European Union Trade Mark Regulation
(EU) 2017/1001
Zusammenfassung
Since the release of the first edition of this commentary, quite a few important changes have taken place in the realm of EU trade mark law. Most of the reforms proposed in 2013 have now matured into law. By way of Regulation 2015/2424 of 16 December 2015, the CTMR was comprehensively amended and the regulation on the fees payable to the Office repealed. All in all, the reform of the former framework brought about more than 145 amendments. These changes have been codified by Regulation 2017/1001 of 14 June 2017. Needless to say, all changes of a material, procedural or mere terminological nature are commented in detail in the respective context of this profoundly revised second edition.
The benefits at one glance:
systematic article-by-article commentary on the EUTMR
commentary on measures and remedies under the Enforcement Directive (2004/48/EC)
analysis of the assertion of EUTM rights out of court as well as in litigation in summary and main proceedings in all EU Member States
This commentary is written by practitioners for practitioners "deserving a place on the bookshelf of any professional or student interested in the EU trade mark and design system." António Campinos, Executive Director EUIPO Foreword 2nd ed, June 2018)
About the editor and the authors:
Dr Gordian N Hasselblatt is a partner at CMS Hasche Sigle, Cologne, adjunct Professor at McGeorge School of Law, Sacramento/California for International Intellectual Property Law and visiting Professor at the Chicago-Kent College of Law for International Design Law. The authors are renowned experts from the EUIPO, universities and law firms from all over the EU.
Abstract
Since the release of the first edition of this commentary, quite a few important changes have taken place in the realm of EU trade mark law. Most of the reforms proposed in 2013 have now matured into law. By way of Regulation 2015/2424 of 16 December 2015, the CTMR was comprehensively amended and the regulation on the fees payable to the Office repealed. All in all, the reform of the former framework brought about more than 145 amendments. These changes have been codified by Regulation 2017/1001 of 14 June 2017. Needless to say, all changes of a material, procedural or mere terminological nature are commented in detail in the respective context of this profoundly revised second edition.
The benefits at one glance:
systematic article-by-article commentary on the EUTMR
commentary on measures and remedies under the Enforcement Directive (2004/48/EC)
analysis of the assertion of EUTM rights out of court as well as in litigation in summary and main proceedings in all EU Member States
This commentary is written by practitioners for practitioners "deserving a place on the bookshelf of any professional or student interested in the EU trade mark and design system." António Campinos, Executive Director EUIPO Foreword 2nd ed, June 2018)
About the editor and the authors:
Dr Gordian N Hasselblatt is a partner at CMS Hasche Sigle, Cologne, adjunct Professor at McGeorge School of Law, Sacramento/California for International Intellectual Property Law and visiting Professor at the Chicago-Kent College of Law for International Design Law. The authors are renowned experts from the EUIPO, universities and law firms from all over the EU.
- I–XXVIII Titelei/Inhaltsverzeichnis I–XXVIII
- 1–1411 A. Commentary 1–1411
- 1–54 TITLE I. GENERAL PROVISIONS 1–54
- 1–41 Article 1. EU trade mark 1–41
- 41–45 Article 2. Office 41–45
- 45–54 Article 3. Capacity to act 45–54
- 54–583 TITLE II. THE LAW RELATING TO TRADE MARKS 54–583
- 54–325 SECTION 1. Definition of an EU trade mark and obtaining an EU trade mark 54–325
- Article 4. Signs of which an EU trade mark may consist
- Article 5. Persons who can be proprietors of EU trade marks
- Article 6. Means whereby an EU trade mark is obtained
- Article 7. Absolute grounds for refusal
- Article 8. Relative grounds for refusal
- 325–465 SECTION 2. Effects of an EU trade mark 325–465
- Article 9. Rights conferred by an EU trade mark
- Article 10. Right to prohibit preparatory acts in relation to the use of packaging or other means
- Article 11. Date from which rights against third parties prevail
- Article 12. Reproduction of an EU trade mark in a dictionary
- Article 13. Prohibition of the use of an EU trade mark registered in the name of an agent or representative
- Article 14. Limitation of the effects of an EU trade mark
- Article 15. Exhaustion of the rights conferred by an EU trade mark
- Article 16. Intervening right of the proprietor of a later registered trade mark as a defence in infringement proceedings
- Article 17. Complementary application of national law relating to infringement
- 465–494 SECTION 3. Use of an EU trade mark 465–494
- Article 18. Use of an EU trade mark
