Jersey Law
15/2000
TRADE MARKS
(JERSEY) LAW 2000
____________
ARRANGEMENT OF ARTICLES
____________
PART I
|
PRELIMINARY
|
1.
|
Interpretation
|
PART II
|
REGISTERED TRADE MARKS
|
2.
|
Registrar
and other officers
|
3.
|
Register
of trade marks
|
4.
|
Registration
of title to trade marks
|
5.
|
Renewal
of registration
|
6.
|
Registered
licensees
|
7.
|
Cancellation of registration and registration of change of name
or address
|
8.
|
Presence in Island unnecessary for the purpose of making
applications
|
9.
|
Effect
of registration
|
10.
|
Power
of court to revoke registration
|
11.
|
Fees
|
PART III
|
COMMUNITY TRADE MARKS AND
PROTECTED INTERNATIONAL TRADE MARKS
|
12.
|
Community
trade marks
|
13.
|
Protected
international trade marks
|
PART IV
|
ADMINISTRATION AND OTHER
SUPPLEMENTARY PROVISIONS
|
14.
|
Rectification
of the register
|
15.
|
Power
to correct clerical errors
|
16.
|
Adaptation
of entries to UK registration
|
17.
|
Amendment
of filed regulations to be furnished to registrar
|
18.
|
Restrictions
on recovery of damages for infringement
|
19.
|
Remedy
for groundless threats of infringement proceedings
|
20.
|
Privilege for communications with trade mark agents or
professional representatives
|
21.
|
Use
of trade mark for export trade
|
22.
|
Infringing goods, material or articles may be treated as
prohibited goods
|
23.
|
Orders concerning the importation of infringing goods, material
or articles
|
24.
|
Power
of Agent of the Impôts to disclose information
|
25.
|
Unauthorized
use of trade mark in relation to goods
|
26.
|
Enforcement
function of inspectors of weights and measures
|
27.
|
Falsification
of register of trade marks
|
28.
|
False
representations in respect of trade marks
|
29.
|
Forfeiture
|
PART V
|
MISCELLANEOUS
|
30.
|
Offences
by partnerships and bodies corporate
|
31.
|
Accessories
and abettors
|
32.
|
Orders
|
33.
|
Rules
of Court
|
34.
|
Saving
of vested rights
|
35.
|
Saving
of rights of action for passing off
|
36.
|
Amendment
of Merchandise Marks (Jersey) Law 1958
|
37.
|
Repeals
and savings in relation to repealed legislation
|
38.
|
Short
title and commencement
|
SCHEDULE – PROVISIONS OF COMMUNITY TRADE MARK LEGISLATION
APPLIED TO THE ISLAND
|
TEXT OF THE PROVISIONS OF COUNCIL REGULATION (EC) No 40/94 OF 20
DECEMBER 1993 ON THE COMMUNITY TRADE MARK AS APPLICABLE IN THE ISLAND (for
information only – not part of this Law)
|
TRADE MARKS (JERSEY)
LAW 2000
____________
A LAW to make new provision for the
registration in the Island of trade marks; to allow for the recognition of
Community trade marks and to afford protection to certain international trade
marks; and for connected purposes; sanctioned by Order of Her Majesty in
Council of the
17th day of MAY 2000
____________
(Registered on the
26th day of May 2000)
____________
STATES OF JERSEY
____________
The 7th day of December 1999
____________
THE
STATES, subject to
the sanction of Her Most Excellent Majesty in Council, have adopted the
following Law –
PART I
PRELIMINARY
ARTICLE 1
Interpretation
(1) In
this Law, unless the context otherwise requires –
“business”
includes a trade or profession;
“certification
mark” means a mark indicating that the goods or services in connection
with which it is used are certified by the proprietor of the mark in respect of
origin, material, mode of manufacture of goods or performance of services,
quality, accuracy or other characteristics;
“collective
mark” means a mark distinguishing the goods or services of members of the
association which is the proprietor of the mark from those of other
undertakings;
“the
Committee” means the Finance and Economics Committee;
“Community
trade mark” has the same meaning as in the Community Trade Mark
Regulation;
“the
Community Trade Mark Regulation” means Council Regulation (EC) No. 40/94
of 20th December 1993 on the Community trade mark (O.J. No. L11 14.1.94, p.1);
“the
Comptroller-General” means the Comptroller-General of Patents, Designs
and Trade Marks in the United Kingdom;
“the
court” means the Royal Court;
“infringing
articles”, in relation to a registered trade mark, means articles –
(a) which are specifically
designed or adapted for making copies of a sign identical or similar to that
mark; and
(b) which a person has in
his possession, custody or control, knowing or having reason to believe that
they have been or are to be used to produce infringing goods or infringing
material;
“infringing
goods”, in relation to a registered trade mark, means goods which bear,
or the packaging of which bears, a sign identical or similar to that mark and
–
(a) the application of the
sign to the goods or their packaging was an infringement of the registered
trade mark;
(b) the goods are proposed
to be imported into the Island and the application of the sign in the Island to
them or their packaging would be an infringement of the registered trade mark;
or
(c) the sign has otherwise
been used in relation to the goods in such a way as to infringe the registered
trade mark;
“infringing
material”, in relation to a registered trade mark, means material which
bears a sign identical or similar to that mark and either –
(a) it is used for
labelling or packaging goods, as a business paper, or for advertising goods or
services, in such a way as to infringe the registered trade mark, or
(b) it is intended to be so
used and such use would infringe the registered trade mark.
