque le dessin ou modèle communautaire est incorporé dans un produit qui constitue une pièce d’un produit complexe et les caractéristiques supprimées ou faisant l’objet d’une renonciation sont invisibles lors d’une utilisation normale de ce produit complexe (article 4, paragraphe 2, du RDC); ou
lorsque les caractéristiques supprimées ou faisant l’objet d’une renonciation sont imposées par sa fonction ou à des fins de raccordement (article 8, paragraphes 1 et 2, du RDC); ou
lorsque les caractéristiques supprimées ou faisant l’objet d’une renonciation sont si insignifiantes au vu de leur taille ou de leur importance qu’elles sont susceptibles de passer inaperçues aux yeux d’un utilisateur averti.
La renonciation n’est inscrite au registre qu’avec l’accord du titulaire d’un droit inscrit au registre des dessins ou modèles communautaires (article 51, paragraphe 4, du RDC). Les titulaires d’un droit inscrit au registre sont les titulaires d’une licence enregistrée, les titulaires d’un droit réel enregistré, les créditeurs dans une procédure d’exécution forcée enregistrée ou l’autorité compétente pour les procédures de faillite ou similaires enregistrées.
Si une licence a été inscrite au registre, la renonciation n’y est inscrite que si le titulaire du dessin ou modèle communautaire enregistré justifie qu’il a informé le licencié de son intention de renoncer. La renonciation est enregistrée trois mois après que le titulaire a présenté à l’Office des éléments attestant qu’il a informé le ou les licenciés de son intention de renoncer, ou plus tôt s’il présente à l’Office, avant l’expiration de ce délai, des preuves de l’accord du ou des licenciés (article 51, paragraphe 4, du RDC; article 27, paragraphe 2, du REDC).
Si le droit à un dessin ou modèle communautaire enregistré a fait l’objet d’une revendication devant un tribunal en vertu de l’article 15 du RDC, la renonciation est inscrite au registre uniquement avec l’accord de la personne qui a revendiqué le droit (article 27, paragraphe 3, du REDC).
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11.2.2.2 Conditions de forme pour le dépôt d’une déclaration de renonciation
Une déclaration de renonciation contient les renseignements mentionnés à l’article 27, paragraphe 1, du REDC:
a) le numéro d’enregistrement du dessin ou modèle communautaire enregistré;
b) les nom et adresse du titulaire; c) si un représentant a été désigné, les nom et adresse de celui-ci; d) l’indication des dessins ou modèles concernés par la renonciation dans le
cas d’enregistrements multiples; e) une représentation du dessin ou modèle modifié conformément à
l’article 4 du REDC en cas de renonciation partielle.
Dans le cas d’une renonciation partielle, le titulaire dépose une représentation du dessin ou modèle communautaire modifié (article 27, paragraphe 1, point e), du REDC).
Si la déclaration de renonciation ne contient pas tous les renseignements susmentionnés et ne remplit pas toutes les conditions susmentionnées, l’Office informe le déclarant des irrégularités constatées et l’invite à y remédier dans le délai imparti. S’il n’est pas remédié auxdites irrégularités dans le délai imparti par l’Office, celui-ci refuse l’inscription de la renonciation au registre et en informe le titulaire du dessin ou modèle communautaire par écrit (article 27, paragraphe 4, du REDC).
11.2.3 Modification des nom et adresse du demandeur/titulaire et/ou du représentant
Le titulaire d’un dessin ou modèle communautaire peut demander que soit inscrite au registre une modification de nom ou d’adresse en adressant une requête écrite à l’Office en ce sens. Les inscriptions de modifications de nom et/ou d’adresse sont gratuites.
Toute demande d’enregistrement d’une modification de nom ou d’adresse concernant un dessin ou modèle international désignant l’Union européenne est déposée auprès du Bureau international de l’OMPI (voir l’article 16 de l’acte de Genève).
Pour les différences existant entre une modification de nom et un transfert, voir les Directives relatives à l’examen des marques communautaires, Partie E, Section 3, Chapitre 1, Transfert.
Le titulaire peut ne présenter qu’une seule requête lorsqu’il sollicite une modification de nom ou d’adresse concernant plusieurs de ses enregistrements.
Une requête en modification de nom ou d’adresse comporte les éléments suivants:
a) le numéro d’enregistrement du dessin ou modèle communautaire; b) les nom et adresse du titulaire tels qu’ils sont inscrits au registre ou le
numéro d’identification du titulaire; c) les nom et adresse modifiés du titulaire; d) les nom et adresse du représentant, le cas échéant.
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Si les conditions susmentionnées ne sont pas remplies, l’Office envoie au demandeur une notification d’irrégularité. S’il n’est pas remédié auxdites irrégularités dans le délai imparti par l’Office, ce dernier rejette la requête (article 19, paragraphe 5, du REDC).
Les modifications de noms et d’adresses dans le cadre de demandes de dessins ou modèles communautaires ne sont pas inscrites au registre mais sont consignées dans les dossiers de l’Office concernant la demande de dessin ou modèle communautaire (article 19, paragraphe 7, du REDC).
Les modifications apportées aux nom et adresse des titulaires d’enregistrements de dessins ou modèles communautaires sont publiées dans la partie B.2.2. du Bulletin des dessins ou modèles communautaires, tandis que les transferts de droits sont publiés dans la partie B.2.1. Les modifications apportées au nom et adresse des représentants sont publiées dans la partie B.9. du Bulletin des dessins ou modèles communautaires.
11.2.4 Transferts
11.2.4.1 Introduction
Un enregistrement de dessin ou modèle communautaire peut être transféré par son titulaire; les transferts sont inscrits au registre sur requête. Cependant, toute demande d’enregistrement d’un transfert concernant un dessin ou modèle international désignant l’Union européenne est déposée auprès du Bureau international de l’OMPI (voir l’article 16 de l’acte de Genève).
Les dispositions juridiques contenues dans les RDC, REDC et RTDC concernant les transferts correspondent aux dispositions contenues respectivement dans les RMC, REMC et RTMC (voir les Directives relatives à l’examen des marques communautaires, Partie E, Chapitre 1, Transferts).
Les principes et la procédure juridiques applicables à l’enregistrement de transferts de marques s’appliquent mutatis mutandis aux dessins ou modèles communautaires avec les particularités suivantes.
11.2.4.2 Droits au dessin ou modèle communautaire enregistré fondés sur une utilisation antérieure
Le droit fondé sur une utilisation antérieure ne peut être transféré, si le tiers qui a revendiqué ce droit avant la date de dépôt de la demande de dessin ou modèle communautaire enregistré ou la date de priorité est une entreprise, qu’avec la partie de l’activité de ladite entreprise dans le cadre de laquelle l’utilisation a été faite ou les préparatifs réalisés (article 22, paragraphe 4, du RDC).
11.2.4.3 Taxes
Une taxe de 200 EUR par dessin ou modèle s’applique pour l’enregistrement d’un transfert, avec un plafond de 1 000 EUR lorsque des requêtes multiples sont présentées dans la même demande (points 16 et 17 du RTDC).
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11.2.5 Licences
11.2.5.1 Principes généraux
Un enregistrement de dessin ou modèle communautaire peut faire l’objet de licences; l’octroi de licences est inscrit au registre sur requête. Les dispositions du RDC et du REDC concernant les licences de dessins ou modèles communautaires (articles 27, 32 et 33 et article 51, paragraphe 4, du RDC; articles 24 et 25 et article 27, paragraphe 2, du REDC) sont pratiquement identiques à celles contenues dans le RMC et le REMC (voir les Directives relatives à l’examen des marques communautaires, Partie E, Chapitre 2, Licences).
Les principes et la procédure juridiques applicables à l’enregistrement de licences de marques s’appliquent mutatis mutandis aux dessins ou modèles communautaires (article 24, paragraphe 1, du REDC) avec les particularités suivantes.
11.2.5.2 Dessins ou modèles communautaires enregistrés
Il n’existe aucune condition relative à l’usage dans le droit sur les dessins ou modèles communautaires. Par conséquent, la question de savoir si un licencié utilise un dessin ou modèle communautaire avec le consentement du titulaire du droit ne se pose pas.
Le RDC et le REDC requièrent une indication des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué (voir le point 6.1.4 ci-dessus). Une licence partielle pour certains des produits dans lesquels le dessin ou modèle est destiné à être incorporé ou auxquels il est destiné à être appliqué n’est pas possible.
Toute limitation de la portée de la licence est dès lors rejetée par l’Office et la licence est enregistrée sans qu’il en soit tenu compte.
11.2.5.3 Demandes multiples de dessins ou modèles communautaires enregistrés
Plusieurs dessins et modèles peuvent être combinés en une demande d’enregistrement multiple de dessins ou modèles communautaires (article 37 du RDC).