- 494–583 SECTION 4. EU trade marks as objects of property 494–583
- Article 19. Dealing with EU trade marks as national trade marks
- Article 20. Transfer
- Article 21. Transfer of a trade mark registered in the name of an agent
- Article 22. Rights in rem
- Article 23. Levy of execution
- Article 24. Insolvency proceedings
- Article 25. Licensing
- Article 26. Procedure for entering licences and other rights in the Register
- Article 27. Effects vis-a`-vis third parties
- Article 28. The application for an EU trade mark as an object of property
- Article 29. Procedure for cancelling or modifying the entry in the Register of licences and other rights
- 583–653 TITLE III. APPLICATION FOR EUTM TRADE MARKS 583–653
- 583–626 SECTION 1. Filing of applications and the conditions which govern them 583–626
- Article 30. Filing of applications
- Article 31. Conditions with which applications must comply
- Article 32. Date of Filing
- Article 33. Designation and classification of goods and services
- 626–638 SECTION 2. Priority 626–638
- Article 34. Right of priority
- Article 35. Claiming priority
- Article 36. Effect of priority right
- Article 37. Equivalence of Union filing with national filing
- 638–642 SECTION 3. Exhibition priority 638–642
- Article 38. Exhibition priority
- 642–653 SECTION 4. Claiming the seniority of a national trade mark 642–653
- Article 39. Claiming the seniority of a national trade mark in an application for an EU trade mark or subsequent to the filing of the application
- Article 40. Claiming seniority of a national trade mark after registration of an EU trade mark
- 653–739 TITLE IV. REGISTRATION PROCEDURE 653–739
- 653–681 SECTION 1. Examination of applications 653–681
- Article 41. Examination of the conditions of filing
- Article 42. Examination as to absolute grounds for refusal
- 681–686 SECTION 2. Search 681–686
- Article 43. Search report
- 686–688 SECTION 3. Publication of the application 686–688
- Article 44. Publication of the application
- 688–723 SECTION 4. Observations by third parties and opposition 688–723
- Article 45. Observations by third parties
- Article 46. Opposition
- Article 47. Examination of opposition
- Article 48. Delegation of powers
- 723–735 SECTION 5. Withdrawal, restriction, amendment and division of the application 723–735
- Article 49. Withdrawal, restriction and amendment of the application
- Article 50. Division of the application
- 735–739 SECTION 6. Registration 735–739
- Article 51. Registration
- 739–753 TITLE V. DURATION, RENEWAL, ALTERATION AND DIVISION OF EUROPEAN UNION TRADE MARKS 739–753
- 739–739 Article 52. Duration of Registration 739–739
- 739–747 Article 53. Renewal 739–747
- 747–748 Article 54. Alteration 747–748
- 748–750 Article 55. Change of name or address 748–750
- 750–753 Article 56. Division of the registration 750–753
- 753–795 TITLE VI. SURRENDER, REVOCATION AND INVALIDITY 753–795
- 753–758 SECTION 1. Surrender 753–758
- Article 57. Surrender
- 758–768 SECTION 2. Grounds for revocation 758–768
- Article 58. Grounds for revocation
- 768–784 SECTION 3. Grounds for invalidity 768–784
- Article 59. Absolute grounds for invalidity
- Article 60. Relative grounds for invalidity
- Article 61. Limitation in consequence of acquiescence
- 784–786 SECTION 4. Consequences of revocation and invalidity 784–786
- Article 62. Consequences of revocation and invalidity
- 786–795 SECTION 5. Proceedings in the Office in relation to revocation or invalidity 786–795
- Article 63. Application for revocation or for a declaration of invalidity
- Article 64. Examination of the application
- Article 65. Delegation of powers
- 795–860 TITLE VII. APPEALS 795–860
- 795–798 Article 66. Decisions subject to appeal 795–798
- 798–802 Article 67. Persons entitled to appeal and to be parties to appeal proceedings 798–802
- 802–807 Article 68. Time limit and form of appeal 802–807
- 807–808 Article 69. Revision of decisions in ex parte cases 807–808
- 808–815 Article 70. Examination of appeals 808–815
- 815–818 Article 71. Decisions in respect of appeals 815–818
- 818–858 Article 72. Actions before the Court of Justice 818–858
- 858–860 Article 73. Delegation of powers 858–860
- 860–919 TITLE VIII. SPECIFIC PROVISIONS ON EUROPEAN UNION COLLECTIVE MARKS AND CERTIFICATION MARKS 860–919
- 860–886 SECTION 1. EU collective marks 860–886
- Article 74. EU collective marks
- Article 75. Regulations governing use of an EU collective mark
- Article 76. Refusal of the application
- Article 77. Observations by third parties
- Article 78. Use of marks
- Article 79. Amendment of the regulations governing use of the EU collective mark
- Article 80. Persons who are entitled to bring an action for infringement
- Article 81. Grounds for revocation
- Article 82. Grounds for invalidity
- 886–919 SECTION 2. EU certification marks 886–919
- Article 83. EU certification marks