“the
International Bureau” has the meaning giving by Article 2(1) of the
Madrid Protocol;
“international
trade mark” means a trade mark registered in the register of trade marks
maintained by the International Bureau for the purposes of the Madrid Protocol;
“the Madrid
Protocol” means the Protocol relating to the Madrid Agreement concerning
the International Registration of Marks, adopted at Madrid on 27th June 1989;
“prescribed”
means prescribed by Order made by the Committee;
“protected
international trade mark” means an international trade mark protected in
the United Kingdom by virtue of Regulations made under section 54 of the Trade
Marks Act;
“register”
means enter in the register of trade marks;
“the
register of trade marks” means the register of trade marks maintained
pursuant to Article 3;
“registered
licensee” means any person who is for the time being registered as such
under Article 6;
“registered
proprietor” means, in relation to a trade mark, any person for the time
being entered in the register of trade marks as a proprietor of the trade mark;
“registered
trade mark” means a trade mark that is currently entered in the register
of trade marks;
“registrar”
means the registrar of trade marks appointed pursuant to Article 2 and
“his seal” in relation to the registrar means a seal prepared under
that Article;
“the relevant
filed regulations” means –
(a) in relation to a
collective mark, the regulations governing the use of that mark which have been
filed with the Comptroller-General in accordance with paragraph 5 of Schedule 1
to the Trade Marks Act; and
(b) in relation to a
certification mark, the regulations governing the use of that mark which have
been filed with the Comptroller-General in accordance with paragraph 6 of
Schedule 2 to the Trade Marks Act;
“trade
mark” means –
(a) any sign capable of
being represented graphically which is capable of distinguishing goods or
services of one undertaking from those of other undertakings;
(b) a collective mark; or
(c) a certification mark,
and may, in
particular, consist of words (including personal names), designs, letters,
numerals or the shape of goods or their packaging;
“the Trade
Marks Act” means the Trade Marks Act 1994 of the United Kingdom;
“the United
Kingdom register of trade marks” means the register of trade marks
maintained pursuant to section 63 of the Trade Marks Act.
(2) References
in this Law to use (or to any particular description of use) of a trade mark,
or of a sign identical with, similar to, or likely to be mistaken for a trade
mark, include use (or that description of use) otherwise than by means of a
graphic representation.
(3) A
reference in this Law to an Article by number only, and without further
identification, is a reference to the Article of that number contained in this
Law.
(4) A
reference in an Article or other division of this Law to a paragraph or
sub-paragraph by number or letter only, and without further identification, is
a reference to the paragraph or sub-paragraph of that number or letter
contained in the Article or other division of this Law in which the reference
occurs.
(5) A
reference in this Law to an enactment (including any enactment of the United
Kingdom) is a reference to that enactment as amended, and includes a reference
to that enactment as extended or applied by or under any other enactment,
including any other provision of this Law.
PART II
REGISTERED
TRADE MARKS
ARTICLE 2
Registrar and
other officers
(1) The
Judicial Greffier shall be the registrar of trade marks.
(2) The
Committee may direct a seal or seals to be prepared for the authentication of
documents required for or in connection with the registration of trade marks.
(3) Any functions of the
registrar under this Law may, to the extent authorized by him, be exercised by
any officer on his staff.
(4) In
paragraph (3), “officer” has the same meaning as in the Civil
Service Administration (Jersey) Law 1953.
ARTICLE 3
Register of Trade
Marks
(1) There
shall be maintained at the Judicial Greffe a register of trade marks in which
there shall be entered –
(a) all trade marks
together with the names and addresses of their proprietors;
(b) particulars of
assignments and transmissions of registered trade marks;
(c) the names and addresses
of all registered licensees; and
(d) such other matters
relating to trade marks as may be prescribed or as the registrar may think fit.
(2) Save
as may otherwise be prescribed, the register of trade marks shall, at all
convenient times, be open to inspection by the public and certified copies of
any entry in the register shall be given to any person requiring them on
payment of the appropriate fee.
(3) The
register of trade marks shall be prima
facie evidence of any matters required or authorized by or under this Law
to be entered therein.
(4) No
notice of any trust, whether express, implied or constructive, shall be entered
in the register of trade marks and the registrar shall not be affected by any
such notice.
(5) No
title or interest in respect of any trade mark shall be entered in the rolls of
the Royal Court or registered in the register of trade marks otherwise than in
accordance with the provisions of this Law.