Dans le cas d’un enregistrement multiple, chaque dessin ou modèle communautaire enregistré peut faire l’objet d’une licence indépendamment des autres dessins ou modèles (article 24, paragraphe 1, du REDC).
11.2.5.4 Taxes
Une taxe de 200 EUR par dessin ou modèle, et non par demande, s’applique pour l’enregistrement, le transfert ou la radiation de l’enregistrement d’une licence, avec un plafond de 1 000 EUR lorsque des requêtes multiples sont présentées dans la même demande (points 18 et 19 de l’annexe au RTDC).
Exemple 1: Six dessins ou modèles d’une demande multiple comprenant dix dessins ou modèles font l’objet de licences au bénéfice d’un même licencié. La taxe d’enregistrement des licences s’élève à 1 000 EUR, à condition que:
les six licences soient incluses dans une requête en enregistrement unique, ou
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toutes les requêtes concernées soient transmises le même jour.
La requête peut indiquer que, pour trois des six dessins ou modèles, la licence est une licence exclusive, sans que cela n’ait d’incidence sur le montant des taxes à acquitter.
Exemple 2: Cinq dessins ou modèles d’une demande multiple comprenant dix dessins ou modèles font l’objet de licences au bénéfice d’un même licencié. Une licence est également octroyée pour un autre dessin ou modèle non contenue dans cette demande multiple. La taxe d’enregistrement des licences s’élève à 1 000 EUR, à condition que:
les six licences soient incluses dans une requête en enregistrement unique ou toutes les requêtes concernées soient transmises le même jour, et
le titulaire du dessin ou modèle communautaire et le licencié soient les mêmes pour les six dessins ou modèles communautaires.
12 Enregistrements internationaux
La présente rubrique traite des particularités de l’examen des enregistrements internationaux désignant l’Union européenne qui résultent de demandes déposées auprès du Bureau international de l’Organisation mondiale de la propriété intellectuelle (ci-après les «enregistrements internationaux» et le «Bureau international») conformément à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels, adopté à Genève le 2 juillet 1999.
12.1 Aperçu global du système de La Haye
12.1.1 L’arrangement de La Haye et l’acte de Genève
L’arrangement de La Haye est un système d’enregistrement international permettant d’obtenir une protection pour des dessins ou modèles dans plusieurs États membres et/ou organisations intergouvernementales, telles que l’Union européenne ou l’Organisation africaine de la propriété intellectuelle, au moyen d’une demande internationale unique déposée auprès du Bureau international. Dans le cadre de cet arrangement, une demande internationale unique remplace une série de demandes qui, autrement, auraient dû être déposées auprès de différents offices nationaux de la propriété intellectuelle ou organisations intergouvernementales.
L’arrangement de La Haye se compose de trois traités internationaux: l’acte de Londres (1934), dont l’application est gelée depuis le 1er janvier 2010, l’acte de La Haye (1960) et l’acte de Genève (1999). Chaque acte contient différentes dispositions juridiques, indépendantes les unes des autres.
Les enregistrements internationaux désignant l’Union européenne sont régis par l’acte de Genève.
À la différence du «protocole relatif à l’arrangement de Madrid concernant l’enregistrement international des marques» adopté à Madrid, ni l’acte de Genève ni le RDC ne prévoient de procédures pour la conversion d’un enregistrement international en dessins ou modèles nationaux ou communautaires ou en désignations d’États membres parties au système de La Haye, ou pour le remplacement de dessins ou
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modèles nationaux ou communautaires en un enregistrement international désignant la partie contractante en question.
12.1.2 Procédure de dépôt de demandes internationales
12.1.2.1 Particularités
Une autre différence par rapport au système de Madrid tient au fait que l’acte de Genève n’autorise pas et ne requiert pas qu’une d’enregistrement international soit fondée sur un dessin ou modèle communautaire ou national déposé antérieurement. L’OHMI ne peut être qu’un «office désigné», et non un «office d’origine». Les demandes internationales doivent donc être déposées directement auprès du Bureau international (article 106 ter du RDC).
L’acte de Genève et le règlement d’exécution commun à l’acte de 1999 et l’acte de 1960 de l’arrangement de La Haye contiennent des règles spécifiques, qui peuvent varier de celles applicables aux «dépôts directs» de dessins ou modèles communautaires, c’est-à-dire des demandes déposées directement auprès de l’OHMI ou par l’intermédiaire du service central de la propriété industrielle d’un État membre ou, pour les pays du Benelux, de l’Office Benelux de la Propriété intellectuelle (OBPI) (voir le point 2.2.1 ci-dessus). Ces règles spécifiques ont trait, en particulier, au droit de déposer une demande internationale, au contenu d’une demande internationale, aux taxes à acquitter, à l’ajournement de la publication, au nombre de dessins ou modèles que peut comprendre une demande multiple (jusqu’à 100), à la représentation devant le Bureau international et aux langues utilisées (une demande internationale doit être déposée en anglais, en français ou en espagnol).
12.1.2.2 Ajournement de la publication
Une demande internationale peut contenir une demande d’ajournement de la publication du dessin ou modèle, ou de tous les dessins ou modèles dans le cas d’une demande multiple. L’acte de Genève n’autorise pas les demandes d’ajournement de la publication d’uniquement certains dessins ou modèles d’une demande multiple (article 11 de l’acte de Genève).
La période d’ajournement de la publication pour une demande internationale désignant l’Union européenne est de trente mois à compter de la date de dépôt, ou en cas de revendication d’une priorité, de la date de priorité. La demande est publiée à l’expiration de cette période de trente mois, à moins que le titulaire ne demande au Bureau international que la publication ait lieu à une date antérieure (article 11 de l’acte de Genève).
La procédure décrite au point 6.2.5 ci-dessus ne s’applique pas car l’Office n’est pas responsable de la publication des enregistrements internationaux désignant l’Union européenne.
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12.1.2.3 Taxes
Trois types de taxes6 s’appliquent en cas de demande internationale désignant l’Union européenne:
une taxe de base; une taxe de publication; une taxe de désignation individuelle, soit 62 EUR par dessin ou modèle,
convertis en francs suisses (article 106 quater du RDC; point 1 bis de l’annexe du RTDC; règle 28 du règlement d’exécution commun).
12.1.3 Examen effectué par le Bureau international
Lorsqu’il reçoit une demande internationale, le Bureau international vérifie qu’elle satisfait aux conditions de forme prescrites, telles que celles relatives à la qualité des reproductions du ou des dessins ou modèles et au paiement des taxes dues. Le demandeur est informé de toute irrégularité, à laquelle il est invité à remédier dans le délai imparti de trois mois, faute de quoi la demande internationale est réputée abandonnée.
Lorsqu’une demande internationale satisfait aux conditions de forme prescrites, le Bureau international l’inscrit au registre international et, à moins qu’un ajournement de la publication n’ait été demandé, publie l’enregistrement au «Bulletin des dessins et modèles industriels». La publication se fait par voie électronique sur le site internet de l’Organisation mondiale de la propriété intellectuelle (OMPI) et contient toutes les informations pertinentes relatives à l’enregistrement international, dont une reproduction du ou des dessins ou modèles.
Le Bureau international notifie l’enregistrement international à tous les offices désignés, qui peuvent alors refuser la protection sur la base de motifs de fond.
12.2 Le rôle de l’Office en tant qu’office désigné
La présente section explique la procédure de traitement par l’Office des enregistrements internationaux, de leur notification par le Bureau international jusqu’à la décision finale d’accepter ou de rejeter la désignation de l’Union européenne.
Les principales étapes devant l’Office en tant qu’office désigné sont les suivantes:
réception de l’enregistrement international désignant l’Union européenne; examen des motifs absolus.
12.2.1 Réception de l’enregistrement international désignant l’Union européenne
Les communications entre l’Office et le Bureau international s’effectuent par voie électronique (article 47, paragraphe 3, du REDC).
6 Voir https://www.wipo.int/hague/fr/fees
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12.2.2 Motifs de rejet
Dès que l’enregistrement international désignant l’Union européenne a été notifié à l’Office par le Bureau international, les règles établies au titre XI bis du RDC et à l’article 11 bis du REDC (Examen des motifs de rejet) s’appliquent (article 106 bis, paragraphe 1, du RDC).
12.2.2.1 Conformité avec la définition d’un dessin ou modèle, ordre public et bonnes mœurs
Un enregistrement international ne peut être refusé pour non-respect des conditions de forme, car ces conditions sont réputées remplies au terme de l’examen effectué par le Bureau international.
L’Office limite son examen aux deux motifs de rejet (article 11 bis du REDC). Une demande internationale est refusée si le dessin ou modèle ne répond pas à la définition visée à l’article 3, point a), du RDC ou s’il est contraire à l’ordre public ou aux bonnes mœurs (article 9 du RDC) (voir le point 4 ci-dessus).