- Article 84. Regulations governing use of an EU certification mark
- Article 85. Refusal of the application
- Article 86. Observations by third parties
- Article 87. Use of the EU certification mark
- Article 88. Amendment of the regulations governing use of the EU certification mark
- Article 89. Transfer
- Article 90. Persons who are entitled to bring an action for infringement
- Article 91. Grounds for revocation
- Article 92. Grounds for invalidity
- Article 93. Conversion
- 919–1079 TITLE IX. PROCEDURE 919–1079
- 919–1017 SECTION 1. General provisions 919–1017
- Article 94. Decisions and communications of the Office
- Article 95. Examination of the facts by the Office of its own motion
- Article 96. Oral proceedings
- Article 97. Taking of evidence
- Article 98. Notification
- Article 99. Notification of loss of rights
- Article 100. Communications to the Office
- Article 101. Time limits
- Article 102. Correction of errors and manifest oversights
- Article 103. Revocation of decisions
- Article 104. Restitutio in integrum
- Article 105. Continuation of proceedings
- Article 106. Interruption of proceedings
- Article 107. Reference to general principles
- Article 108. Termination of financial obligations
- 1017–1041 SECTION 2. Costs 1017–1041
- Article 109. Costs
- Article 110. Enforcement of decisions fixing the amount of costs
- 1041–1067 SECTION 3. Information which may be made available to the public and to the authorities of the Member States 1041–1067
- Article 111. Register of EU trade marks
- Article 112. Database
- Article 113. Online access to decisions
- Article 114. Inspection of files
- Article 115. Keeping of Files
- Article 116. Periodical publications
- Article 117. Administrative cooperation
- Article 118. Exchange of publications
- 1067–1079 SECTION 4. Representation 1067–1079
- Article 119. General principles of representation
- Article 120. Professional representatives
- Article 121. Delegation of powers
- 1079–1151 TITLE X. JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO EU TRADE MARKS 1079–1151
- 1079–1085 SECTION 1. Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters 1079–1085
- Article 122. Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters
- 1085–1147 SECTION 2. Disputes concerning the infringement and validity of EU trade marks 1085–1147
- Article 123. EU trade mark courts
- Article 124. Jurisdiction over infringement and validity
- Article 125. International jurisdiction
- Article 126. Extent of jurisdiction
- Article 127. Presumption of validity – Defence as to the merits
- Article 128. Counterclaims
- Article 129. Applicable law
- Article 130. Sanctions
- Article 131. Provisional and protective measures
- Article 132. Specific rules on related actions
- Article 133. Jurisdiction of EU trade mark courts of second instance – Further appeal
- 1147–1151 SECTION 3. Other disputes concerning EU trade marks 1147–1151
- Article 134. Supplementary provisions on the jurisdiction of national courts other than EU trade mark courts
- Article 135. Obligation of the national court
- 1151–1187 TITLE XI. EFFECTS ON THE LAWS OF THE MEMBER STATES 1151–1187
- 1151–1154 SECTION 1. Civil actions on the basis of more than one trade mark 1151–1154
- Article 136. Simultaneous and successive civil actions on the basis of EU trade marks and national trade marks
- 1154–1163 SECTION 2. Application of national laws for the purpose of prohibiting the use of EU trade marks 1154–1163
- Article 137. Prohibition of use of EU trade marks
- Article 138. Prior rights applicable to particular localities
- 1163–1187 SECTION 3. Conversion into a national trade mark application 1163–1187
- Article 139. Request for the application of national procedure
- Article 140. Submission, publication and transmission of the request for conversion
- Article 141. Formal requirements for conversion
- 1187–1315 TITLE XII. THE OFFICE 1187–1315
- 1187–1232 SECTION 1. General provisions 1187–1232
- Article 142. Legal status
- Article 143. Staff
- Article 144. Privileges and immunities
- Article 145. Liability
- Article 146. Languages
- Article 147. Publication and entries in the Register
- Article 148. Translation services
- Article 149. Transparency
- Article 150. Security rules on the protection of classified and sensitive non-classified information
- 1232–1237 SECTION 2. Tasks of the office and cooperation to promote convergence 1232–1237
- Article 151. Tasks of the Office
- Article 152. Cooperation to promote convergence of practices and tools
- 1237–1247 SECTION 3. Management Board 1237–1247
- Article 153. Functions of the Management Board
- Article 154. Composition of the Management Board
- Article 155. Chairperson of the Management Board
- Article 156. Meetings
- 1247–1254 SECTION 4. Executive Director 1247–1254
- Article 157. Functions of the Executive Director
- Article 158. Appointment and removal of the Executive Director and extension of term of office
