Collective Trademarks : application and validity in the EU
Transcript of Collective Trademarks : application and validity in the EU
Collective Trademarks : application and
validity in the EU
Annick Mottet Haugaard
ECTA President
ASIPI - 31 October 2011
Collective trademarks
A. Regulation
B. Definition
C. Function
D. Applicant / Future proprietor
E. Registration process
F. Persons entitled to bring an action for infringement
G. Distinction with other signs and/or labels
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A. Regulation : 3 levels in Europe
• Council Regulation (EC) No 207/2009 of 26 February 2009 on
the Community trade mark (CTMR) Community trade marks
• Council Directive (EEC) No 89/104 of 21 December 1988 to
approximate the laws of the Members States relating to trade
marks (TMD) Harmonisation of the national legislations
regarding national trade marks
• Benelux Convention on Intellectual Property of 25 February
2005 Example of national legislation
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B. Definition
“A Community collective mark shall be a Community
trade mark which 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.” (Art.64.1 of CTMR)
•Collective geographical trade mark (see infra)
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C. Function
•To distinguish goods or services of the members of the
association from those of other undertakings
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D. Applicant / Future proprietor
•Association of manufacturers, producers, suppliers of
services or trades (only legal person)
Two criteria to be met :
• Applicant must be an association
• It must exist as an entity in itself
•Proprietor may use its trade mark
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E. Registration process
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Filing an
application
Examination
Publication Opposition
Registration Invalidity/Revocation
Application accepted
Application refused
Searches
Opposition rejected
Appeal
E.1. Application
•Filing of the application form (online or by fax / mail)
sent to OHIM or national offices
•Form = as the one for individual trade mark
• Specificity : regulation governing the use of the mark
•Fees : 1.800 EUR
•Duration : +/- 7 months (from application to registration)
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E.1.1 Sign
•Words
•Devices
•3D
•Color per se
•Other distinctive features
(sound; smell…)
•Collective geographical trade mark!
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Which can be
represented
graphically
E.1.2 Regulation governing the use of the mark
•Content (1/2):
• Name of applicant’s organisation
• Object of the organisation
• Bodies authorised to represent the organisation
• Conditions for memberships
• Persons authorised to use the mark
• Conditions to use the marks, including sanctions, if any
≠ Licensee agreement (mark not used simultaneously
by competitors)
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E.1.2 Regulation governing the use of the mark
•Content (2/2) :
• May not be contrary to public policy or accepted
principles of morality
Rules which discriminate on basis of sex, race…
• Specificity for collective geographical mark
• If the examiner is not satisfied two months period to
remedy the defect
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E.2. Examination
•Absolute grounds for refusal :
• Grounds = as for individual trade marks (Art. 7 of CTMR)
• Some specificities (see next slide ) !
•Refusal if there is one of the grounds in only part of the
Community
•Accepting publication of the trade mark
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E.2. Examination
•Specificities :
• Exception to the lack of distinctiveness and
descriptiveness
• Mark which is geographically descriptive but not deceptive
• Eg : CFI, 17 May 2011 (Txakoli)
• Misleading character of the sign
• Defect to regulation governing the use of the mark
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E.3. Publication of the application
•Publication in Part A of the Bulletin
possibility for filing third party observations
Absolute grounds for refusal
3 months for filing an opposition
Relative grounds for refusal
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E.4. Opposition
•Opponent must have rights in an earlier trade mark or
other form of trade sign (Art. 8 of the CTMR)
•Decision of the Opposition Division is subject to appeal
• Appeal is decided by OHIM’s Boards of Appeal
• A further appeal to the Court of First Instance of
the European Communities
• Ultimately to the Court of Justice of the
European Communities 15
E.5. Registration
•Publication in part B of the Bulletin
•Scope of protection: the European Union as a whole
Unitary character
•Period of protection: 10 years
! Renewable indefinitely for period of 10 years
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E.6 Revocation
•Grounds for revocation = as for individual marks
•Specificities :
• Proprietor allows a use of the mark in a manner
incompatible with the conditions of use
• The manner of use by the proprietor of the mark
has caused it to become liable to mislead the public
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E.7 Invalidity
•Grounds for invalidity = as for individual marks
•Specificities :
• Regulation contrary to public policy
• Misleading character of the mark
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F. Persons entitled to bring an action for
infringement
•Proprietor
•Every person who has authority to use a Community
collective mark if the proprietor consents thereto
•Proprietor is entitled to claim compensation on behalf
of persons who have authority to use the mark
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G. Distinction with other signs and/or labels
1. Individual trade marks
2. Certification marks
3. Some other European labels of quality
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G.1 Individual trade marks
•Same regulation except what was just mentioned
•Possibility to affix simultaneously both kind of marks
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Individual Collective
Sign likely to be protected Distinctive
No geographical origin
May be more descriptive
Geographical origin
Proprietor Natural or legal person Association (legal entity)
Function Function of identification Function of identification
Users Allows to create a network
of licensees and to
impose its rules
Automatically member if
one meets the criteria of
the regulation of use
G. 2 Certification mark
•No European regulation
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Certification Collective
Sign likely to be protected Also geographical origin Also geographical origin
Proprietor Natural or legal person Association (legal entity)
Function Function of guarantee Function of identification
Users Not the proprietor Automatically member if
one meets the criteria of
the regulation
G.3 Some other European labels of quality
A. General points
B. Common features
C. Protected designation of origin (PDO)
D. Protected geographical indication (PGI)
E. Traditional specialities guaranteed (TSG)
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A. General points
•Aims : to promote and protect designations of agricultural
products and foodstuff of quality
•Regulations (at the exception of those for wine or spirits):
• Regulation (EC) No 510/2006 on the protection of geographical
indications and designations of origin for agricultural products and
foodstuffs
• Regulation (EC) No n°509/2006 on agricultural products and foodstuffs
as traditional specialties guaranteed
•European database DOOR
http://ec.europa.eu/agriculture/quality/door/list.html
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B. Common features (1/3)
• Proprietor :
• Group of producers or processors of the concerned
products
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B. Common features (2/3)
• Name of the product may not be :
• A generic name
• In conflict with names of plant varieties, animal breeds
• A homonym creating a risk of confusion
• A trade mark (reputation, renown, length of time it has
been used)
• A reference only to claims of a general nature used
(TSG)
• Misleading (TSG)
• Regulation of use!
•
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B. Common features (3/3)
• Users :
• One meets the criteria of the regulation of use
• Control :
• Authorities/bodies designated by the Member
States
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C. Protected designation of origin •Definition :
• Characteristics of the product are essentially or
exclusively due to a particular geographical environment
• Production, processing and preparation of which take
place in the defined geographical area;
•Eg: Feta, Camembert de Normandie, Prosciutto di Parma
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D.Protected geographical indication
•Definition :
• Product which possesses a specific quality,
reputation or other characteristics attributable to
that geographical origin,and
• Production and/or processing and/or preparation
of which take place in the defined geographical
area.
One link with the area is sufficient
•Eg : Jambon d’Ardenne 35
E. Traditional specialities guaranteed
•Definition :
• A set of characteristics which distinguishes a product
from other similar products of the same category
• Intrinsic features or product’s production
method
No link with a geographical area
•Eg : Kriek , Mozzarella, Pizza Napoletana
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Contact details
Annick Mottet Haugaard
Partner
+32 2 787.90.13
www.lydian.be
Tel: +32 2 787.90.00
Fax: +32 2 787.90.99
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