L’examen des motifs de rejet dans le cas d’enregistrements internationaux est réalisé comme si le ou les dessins ou modèles avaient fait l’objet d’une demande déposée directement auprès de l’Office. Les délais et autres aspects généraux de procédure régissant l’examen des motifs de rejet sont identiques à ceux applicables aux dépôts directement effectués auprès de l’Office (voir l’introduction, au point 1.2.3, et le point 4.3 ci-dessus).
12.2.2.2 Délais
L’Office informe le Bureau international de tout refus de protection au plus tard six mois après la date de publication de l’enregistrement international sur le site de l’OMPI (article 11 bis, paragraphe 1, du REDC).
Tout refus provisoire est motivé et la notification indique les motifs sur lesquels le refus est fondé; par ailleurs, le titulaire de l’enregistrement international est mis en mesure de présenter ses observations (article 106 sexies, paragraphes 1 et 2, du RDC).
Ainsi, dans un délai de deux mois à compter de la date de réception de la notification de refus provisoire, le titulaire de l’enregistrement international peut renoncer à l’enregistrement international, limiter l’enregistrement international à un ou plusieurs des dessins et modèles industriels en ce qui concerne l’Union européenne ou présenter ses observations (article 11 bis, paragraphe 2, du REDC).
Le Bureau international transmet la notification de refus provisoire au titulaire (ou à son représentant devant l’OMPI, le cas échéant). Le titulaire adresse sa réponse directement à l’Office ou, le cas échéant, par l’intermédiaire de son représentant (voir le point 12.2.2.4 ci-dessous).
Pour les prorogations de délais, voir l’introduction, au point 1.2.3
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12.2.2.3 Langues
La demande internationale doit être rédigée en français, en anglais ou en espagnol (règle 6, paragraphe 1, du règlement d’exécution commun). L’inscription et la publication de l’enregistrement international comportent l’indication de la langue dans laquelle le Bureau international a reçu la demande internationale (règle 6, paragraphe 2, du règlement d’exécution commun). Dans la pratique, cette langue peut être déterminée grâce à l’indication des produits (INID, code 54): la première langue utilisée dans l’indication des produits est la langue dans laquelle la demande internationale a été reçue par le Bureau international. Les indications fournies dans les deux autres langues sont des traductions établies par le Bureau international (règle 6, paragraphe 2, du règlement d’exécution commun).
La langue dans laquelle la demande internationale a été reçue par le Bureau international est la première langue de la désignation de l’Union européenne et devient dès lors la langue de la procédure d’examen (article 98, paragraphes 1 et 3, du RDC).
Dans toutes les communications avec le Bureau international, l’Office utilise par conséquent la langue dans laquelle l’enregistrement international a été déposé.
Si le titulaire souhaite utiliser une autre langue de l’Office, il produit une traduction dans la langue dans laquelle l’enregistrement international a été déposé dans un délai d’un mois à compter de la date de dépôt du document original (article 98, paragraphe 3, du RDC; article 81, paragraphe 1, du REDC). Si aucune traduction n’est parvenue à l’Office dans ce délai, le document original est réputé n’avoir pas été reçu par l’Office.
12.2.2.4 Représentation professionnelle
Lorsque le titulaire doit être représenté conformément à l’article 77, paragraphe 2, du RDC (voir le point 2.5 ci-dessus), il peut être invité à désigner, dans un délai de deux mois, un représentant dûment agréé au sens de l’article 78, paragraphe 1, du RDC (article 11 bis, paragraphe 3, du REDC).
Si le titulaire ne désigne pas de représentant avant l’expiration du délai fixé, l’Office refuse la protection de l’enregistrement international (article 11 bis, paragraphe 4, du REDC).
12.2.2.5 Renonciation et limitation
Lorsque le titulaire renonce à l’enregistrement international ou le limite à un ou plusieurs des dessins et modèles industriels en ce qui concerne l’Union européenne, il en informe le Bureau international par procédure d’enregistrement conformément à l’article 16, paragraphe 1, points iv) et v), de l’acte de Genève. Le titulaire peut informer l’Office en présentant une déclaration correspondante (article 11 bis, paragraphe 6, du REDC).
12.2.2.6 Octroi de la protection
Lorsque l’Office estime qu’il n’y a pas lieu de refuser ou lorsqu’est retiré un refus provisoire, il en informe le Bureau international sans délai.
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12.2.2.7 Refus
Lorsque le titulaire ne présente pas des observations qui satisfont l’Office dans le délai fixé ou ne retire pas la demande, l’Office confirme la décision de refus de protection concernant l’enregistrement international. Si le motif de rejet ne concerne que certains des dessins ou modèles compris dans une demande multiple, l’Office ne rejette la demande que pour les dessins ou modèles entachés d’irrégularité (article 11, paragraphe 3, du REDC).
Il n’existe pas de base légale dans le RCD ou le REDC pour permettre la modification de la représentation du dessin ou modèle afin de surmonter une objection émise à l’encontre d’un enregistrement international désignant l’Union européenne. Un demandeur peut toutefois renoncer à la désignation de l’Union européenne de son enregistrement international, directement auprès de l’OMPI, qui notifiera cette renonciation à l’Office.
Le titulaire de l’enregistrement international dispose des mêmes voies de recours que s’il avait déposé le ou les dessins ou modèles concernés directement auprès de l’Office. La procédure qui s’ensuit n’a lieu qu’au niveau de l’Office. Tout recours à l’encontre d’une décision de refus de protection doit être formé auprès des chambres de recours, dans le délai prescrit et conformément aux conditions établies aux articles 55 à 60 du RDC et aux articles 34 à 37 du REDC) (article 11 bis, paragraphe 5, du REDC). Le Bureau international n’est en rien impliqué dans cette procédure.
Dès que la décision de refus ou d’acceptation de l’enregistrement international est définitive, une notification finale est transmise au Bureau international, indiquant si le ou les dessins ou modèles sont finalement refusés ou acceptés.
Si le refus final ne porte que sur certains dessins ou modèles compris dans une demande multiple, la notification transmise au Bureau international indique quels dessins ou modèles sont refusés et lesquels sont acceptés.
12.3 Effets des enregistrements internationaux
Si l’Office ne notifie aucun refus dans les six mois suivant la publication de l’enregistrement international sur le site internet de l’OMPI ou retire une notification de refus provisoire, l’enregistrement international produit, à compter de la date d’enregistrement attribuée par le Bureau international, mentionnée à l’article 10, paragraphe 2, de l’acte de Genève (article 106 bis, paragraphe 2, du RDC), les mêmes effets que s’il avait été demandé auprès de l’Office et avait été enregistré par ce dernier.
Les enregistrements internationaux peuvent faire l’objet de recours en nullité en vertu des mêmes conditions et règles de procédure que celles applicables aux «dépôts directs» (article 106 septies du RDC; voir les directives d’examen des demandes en nullité de dessins ou modèles). Étant donné que la langue de dépôt d’un enregistrement international désignant l’Union européenne est nécessairement une langue de l’Office, toute demande en nullité de cet enregistrement international doit être déposée dans la même langue.
L’Office notifie toute demande de nullité directement au titulaire ou à son représentant. Le titulaire transmet sa réponse directement à l’Office ou, s’il y a lieu, par l’intermédiaire d’un représentant inscrit sur la liste de l’Office conformément à l’article 78 du RDC (voir le point 2.5 ci-dessus).
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Lorsque l’Office déclare invalides les effets d’un enregistrement international sur le territoire de l’Union européenne, il informe le Bureau international de sa décision dès que celle-ci est définitive (article 106 septies, paragraphe 2, du RDC; article 71, paragraphe 3, du REDC).
Les particularités des procédures régissant le renouvellement des enregistrements internationaux et les inscriptions de modifications de noms, de transferts, de renonciations ou de limitation de certains dessins ou modèles, pour l’ensemble ou une partie des parties contractantes désignées, sont expliquées dans les Directives relatives à l’examen devant l’Office du renouvellement des dessins ou modèles communautaires enregistrés, ainsi qu’aux points 11.2.2 à 11.2.4 ci-dessus (articles 16 et 17 de l’acte de Genève; article 22 bis du REDC).
13 L’élargissement et le dessin ou modèle communautaire enregistré
La présente rubrique traite des règles relatives à l’adhésion de nouveaux États membres à l’Union européenne et de leurs conséquences pour les demandeurs et titulaires de dessins ou modèles communautaires enregistrés.
Dix nouveaux États membres ont rejoint l’Union européenne le 1er mai 2004 (République tchèque, Estonie, Chypre, Lettonie, Lituanie, Hongrie, Malte, Pologne, Slovénie et Slovaquie), deux autres l’ont rejointe, le 1er janvier 2007 (Bulgarie et Roumanie) et un autre le 1er juillet 2013 (Croatie), ce qui porte à 28 le nombre d’États membres.
