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 2
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 3
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) 4
C. Function To distinguish goods or services of the members of the association from those of other undertakings 5
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 6
E. Registration process Filing an application Application refused Examination Searches Application accepted Invalidity/Revocation Publication Registration Opposition Opposition rejected Appeal 7
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) 8
E.1.1 Sign Words Devices 3D Color per se Which can be represented graphically Other distinctive features (sound; smell ) Collective geographical trade mark! 9
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) 10
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 11
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 12
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 13
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 14
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 16
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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 22
E.7 Invalidity Grounds for invalidity = as for individual marks Specificities : Regulation contrary to public policy Misleading character of the mark 23
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 24
G. Distinction with other signs and/or labels 1. Individual trade marks 2. Certification marks 3. Some other European labels of quality 25
G.1 Individual trade marks Same regulation except what was just mentioned Sign likely to be protected Individual Distinctive No geographical origin Collective 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 Possibility to affix simultaneously both kind of marks 26
G. 2 Certification mark No European regulation 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 27
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) 28
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 29
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B. Common features (1/3) Proprietor : Group of producers or processors of the concerned products 31
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! 32
B. Common features (3/3) Users : One meets the criteria of the regulation of use Control : Authorities/bodies designated by the Member States 33
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 34
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 36
Q&A Thank you for your attention 37
Contact details Annick Mottet Haugaard Partner annick.mottet@lydian.be +32 2 787.90.13 www.lydian.be Tel: +32 2 787.90.00 Fax: +32 2 787.90.99. 38