- 1254–1289 SECTION 5. Implementation of procedures 1254–1289
- Article 159. Competence
- Article 160. Examiners
- Article 161. Opposition Divisions
- Article 162. Department in charge of the Register
- Article 163. Cancellation Divisions
- Article 164. General Competence
- Article 165. Boards of Appeal
- Article 166. Independence of the members of the Boards of Appeal
- Article 167. Presidium of the Boards of Appeal and Grand Board
- Article 168. Delegation of powers
- Article 169. Exclusion and objection
- Article 170. Mediation centre
- 1289–1315 SECTION 6. Budget and financial control 1289–1315
- Article 171. Budget Committee
- Article 172. Budget
- Article 173. Preparation of the budget
- Article 174. Audit and control
- Article 175. Combating fraud
- Article 176. Auditing of accounts
- Article 177. Financial provisions
- Article 178. Fees and charges and due date
- Article 179. Payment of fees and charges
- Article 180. Deemed date of payment
- Article 181. Insufficient payments and refund of insignificant amounts
- 1315–1395 TITLE XIII. INTERNATIONAL REGISTRATION OF MARKS 1315–1395
- 1315–1326 SECTION 1. General provisions 1315–1326
- Article 182. Application of provisions
- 1326–1350 SECTION 2. International registration on the basis of applications for an EU trade mark and of EU trade marks 1326–1350
- Article 183. Filing of an international application
- Article 184. Form and contents of the international application
- Article 185. Recordal in the files and in the Register
- Article 186. Notification of the invalidity of the basic application or registration
- Article 187. Request for territorial extension subsequent to the international registration
- Article 188. International fees
- 1350–1395 SECTION 3. International registrations designating the Union 1350–1395
- Article 189. Effects of international registrations designating the Union
- Article 190. Publication
- Article 191. Seniority claimed in an international application
- Article 192. Seniority claimed before the Office
- Article 193. Designation of goods and services and examination as to absolute grounds for refusal
- Article 194. Collective and certification marks
- Article 195. Search
- Article 196. Opposition
- Article 197. Replacement of an EU trade mark by an international registration
- Article 198. Invalidation of the effects of an international registration
- Article 199. Legal effect of registration of transfers
- Article 200. Legal effect of registration of licenses and other rights
- Article 201. Examination of requests for registration of transfers, licences or restrictions of a holder’s right of disposal
- Article 202. Conversion of a designation of the Union through an international registration into a national trade mark application or into a designation of Member States
- Article 203. Use of a mark subject of an international registration
- Article 204. Transformation
- Article 205. Communication with the International Bureau
- Article 206. Use of languages
- 1395–1411 TITLE XIV. FINAL PROVISIONS 1395–1411
- 1395–1396 Article 207. Committee Procedure 1395–1396
- 1396–1399 Article 208. Exercise of the delegation 1396–1399
- 1399–1406 Article 209. Provisions relating to the enlargement of the Union 1399–1406
- 1406–1408 Article 210. Evaluation and review 1406–1408
- 1408–1408 Article 211. Repeal 1408–1408
- 1408–1411 Article 212. Entry into force 1408–1411
- 1411–1423 B. Measures under Enforcement Directive 2004/48/EC 1411–1423
- 1423–1631 C. Litigation in EU Member States 1423–1631
- 1423–1431 Austria 1423–1431
- 1431–1439 Belgium 1431–1439
- 1439–1445 Bulgaria 1439–1445
- 1445–1453 Croatia 1445–1453
- 1453–1459 Cyprus 1453–1459
- 1459–1467 Czech Republic 1459–1467
- 1467–1475 Denmark 1467–1475
- 1475–1480 Estonia 1475–1480
- 1480–1487 Finland 1480–1487
- 1487–1496 France 1487–1496
- 1496–1502 Germany 1496–1502
- 1502–1508 Greece 1502–1508
- 1508–1517 Hungary 1508–1517
- 1517–1524 Ireland 1517–1524
- 1524–1534 Italy 1524–1534
- 1534–1543 Latvia 1534–1543
- 1543–1554 Lithuania 1543–1554
- 1554–1564 Luxembourg 1554–1564
- 1564–1570 Malta 1564–1570
- 1570–1576 The Netherlands 1570–1576
- 1576–1581 Poland 1576–1581
- 1581–1585 Portugal 1581–1585
- 1585–1592 Romania 1585–1592
- 1592–1600 Slovakia 1592–1600
- 1600–1609 Slovenia 1600–1609
- 1609–1616 Spain 1609–1616
- 1616–1622 Sweden 1616–1622
- 1622–1631 United Kingdom 1622–1631
- 1631–1711 D. Annexes 1631–1711
- 1631–1653 Annex 1. DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast) 1631–1653
- 1653–1684 Annex 2. COMMISSION DELEGATED REGULATION (EU) 2018/625 of 5 March 2018 1653–1684
- 1684–1701 Annex 3. COMMISSION DELEGATED REGULATION (EU) 2018/625 of 5 March 2018 1684–1701
- 1701–1711 Annex 4. DIRECTIVE 2004/48/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL 1701–1711
- 1711–1757 E. Table of Cases 1711–1757
- 1757–1784 Index 1757–1784