L’article 110 bis du RDC contient des dispositions liées à l’élargissement en ce qui concerne les dessins ou modèles communautaires enregistrés. Ces dispositions ont été incorporées dans le RDC lorsque l’Union européenne a été élargie en 2004 et restent applicables aux élargissements ultérieurs. La seule modification apportée au texte du RDC est l’ajout des noms des nouveaux États membres.
Quant à la possibilité d’enregistrement et à la validité des dessins ou modèles communautaires, les effets de l’élargissement de l’Union européenne sur les droits relatifs aux dessins ou modèles communautaires enregistrés sont décrits ci-après.
13.1 L’extension automatique des effets des dessins ou modèles communautaires aux territoires des nouveaux États membres
Conformément à l’article 110 bis, paragraphe 1, du RDC, les effets de tout droit relatif à un dessin ou modèle communautaire déposé avant le 1er mai 2004, le 1er janvier 2007 ou le 1er juillet 2013 sont étendus au territoire des États membres qui ont adhéré à l’Union européenne à ces dates (article 110 bis, paragraphe 1, du RDC).
L’extension est automatique en ce sens qu’elle n’est soumise à aucune formalité administrative et qu’elle ne donne lieu à aucune taxe supplémentaire. En outre, elle ne peut être contestée ni par le titulaire du dessin ou modèle communautaire ni par un tiers.
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13.2 Autres conséquences pratiques
13.2.1 Dépôt auprès des offices nationaux
À compter de la date d’élargissement, une demande de dessin ou modèle communautaire peut également être déposée par l’intermédiaire de l’office de la propriété industrielle d’un nouvel État membre.
13.2.2 Représentation professionnelle
À compter de la date d’adhésion, les demandeurs (ainsi que toute autre partie à une procédure devant l’Office) ayant leur siège ou leur domicile dans un nouvel État membre ne sont plus tenus d’être représentés par un mandataire agréé. À partir de cette date, les représentants agréés d’un nouvel État membre peuvent être inscrits sur la liste des mandataires agréés conservée par l’Office conformément à l’article 78 du RDC et peuvent dès lors représenter des tiers devant l’Office.
13.2.3 Première et deuxième langue
Depuis le 1er janvier 2004, l’Union européenne compte neuf nouvelles langues officielles, à savoir le tchèque, l’estonien, le letton, le lituanien, le hongrois, le maltais, le polonais, le slovaque et le slovène. Deux autres langues (bulgare et roumain) ont été ajoutées le 1er janvier 20077 et une langue supplémentaire (croate), le 1er juillet 2013.
Ces langues peuvent être utilisées en tant que première langue uniquement pour les demandes de dessins ou modèles communautaires déposées à compter de la date d’adhésion concernée.
13.2.4 Traduction
Les demandes de dessins ou modèles communautaires dont la date de dépôt est antérieure à la date d’adhésion et les enregistrements de dessins ou modèles communautaires existants ne sont ni traduits ni republiés dans la langue du ou des nouveaux États membres. Les demandes de dessins ou modèles communautaires déposées après la date d’adhésion sont traduites et publiées dans toutes les langues officielles de l’UE.
13.3 Examen des motifs de rejet
L’Office limite son examen des conditions de fond pour l’octroi de la protection à deux motifs de rejet (article 47, paragraphe 1, du RDC). Une demande est refusée si le dessin ou modèle ne répond pas à la définition établie à l’article 3, point a), du RDC ou est contraire à l’ordre public ou aux bonnes mœurs (article 9 du RDC) (voir le point 4 ci-dessus).
Une demande d’enregistrement d’un dessin ou modèle communautaire ne saurait être rejetée sur la base d’un des motifs de rejet des demandes d’enregistrement énumérés
7 Pour l'irlandais, voir le point 2.4.
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à l’article 47, paragraphe 1, si ces motifs sont devenus applicables uniquement du fait de l’adhésion d’un nouvel État membre (article 110 bis, paragraphe 2, du RDC).
Aucune référence à un contexte national ou linguistique particulier n’est normalement faite pour déterminer si un dessin ou modèle communautaire répond à la définition de l’article 3 du RDC ou respecte les principes d’ordre public et de bonnes mœurs.
Toutefois, lorsqu’un dessin ou modèle communautaire contient un élément verbal offensant dans une langue qui, en raison de l’adhésion d’un nouvel État membre, devient une langue officielle de l’Union européenne après la date de dépôt, le motif absolu de refus visé à l’article 9 du RDC ne s’applique pas.
13.4 Immunité contre des actions en nullité fondées sur des motifs de nullité qui deviennent applicables en raison uniquement de l’adhésion d’un nouvel État membre
13.4.1 Principe général
Un dessin ou modèle communautaire déposé ou enregistré avant le 1er mai 2004, le 1er janvier 2007 ou le 1er juillet 2013 ne peut être déclaré nul sur la base de motifs de nullité applicables dans l’un des États membres ayant adhéré à l’Union européenne à ces dates si ces motifs de nullité ne sont devenus contestables qu’à compter de la date de l’adhésion en question (article 110 bis, paragraphe 3, du RDC). Cette disposition reflète la nécessité de respecter les droits acquis.
Les motifs de nullité établis à l’article 25, paragraphe 1, du RDC ne peuvent tous devenir «applicables uniquement du fait de l’adhésion d’un nouvel État membre».
13.4.1.1 Motifs de nullité applicables indépendamment de l’élargissement de l’UE
L’adhésion d’un nouvel État membre n’a aucun effet sur l’applicabilité des cinq motifs de nullité détaillés ci-après. L’article 110 bis, paragraphe 3, du RDC n’offre dès lors aucune protection contre leur application à des dessins ou modèles communautaires déposés avant le 1er mai 2004, le 1er janvier 2007 ou le 1er juillet 2013, respectivement.
Non-visibilité et fonctionnalité
La non-visibilité d’un dessin ou modèle communautaire appliqué à une partie d’un produit complexe et les restrictions applicables aux caractéristiques d’un dessin ou modèle imposées uniquement par sa fonction technique ou les exigences de raccordement sont des motifs de nullité qui doivent être évalués à la lumière du dessin ou modèle lui-même, et non de la situation de fait qui existe dans un quelconque État membre donné (article 25, paragraphe 1, point b), du RDC lu en combinaison avec les articles 4 et 8 du RDC).
Nouveauté et caractère individuel
Dans des circonstances normales, l’absence de nouveauté ou de caractère individuel d’un dessin ou modèle communautaire n’est pas affectée par l’élargissement de l’Union européenne (article 25, paragraphe 1, point b), du RDC lu en combinaison avec les articles 5 et 6 du RDC).
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La divulgation d’un dessin ou modèle antérieurement à la date de dépôt ou de revendication de priorité d’un dessin ou modèle communautaire peut supprimer la nouveauté ou le caractère individuel de ce dernier, même si cette divulgation a eu lieu dans un pays avant la date d’adhésion de celui-ci à l’Union européenne. La seule condition à remplir est que cette divulgation ait pu «dans la pratique normale des affaires [...] raisonnablement être connu[e] des milieux spécialisés du secteur concerné, opérant dans la Communauté» (article 7, paragraphe 1, du RDC).
Droit au dessin ou modèle communautaire
Le fait qu’en vertu d’une décision de justice, le titulaire ne possède pas le droit au dessin ou modèle communautaire constitue un autre motif de nullité qui n’est pas affecté par l’élargissement (article 25, paragraphe 1, point c), du RDC). L’article 14 du RDC n’impose aucune condition de nationalité à la personne revendiquant le droit au dessin ou modèle communautaire ni ne requiert que la décision de justice n’émane d’une instance située dans un État membre.
Usage abusif de l’un des éléments énumérés à l’article 6 ter de la Convention de Paris
Le motif de nullité fondé sur l’usage abusif de l’un des éléments énumérés à l’article 6 ter de la Convention de Paris n’est pas non plus affecté par l’élargissement de l’Union européenne. Il n’est pas obligatoire que le signe dont l’usage est interdit provienne d’un État membre (article 25, paragraphe 1, point g), du RDC).
13.4.1.2 Motifs de nullité résultant de l’élargissement de l’Union européenne
Un dessin ou modèle communautaire déposé à compter du 1er mai 2004, du 1er janvier 2007 ou du 1er juillet 2013 respectivement ne peut être déclaré nul sur la base des quatre motifs de nullité décrits ci-dessous si ces motifs de nullité sont devenus opposables en raison de l’adhésion d’un nouvel État membre à l’une de ces dates (article 110 bis, paragraphe 3, du RDC).
Conflit avec un droit antérieur sur un dessin ou modèle protégé dans un nouvel État membre (article 25, paragraphe 1, point d), du RDC)
Un dessin ou modèle communautaire déposé avant la date d’adhésion d’un État membre ne peut être déclaré nul si le dessin ou modèle communautaire est en conflit avec un dessin ou modèle antérieur qui est protégé dans le nouvel État membre depuis une date antérieure à la date de dépôt de la demande d’enregistrement ou date de priorité du dessin ou modèle communautaire, mais qui a fait l’objet d’une divulgation au public à une date ultérieure.
Usage d’un signe distinctif antérieur (article 25, paragraphe 1, point e), du RDC)
Un dessin ou modèle communautaire déposé avant la date d’adhésion d’un État membre ne peut être déclaré nul s’il est fait usage d’un signe distinctif qui est protégé dans le nouvel État membre depuis une date antérieure à la date de dépôt de la demande d’enregistrement ou date de priorité du dessin ou modèle communautaire.
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Utilisation non autorisée d’une œuvre protégée par la législation sur le droit d’auteur d’un État membre (article 25, paragraphe 1, point f), du RDC)
Un dessin ou modèle communautaire déposé avant la date d’adhésion d’un État membre ne peut être déclaré nul s’il constitue une utilisation non autorisée d’une œuvre protégée par la législation sur le droit d’auteur du nouvel État membre depuis une date antérieure à la date de dépôt de la demande d’enregistrement ou la date de priorité du dessin ou modèle communautaire.
Usage abusif de signes, emblèmes et armoiries autres que ceux visés à l’article 6 ter de la Convention de Paris (article 25, paragraphe 1, point g), du RDC)
Un dessin ou modèle communautaire déposé avant la date d’adhésion d’un État membre ne peut être déclaré nul s’il constitue une utilisation non autorisée de signes, emblèmes ou armoiries autres que ceux visés à l’article 6 ter de la Convention de Paris, et qui présentent un intérêt public particulier pour le nouvel État membre.
Ordre public et bonnes mœurs
Un dessin ou modèle communautaire déposé avant l’adhésion d’un nouvel État membre ne peut être annulé au seul motif que ce dessin ou modèle communautaire serait considéré comme contraire à l’ordre public ou aux bonnes mœurs dans le nouvel État membre en question (et non dans les autres États membres).
13.4.2 Effets d’une revendication de priorité
Un dessin ou modèle communautaire déposé à compter du 1er mai 2004, du 1er janvier 2007 ou du 1er juillet 2013, respectivement, peut être déclaré nul sur la base des quatre motifs susmentionnés.
Cette disposition s’applique également si la date de priorité du dessin ou modèle communautaire en question est antérieure à la date d’adhésion concernée. Le droit de priorité ne protège pas le titulaire du dessin ou modèle communautaire contre les modifications de la législation applicable à la validité de son dessin ou modèle.
Renouvellement des dessins ou modèles communautaires enregistrés
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DIRECTIVES RELATIVES À L'EXAMEN PRATIQUÉ À L'OFFICE DE
L'HARMONISATION DANS LE MARCHE INTÉRIEUR (MARQUES, DESSINS ET
MODÈLES) SUR LES DESSINS OU MODÈLES COMMUNAUTAIRES
ENREGISTRÉS
RENOUVELLEMENT DES DESSINS OU MODÈLES COMMUNAUTAIRES
ENREGISTRÉS
Renouvellement des dessins ou modèles communautaires enregistrés
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Table des matières
1. Introduction................................................................................................ 3
2. Alerte liée à la fraude................................................................................. 3
3. Délai de protection .................................................................................... 4
4. Notification de l'expiration de l'enregistrement ...................................... 4
5. Taxes et autres conditions de forme applicables à la demande de renouvellement .......................................................................................... 5 5.1. Personnes autorisées à introduire une demande de renouvellement ....5 5.2. Contenu de la demande de renouvellement .............................................6 5.3. Langues ......................................................................................................7 5.4. Taxes ..........................................................................................................7 5.5. Délai de paiement....................................................................................... 8 5.6. Moyens de paiement .................................................................................. 9
6. Examen par l'Office ................................................................................. 10 6.1. Compétence.............................................................................................. 10 6.2. Examen des conditions de forme............................................................ 10
6.2.1. Observation des délais ................................................................................. 10 6.2.2. Respect des conditions de forme ................................................................. 11
6.3. Points ne faisant pas l'objet d'un examen .............................................. 12 6.4. Modification .............................................................................................. 12 6.5. Restitutio in integrum .............................................................................. 13
7. Inscriptions au registre ........................................................................... 13
8. Date de prise d'effet du renouvellement ou de l'expiration ................. 14
9. Renouvellement d'enregistrements internationaux de dessins ou modèles désignant l'Union européenne................................................ 14
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1. Introduction
Il existe deux façons d'introduire une demande de dessin ou modèle communautaire enregistré: soit (i) par le biais d’un «dépôt direct» auprès de l’Office ou d’un office national (articles 35 et suivants du RDC), soit (ii) par le biais d’un enregistrement international désignant l’Union européenne auprès du Bureau international de l’Organisation mondiale de la propriété intellectuelle (articles 106 bis et suivants du RCD).
Les présentes directives ont pour objet d’expliquer comment les conditions du règlement sur les dessins ou modèles communautaires1 (RCD), du règlement d’exécution du règlement sur les dessins ou modèles communautaires2 (REDC) et du règlement relatif aux taxes3 (RTDC) sont mises en œuvre par l’Office pour ce qui est des procédures de renouvellement relatives aux «dépôts directs» de dessins ou modèles communautaires (voir ci-dessous paragraphes 1 à 6). Ces directives n’entendent, ni ne peuvent, étendre ou réduire la teneur légale de ces règlements.
Ci-dessous, le paragraphe 7 fait référence aux instruments pertinents applicables au renouvellement d’enregistrements internationaux désignant l’Union européenne.
2. Alerte liée à la fraude
2.1 Sociétés privées envoyant des factures trompeuses
L'Office a connaissance de la réception par les usagers européens d'un nombre croissant de messages non sollicités émanant d'entreprises demandant des paiements pour des services relatifs aux marques, dessins ou modèles, tels que le renouvellement.
Une liste des lettres de sociétés ou de registres identifiées par certains utilisateurs comme étant trompeuses est publiée sur le site internet de l'Office.
Veuillez noter que ces services ne sont en aucun cas liés aux services officiels d'enregistrement des marques, dessins ou modèles communautaires fournis par des organismes publics établis dans l'Union européenne, tels que l'OHMI.
Si vous recevez de telles lettres ou factures, veuillez vérifier attentivement ce qui vous est offert ainsi que l'authenticité de leur source. L'OHMI n'envoie jamais de factures ou de lettres réclamant un paiement direct pour ses services (voir les Directives
1 Règlement (CE) n° 6/2002 du Conseil du 12 décembre 2001 sur les dessins ou modèles communautaires, tel que modifié par le règlement (CE) n° 1891/2006 du Conseil du 18 décembre 2006 modifiant les règlements (CE) n° 6/2002 et (CE) n° 40/94 en vue de donner effet à l'adhésion de la Communauté européenne à l'acte de Genève de l'arrangement de La Haye concernant l'enregistrement international des dessins et modèles industriels. 2 Règlement (CE) n° 2245/2002 de la Commission du 21 octobre 2002 portant modalités d'application du règlement (CE) n° 6/2002 du Conseil sur les dessins ou modèles communautaires, tel que modifié par le règlement (CE) n° 876/2007 de la Commission du 24 juillet 2007 modifiant le règlement (CE) n° 2245/2002 portant modalités d'application du règlement (CE) n° 6/2002 du Conseil sur les dessins ou modèles communautaires à la suite de l'adhésion de la Communauté européenne à l'acte de Genève de l'arrangement de La Haye concernant l'enregistrement international des dessins et modèles industriels. 3 Règlement (CE) n° 2246/2002 de la Commission du 16 décembre 2002 concernant les taxes, tel que modifié par le règlement (CE) n° 877/2007 de la Commission du 24 juillet 2007 modifiant le règlement (CE) n° 2246/2002 concernant les taxes à payer à l’Office de l’harmonisation dans le marché intérieur (marques, dessins et modèles) après l’adhésion de la Communauté européenne à l’acte de Genève de l’arrangement de La Haye concernant l’enregistrement international des dessins et modèles industriels.
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relatives aux procédures devant l'Office de l'harmonisation dans le marché intérieur (marques, dessins et modèles), partie A, Règles générales, section 3, paiement des taxes, frais et tarifs).
2.2. Renouvellement par des tiers non autorisés
L’Office a également connaissance de fraudeurs ayant pris pour cible le module de renouvellement en ligne, effectuant des demandes de renouvellement sans l’accord du titulaire et bloquant ainsi toute tentative de renouvellement à travers le module initiée par les personnes légitimement autorisées à le faire de cette manière. Le blocage technique vise à éviter qu’un renouvellement soit payé deux fois. Si lors d'une demande de renouvellement, vous vous rendez compte que la marque est «bloquée» car le renouvellement a déjà été demandé, veuillez contacter l'Office.
2.3. Contact
Si vous repérez un cas similaire, ou en cas de doute, veuillez en référer à votre conseiller juridique ou bien nous contacter par téléphone au +34 965 139 100 ou par courrier électronique à l'adresse suivante: information@oami.europa.eu.
3. Délai de protection
Articles 12 et 38 du RDC Article 10 du REDC
Le délai de protection d'un dessin ou modèle communautaire enregistré est de 5 ans à compter de la date du dépôt de la demande (article 12 du RDC).
La date du dépôt de la demande est déterminée selon l'article 38 du RDC et l'article 10 du REDC (voir les Directives relatives aux demandes de dessins ou modèles communautaires enregistrés, section 2, «Octroi d'une date de dépôt»).
L'enregistrement peut être renouvelé pour une ou plusieurs périodes de 5 ans, jusqu'à un maximum de 25 ans à compter de la date de dépôt de la demande.
4. Notification de l'expiration de l'enregistrement
Article 13, paragraphe 2 du RDC Article 21 du REDC
Six mois au moins avant l'expiration de l'enregistrement, l'Office informe
- le titulaire du dessin ou modèle communautaire et - toute personne titulaire d'un droit inscrit au registre
que l'enregistrement doit être renouvelé. Les titulaires d'un droit enregistré comprennent les licenciés enregistrés, les titulaires d'un droit enregistré réel, les créanciers d'une exécution forcée ou l'autorité compétente pour la procédure de faillite enregistrée ou une procédure analogue.
L'absence de notification n'engage pas la responsabilité de l'Office et est sans effet sur l'expiration de l'enregistrement.
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5. Taxes et autres conditions de forme applicables à la demande de renouvellement
Article 22, paragraphe 8, articles 65, 66, 67, article 68, paragraphe 1, point e), du REDC.
Les règles générales relatives aux communications adressées à l'Office sont d'application, ce qui signifie que la demande de renouvellement peut être présentée par:
des moyens électroniques tels que disponibles sur le site internet de l'OHMI, à l'aide du module de renouvellement électronique. La saisie des nom et prénom à l'endroit indiqué du formulaire électronique a valeur de signature. Outre la réduction de la taxe, le renouvellement en ligne offre d’autres avantages, comme la réception immédiate et automatique d’une confirmation électronique de la demande de renouvellement ou l’utilisation du gestionnaire de renouvellement pour remplir le formulaire rapidement pour autant de marques communautaires que nécessaire ;
la transmission par télécopie ou par courrier électronique d'un original signé. Un formulaire standard est disponible sur le site internet de l'OHMI et son usage est encouragé. Les formulaires doivent être signés, ce qui n'est pas le cas des annexes.
Il est fortement recommandé de renouveler les enregistrements de dessins ou modèles communautaires par les moyens électroniques (renouvellement électronique). La procédure de renouvellement électronique contrôle et confirme automatiquement les conditions établies par le REDC.
Une demande de renouvellement unique peut être présentée pour plusieurs dessins ou modèles, contenus ou non dans un même enregistrement multiple, moyennant le paiement des taxes requises pour chaque dessin ou modèle, à condition que les titulaires ou les représentants des dessins ou modèles communautaires soient les mêmes dans chaque cas.
Pour les taxes, voir point 5.4. ci-dessous. Pour les conditions de forme, voir point 6.2.2. ci-dessous.
5.1. Personnes autorisées à introduire une demande de renouvellement
Article 13, paragraphe 1 du RDC
Les demandes de renouvellement peuvent être introduites par:
le titulaire enregistré d'un dessin ou modèle communautaire; l'ayant cause, lorsque le dessin ou modèle communautaire a été transféré, à
compter du moment où la demande d'enregistrement du transfert a été reçue par l'Office;
une personne y ayant été autorisée par le titulaire d'un dessin ou modèle communautaire. Cette personne peut être, par exemple, un licencié enregistré, un licencié non enregistré ou toute autre personne ayant obtenu l'autorisation du titulaire pour renouveler le dessin ou modèle;
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un représentant agissant pour le compte de l'une des personnes mentionnées précédemment.
Les personnes devant être représentées devant l'Office conformément à l'article 77, paragraphe 2, du RCD peuvent introduire une demande de renouvellement directement.
Toute autre personne que le titulaire qui souhaite renouveler un dessin ou modèle communautaire enregistré doit y être expressément autorisée. Toutefois, il n'est pas nécessaire qu’elle ait été déposée auprès de l’Office, à moins que l’Office ne le demande. Par exemple, si l’Office reçoit des taxes de deux sources différentes, il prendra contact avec le titulaire pour savoir quelle personne est autorisée à déposer la demande de renouvellement. Lorsqu’aucune réponse du titulaire n’est reçue, l’Office validera le paiement reçu en premier (voir, par analogie, l'arrêt du 12 mai 2009 – «Jurado», T-410/07, paragraphes 16 à 24).
5.2. Contenu de la demande de renouvellement
Article 22, paragraphe 1, du REDC
Une demande de renouvellement d'un enregistrement doit comporter les renseignements suivants:
Le nom de la personne qui demande le renouvellement (c'est-à-dire le titulaire du dessin ou modèle communautaire, une personne autorisée ou un représentant; voir point 5.1). Si l'Office a attribué un numéro d'identification au demandeur, l'indication de ce numéro est suffisante;
Le numéro d'enregistrement du dessin ou modèle communautaire enregistré. Ce numéro est toujours composé d'une série de neuf chiffres, suivie d'une série de quatre chiffres (par exemple, XXXXXXXXX-YYYY);
Dans le cas d’un enregistrement multiple, la demande de renouvellement doit indiquer que le renouvellement est demandé pour tous les dessins ou modèles compris dans l'enregistrement multiple ou, si le renouvellement n’est pas demandé pour l'ensemble des dessins ou modèles, préciser quels sont les dessins ou modèles pour lesquels le renouvellement est demandé.
Si le titulaire du dessin ou modèle communautaire a désigné un représentant, le nom de ce dernier doit être indiqué. Si les informations concernant le représentant ont déjà été fournies, la mention du numéro d'identification du représentant est suffisante. Si un nouveau représentant est désigné dans la demande de renouvellement, ses nom et adresse doivent être indiqués, conformément à l'article 1, paragraphe 1, point e), du REDC.
Le paiement à lui seul constitue une demande valable de renouvellement sous réserve que ce paiement parvienne à l’Office par virement bancaire et que soient mentionnés le nom du payeur, le numéro d'enregistrement du dessin ou modèle communautaire et l'indication « renouvellement ». En pareil cas, aucune autre formalité ne sera requise (voir les Directives relatives aux procédures devant l'Office de l'harmonisation dans le marché intérieur (marques, dessins et modèles), partie A, Règles générales, section 3, Paiement des taxes, coûts et charges).
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5.3. Langues
Article 80, point b), du REDC
La demande de renouvellement peut être déposée dans l’une des cinq langues de l’Office. Cette langue devient la langue de la procédure de renouvellement. Toutefois, lorsque la demande de renouvellement est déposée au moyen du formulaire fourni par l’Office, conformément à l’article 68 du REDC, ce formulaire peut être rédigé dans l’une des langues officielles de l’Union, sous réserve que les éléments de texte du formulaire soient écrits dans l’une des langues de l’Office.
5.4. Taxes
Article 13, paragraphe 3, du RDC Article 22, paragraphe 2, points a) et b), du REDC Article 7, paragraphe 1, du RTDC Annexe au RTDC, points 11 et 12.
Les taxes à payer pour le renouvellement d'un dessin ou modèle communautaire sont les suivantes:
une taxe de renouvellement qui, dans le cas de plusieurs dessins ou modèles compris dans un enregistrement multiple, est proportionnelle au nombre de dessins ou modèles visés par la demande de renouvellement;
toute surtaxe éventuelle pour retard de paiement de la taxe de renouvellement ou retard de présentation de la demande de renouvellement.
Le montant de la taxe de renouvellement par dessin ou modèle, inclus ou non dans un enregistrement multiple, est le suivant:
pour la première période de renouvellement: 90 EUR pour la deuxième période de renouvellement: 120 EUR pour la troisième période de renouvellement: 150 EUR pour la quatrième période de renouvellement: 180 EUR
La taxe doit être acquittée dans un délai de six mois expirant le dernier jour du mois au cours duquel la période de protection prend fin (voir point 5.5 ci-dessous).
La taxe peut être acquittée dans un délai supplémentaire de six mois prenant cours le lendemain du dernier jour du mois au cours duquel la protection prend fin, sous réserve du paiement d'une surtaxe équivalente à 25 % du montant total de la taxe de renouvellement (voir point 5.5.2. ci-dessous).
Lorsque le paiement est fait par versement ou virement auprès d’un compte bancaire de l'Office, la date à laquelle le montant correspondant est effectivement porté au crédit est la date à laquelle le paiement est réputé effectué.
Les taxes versées avant le début de la période de six mois ne seront pas prises en compte et seront restituées.
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5.5. Délai de paiement
Article 13 RDC Articles 22(2), 58(1) REDC
5.5.1. Période de six mois avant l’expiration (délai de base)
La taxe doit être payée dans un délai de six mois expirant le dernier jour du mois au cours duquel la période de protection prend fin (“délai de base”).
Si un délai expire, soit un jour où on ne peut déposer de documents auprès de l'Office, soit un jour où le courrier ordinaire n'est pas distribué à Alicante, le délai est prorogé jusqu'au premier jour où les documents peuvent être déposés et où le courrier ordinaire est distribué. D’autres exceptions sont prévues à l’article 58, paragraphes 2 et 4, du REDC.
Par exemple, s’agissant d’un dessin ou modèle communautaire dont la date de dépôt est le 01/04/2013, le dernier jour du mois au cours duquel la période de protection prend fin est le 30/04/2018. Dans ces conditions, une demande de renouvellement devra être présentée et la taxe acquittée entre le 01/11/2017 et le 30/04/2018 ou, si cette date est un samedi, dimanche, soit un autre jour où on ne peut déposer de documents auprès de l'Office, ou un jour où le courrier ordinaire n'est pas distribué à Alicante, le premier jour ouvrable au cours duquel le courrier ordinaire est distribué.
5.5.2. Période de grâce de six mois après l’expiration (période de grâce)
La taxe peut être acquittée au cours d’un délai supplémentaire de six mois prenant cours le lendemain du dernier jour du mois au cours duquel la période de protection prend fin (voir le paragraphe 5.5.1 ci-dessus), sous réserve du paiement d’une surtaxe s’élevant à 25 % de la taxe totale de renouvellement, y compris toute taxe par classe, mais limitée à un maximum de 1500 euros (article 13.3 du RDC). Le renouvellement ne sera valablement effectué que si le paiement de toutes les taxes (taxes de renouvellement et surtaxe pour paiement tardif) parvient à l’Office pendant la période de grâce.
Dans l’exemple ci-dessus, la période de grâce, au cours de laquelle une demande de renouvellement peut encore être présentée contre paiement de la taxe de renouvellement et de la surtaxe, commence à courir au lendemain du 30/04/2018 (soit le 01/05/2018) et s’achève le 31/10/2018 ou, , si cette date est un samedi, dimanche, soit un autre jour où on ne peut déposer de documents auprès de l'Office, ou un jour où le courrier ordinaire n'est pas distribué à Alicante, le premier jour ouvrable au cours duquel le courrier ordinaire est distribué. Ce mode de calcul s’applique même si, dans cet exemple, le 30/04/2018 est un samedi ou un dimanche. La règle selon laquelle le délai est prorogé jusqu'au premier jour ouvrable ne s’applique qu’une seule fois, à l’expiration du délai de base, et non au point de départ de la période de grâce.
En principe, les taxes acquittées avant le début de la période de six mois ne sont pas prises en considération et sont remboursées.
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5.6. Moyens de paiement
Article 5 du RTDC
Les moyens de paiement acceptés sont les virements bancaires, les cartes de crédit (uniquement en cas de renouvellement demandé par le biais du module de renouvellement en ligne) et les paiements effectués à l'aide de comptes courants ouverts auprès de l'Office. Les paiements par chèque ne sont pas acceptés. Les taxes et tarifs doivent être acquittés en euros.
Lorsque le titulaire du dessin ou modèle communautaire a un compte courant auprès de l'Office, la taxe est débitée automatiquement du compte, après la présentation d'une demande de renouvellement. À moins qu'il ne soit donné d'autres instructions, la taxe de renouvellement est débitée le dernier jour du délai de six mois prévu par l'article 13, paragraphe 3, du RDC, c'est-à-dire le dernier jour du mois au cours duquel la protection prend fin.
En cas de retard de présentation de la demande de renouvellement (voir point 5.5.2. ci-dessous), la taxe de renouvellement est débitée avec effet au jour de la présentation de la demande tardive de renouvellement, à moins que d'autres instructions ne soient données, et elle est soumise à une surtaxe.
Si la demande est introduite par un mandataire agréé représentant le titulaire du dessin ou modèle communautaire au sens de l'article 78 du RCD, et que celui-ci a un compte courant auprès de l'Office, la taxe de renouvellement est débitée du compte courant du mandataire.
Le paiement peut également être effectué par les autres personnes mentionnées au paragraphe 5.1 ci-dessus.
Le paiement de la taxe par le prélèvement d'un compte courant appartenant à un tiers requiert le consentement explicite du titulaire de ce compte autorisant l'Office à débiter le compte en question du montant de la taxe. Dans ce cas, l'Office vérifie qu'il existe une autorisation. Si l'Office ne dispose pas de ce document, une lettre invitant le demandeur à présenter cette autorisation de débit du compte d'un tiers lui est envoyée. Dans ce cas, le paiement est réputé effectué à la date de réception de l'autorisation par l'Office.
Si les taxes (taxe de renouvellement et, le cas échéant, surtaxe pour retard de paiement) ont été acquittées, mais que le dessin ou modèle communautaire enregistré n'a pas été renouvelé (c'est-à-dire si la taxe n'a été acquittée qu'après l'expiration de la période de grâce, si la taxe acquittée est inférieure à la taxe de base plus la taxe pour retard de paiement/retard de présentation de la demande de renouvellement, ou s’il n'a pas été remédié à certaines autres irrégularités; voir point 6.2.2 ci-dessous), les taxes en question sont remboursées.
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6. Examen par l'Office
6.1. Compétence
Article 104 du RDC
Le département «Soutien aux opérations» est chargé de traiter les demandes de renouvellement et de les inscrire au registre.
6.2. Examen des conditions de forme
L'examen d'une demande de renouvellement se limite au contrôle des conditions de forme qui suivent.
6.2.1. Observation des délais
(a) Avant l'expiration du délai de base
Article 13 du RDC Article 22, paragraphe 3, du REDC Article 5 et article 6, paragraphe 1, du RTDC
Si la demande de renouvellement est présentée et la taxe de renouvellement acquittée dans le délai de base, l’Office enregistre le renouvellement, pour autant que les autres conditions fixées dans le RDC et dans le REDC soient remplies.
Si aucune demande n'a été présentée avant l'expiration du délai de base, mais que l'Office a reçu un paiement de la taxe de renouvellement comportant un minimum d'informations (nom de la personne demandant le renouvellement et numéro d'enregistrement du/des dessin(s) ou modèle(s) communautaire(s) renouvelés), le paiement vaut demande de renouvellement et aucune autre formalité ne doit être remplie.
En revanche, si aucune demande de renouvellement n'a été enregistrée et qu'une taxe a été acquittée mais que celle-ci ne comporte pas le minimum d'informations (nom de la personne demandant le renouvellement et numéro d'enregistrement du/des dessin(s) ou modèle(s) communautaire(s) renouvelés), l'Office invite le titulaire du dessin ou modèle communautaire à introduire une demande de renouvellement et à régler, le cas échéant, la surtaxe pour retard de présentation de la demande de renouvellement. Une lettre est envoyée peu de temps après réception de la taxe, de façon à permettre l'enregistrement de la demande avant que la surtaxe ne soit due.
Si demande a été présentée pendant le délai de base, mais que la taxe de renouvellement n’a pas été acquittée ou n’a pas été entièrement acquittée, l’Office invite la personne qui demande le renouvellement à acquitter la taxe de renouvellement ou la partie restante de celle-ci ainsi que la surtaxe pour paiement tardif.
Si la demande de renouvellement est introduite par une personne y ayant été autorisée par le titulaire du dessin ou modèle communautaire, ce dernier reçoit une copie de la notification.
Renouvellement des dessins ou modèles communautaires enregistrés
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(b) Avant l'expiration de la période de grâce
Article 13, paragraphe 3, du RDC Article 22, paragraphe 4, du REDC
Si une demande a été présentée pendant la période de grâce, mais que la taxe de renouvellement n’a pas été acquittée ou n’a pas été entièrement acquittée, l’Office invite la personne qui demande le renouvellement à acquitter la taxe de renouvellement ou la partie restante de celle-ci ainsi que la surtaxe pour paiement tardif.
Le renouvellement ne sera valablement effectué que si le paiement de toutes les taxes (taxes de renouvellement et surtaxe pour paiement tardif) parvient à l’Office pendant la période de grâce (voir points 5.5. et 5.6. ci-dessus).
(c) Lorsque le titulaire ou représentant a un compte courant
L'Office n'effectue de prélèvement sur un compte courant qu'en cas de demande expresse de renouvellement. Le compte débité est celui de la personne à l'origine de la demande (le titulaire du dessin ou modèle communautaire, son représentant ou un tiers).
Si la demande est introduite avant expiration du délai de base, l'Office débite le montant de la taxe de renouvellement sans aucun coût supplémentaire.
Si la demande est introduite avant expiration du délai supplémentaire, l'Office débite le montant de la taxe de renouvellement ainsi qu'une surtaxe équivalente à 25 % (voir point 5.4 ci-dessus).
6.2.2. Respect des conditions de forme
Articles 22 et 40 du REDC
Lorsque la demande de renouvellement ne satisfait pas aux conditions de forme (voir point 5 « Taxes et autres conditions de forme applicables à la demande de renouvellement »), mais que ces irrégularités peuvent être corrigées, l'Office invite le demandeur à remédier aux irrégularités dans un délai de deux mois. Ce délai de deux mois s'applique même si le délai supplémentaire a déjà expiré.
Si la demande de renouvellement est introduite par une personne y ayant été autorisée par le titulaire du dessin ou modèle communautaire, ce dernier recevra une copie de la notification.
Si la demande de renouvellement a été introduite par deux personnes différentes prétendant être la personne autorisée par le titulaire du dessin ou modèle communautaire, l'Office cherche à obtenir des précisions sur l'identité de la personne autorisée en contactant directement le titulaire.
S'il n'est pas remédié aux irrégularités avant l'expiration du délai prévu, l'Office procède de la façon suivante:
Si l'irrégularité réside dans l'absence d'indication des dessins ou modèles concernés par l'enregistrement multiple devant être renouvelé, et que les taxes
Renouvellement des dessins ou modèles communautaires enregistrés
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payées sont insuffisantes pour couvrir l'ensemble des dessins ou modèles pour lesquels l'enregistrement est demandé, l'Office établit quels dessins ou modèles le montant payé est destiné à couvrir. À défaut d'autres critères permettant de déterminer les dessins ou modèles destinés à être couverts, l'Office prend en considération les dessins ou modèles dans l'ordre numérique dans lequel ils sont représentés. L'Office vérifie que l'enregistrement est arrivé à expiration pour tous les dessins ou modèles pour lesquels les taxes de renouvellement n'ont pas été payées ou n'ont pas été acquittées intégralement.
En cas d'autres irrégularités, l'Office vérifie que l'enregistrement est arrivé à expiration et envoie une notification de perte de droit au titulaire, à son représentant ou, le cas échéant, à la personne qui demande le renouvellement, et à toute personne titulaire d'un droit sur le(s) dessin(s) ou modèle(s) communautaire(s) inscrit au registre.
En vertu de l'article 40, paragraphe 2, du REDC, le titulaire peut demander une décision en la matière dans un délai de deux mois.
Si les taxes de renouvellement ont été payées, mais que l'enregistrement n'est pas renouvelé, celles-ci seront remboursées.
6.3. Points ne faisant pas l'objet d'un examen
En cas de renouvellement, il ne sera procédé à aucun examen portant sur le caractère enregistrable du dessin ou modèle ou sur la classification correcte des produits relevant du dessin ou modèle. Il ne sera pas procédé à une nouvelle classification d’un dessin ou modèle qui a été enregistré conformément à une édition de la classification de Locarno qui n’est plus en vigueur au moment du renouvellement. Une telle nouvelle classification ne sera pas non plus effectuée sur demande du titulaire.
6.4. Modification
Article 12, paragraphe 2, du REDC
La représentation d'un dessin ou modèle communautaire ne pouvant être modifiée après que la demande a été déposée, par principe, le dépôt de vues supplémentaires ou la suppression de certaines vues lors du renouvellement n'est pas accepté(e).
Les autres modifications, qui n'affectent pas la représentation du dessin ou modèle communautaire en lui-même (changements de nom, d'adresse, etc.) et que le titulaire souhaite voir inscrites au registre lors du renouvellement de l'enregistrement, doivent être communiquées à l'Office de façon séparée selon les procédures applicables (voir les Directives concernant les demandes d'enregistrement de dessins ou modèles communautaires, section 10). Ces modifications seront intégrées aux données enregistrées lors du renouvellement uniquement si leur inscription au registre a lieu au plus tard le jour de l'expiration de l'enregistrement du dessin ou modèle communautaire.
Renouvellement des dessins ou modèles communautaires enregistrés
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6.5. Restitutio in integrum
Article 67 du RDC Article 15 de l'annexe au RTDC
Une partie à une procédure devant l’Office peut être rétablie dans ses droits (restitutio in integrum) si elle n’a pas été en mesure de respecter un délai à l’égard de l’Office, bien qu’ayant fait preuve de toute la vigilance nécessitée par les circonstances, si le non-respect du délai a eu pour conséquence directe, en vertu des dispositions des règlements, la perte d’un droit ou d’un moyen de recours.
La restitutio in integrum doit prendre la forme d’une requête devant l’Office et fait l’objet d’une taxe (200 EUR).
La requête doit être présentée dans un délai de deux mois à compter de la cessation de l’empêchement, mais au plus tard dans un délai d’un an après l’expiration du délai non observé. L'acte non accompli doit l'être pendant cette même période.
En cas de non-présentation d’une demande de renouvellement ou de non-paiement de la taxe de renouvellement, le délai d’un an commence à courir le jour où la protection prend fin (délai de base) et non le jour de l’expiration du délai supplémentaire de six mois (délai supplémentaire).
7. Inscriptions au registre
Article 13, paragraphe 4, du RDC Article 40, article 22, paragraphe 6, article 69, paragraphe 3, point m), article 69, paragraphe 5, et article 71 du REDC
Lorsque la demande de renouvellement satisfait à toutes les conditions, le renouvellement est inscrit au registre.
L’Office notifie au titulaire du dessin ou modèle communautaire enregistré, ou son représentant le renouvellement de l’enregistrement du dessin ou modèle, l’inscription de ce renouvellement au registre et sa date de prise d’effet.
Si l'Office constate que l'enregistrement est arrivé à expiration, il informe le titulaire du dessin ou modèle communautaire et toute personne titulaire d'un droit sur ce dessin ou modèle inscrit au registre de l'expiration de l'enregistrement et de sa radiation du registre.
En vertu de l'article 40, paragraphe 2 du REDC, le titulaire peut demander une décision en la matière dans un délai de deux mois.
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8. Date de prise d'effet du renouvellement ou de l'expiration
Article 13, paragraphe 4, du RDC Articles 22, paragraphe 6, et article 56 du REDC
Le renouvellement prend effet le jour suivant la date d’expiration de l’enregistrement existant.
Si le dessin ou modèle communautaire est arrivé à expiration et est radié du registre, la radiation prend effet le jour suivant la date d’expiration de l’enregistrement existant.
9. Renouvellement d'enregistrements internationaux de dessins ou modèles désignant l'Union européenne
Article 17 de l'acte de Genève de l'arrangement de La Haye concernant l'enregistrement international des dessins et modèles industriels (ci-après «l'acte de Genève») Article 12 du RDC
L'enregistrement international désignant l'Union européenne est effectué pour une période initiale de cinq ans à compter de la date de l'enregistrement international et peut être renouvelé pour des périodes supplémentaires de cinq ans jusqu'à un maximum de 25 ans à compter de la date de l'enregistrement.
En vertu de l'article 11 bis de l'annexe au RTDC, la taxe de renouvellement individuelle pour un enregistrement international désignant l'Union européenne, par dessin ou modèle, est la suivante:
pour la première période de renouvellement: 31 EUR pour la deuxième période de renouvellement: 31 EUR pour la troisième période de renouvellement: 31 EUR pour la quatrième période de renouvellement: 31 EUR
Les enregistrements internationaux doivent être renouvelés directement auprès du Bureau international de l'OMPI, conformément à l'article 17 de l'acte de Genève (voir l’article 22 bis du REDC). L'Office ne traite pas les demandes de renouvellement ou les paiements de la taxe de renouvellement correspondant à des enregistrements internationaux.
La procédure de renouvellement des marques internationales est entièrement gérée par le bureau international, qui envoie la notification de renouvellement, perçoit les taxes de renouvellement et inscrit le renouvellement au registre international. En cas de renouvellement d'enregistrements internationaux désignant l'Union européenne, le bureau international en informe également l'Office.