ARTICLE 4
Registration of
title to trade marks
(1) Any
person for the time being entered in the United Kingdom register of trade marks
as the proprietor of a trade mark may apply to the registrar for the
registration of that trade mark in respect of the goods or services comprised
in the United Kingdom registration.
(2) A
person who –
(a) has become entitled by
assignment, transmission or other operation of law, to the privileges and
rights conferred on a registered proprietor under this Law; and
(b) has obtained
registration in the United Kingdom of such title in accordance with the law for
the time being in force in the United Kingdom,
may apply to the
registrar for the registration of such title.
(3) Every
application under this Article shall –
(a) be made in such manner
as may be prescribed;
(b) be supported by a
certificate of the Comptroller-General setting forth the title of the applicant
to the trade mark; and
(c) in the case of an
application under paragraph (1), be accompanied by a certified representation
of the mark.
(4) Where
an application under this Article is for the registration of a certification
mark or a collective mark, the application shall be accompanied by a copy of
the relevant filed regulations amended where necessary to enable an authorized
user of such mark to use the mark in the Island.
(5) The
registration of a trade mark may be refused on the ground that it contains or
consists of –
(a) a geographical name, or
a surname, connected with the Island; or
(b) the Jersey flag or the
official Jersey crest comprising the three heraldic leopards unless it appears
to the registrar that consent has been given by or on behalf of the Bailiff.
(6) Subject
to paragraphs (7) to (9), on the receipt of an application under this Article
together with the documents required to accompany that application, the
registrar shall register the title and issue a certificate of registration.
(7) Where
it appears doubtful to the registrar whether the application should be granted,
or where any question arises in relation to the application, he shall present a
statement of the matter in question to the Bailiff for the directions of the
court, and the court may order such persons to be convened, such evidence to be
taken and such enquiries to be made as it considers necessary.
(8) Subject
to Rules of Court, the court shall determine whether any application referred
to it should be granted, and if granted, the registrar shall register the title
and issue a certificate of registration accordingly.
(9) Where
the application relates to a trade mark which is associated with another trade
mark registered in the name of a proprietor other than the applicant, the
registrar shall not register the title unless the applicant applies at the same
time to register the other trade mark.
ARTICLE 5
Renewal of
registration
(1) Where
a trade mark has been registered and its registration in the United Kingdom has
been renewed, the registered proprietor may apply to the registrar for
registration of the renewal in such manner as may be prescribed, and the
registrar shall, on production of sufficient evidence of the renewal in the
United Kingdom, register the renewal.
(2) Where
the registration of a trade mark has not been renewed and not less than 12 months
have elapsed since the expiry of the period for which it was registered under
section 42 of the Trade Marks Act, the registrar shall, having notified the
registered proprietor, remove that trade mark from the register of trade marks.
ARTICLE 6
Registered
licensees
(1) Where
a trade mark has been registered, any person for the time being granted a
licence to use that trade mark in the United Kingdom may apply to the registrar
for registration as a registered licensee of that trade mark in respect of the
goods or services comprised in the United Kingdom registration, being goods or
services in respect of which the trade mark is registered under this Law.
(2) Every
application shall be made in such manner as may be prescribed and shall be
supported by a certificate of the Comptroller-General relating to the United
Kingdom registration.
(3) Subject
to paragraphs (4) and (5), on the receipt of an application under this Article,
the registrar shall register the applicant as a registered licensee of the trade
mark in respect of the goods or services for which the application is made and
issue a certificate of registration.
(4) Where
it appears doubtful to the registrar whether the application should be granted,
or where any question arises in relation to the application, he shall present a
statement of the matter in question to the Bailiff for the directions of the
court, and the court may order such persons to be convened, such evidence to be
taken and such enquiries to be made as it considers necessary.
(5) Subject
to Rules of Court, the court shall determine whether any application referred
to it should be granted, and if granted, the registrar shall register the
applicant and issue a certificate of registration accordingly.
ARTICLE 7
Cancellation of
registration and registration of change of name or address
(1) The
registrar may, on request in writing made by the registered proprietor –
(a) cancel the registration
of a trade mark, either wholly or as regards any particular goods or services
in respect of which the trade mark is registered; or
(b) enter in the register
of trade marks any change of the name or address of the registered proprietor.
(2) The
registrar may, on request in writing made by a registered licensee of a trade
mark, enter in the register of trade marks any change in his name or address.
ARTICLE 8
Presence in
Island unnecessary for the purpose of making applications
(1) An
application under Article 4, 5, 6 or 7 may be made notwithstanding the fact
that neither the applicant nor any representative of his is present in the
Island provided that the applicant has notified the registrar of an address in
the Island to which any notice or summons in connection with any matter
relating to the trade mark may be sent.
(2) Any
notice or summons sent to the address notified to the registrar in accordance
with paragraph (1) shall be deemed to be sufficiently served.
ARTICLE 9
Effect of
registration
(1) Subject
to the provisions of this Law, the registered proprietor or registered licensee
of a registered trade mark shall have the same rights and remedies in the
Island regarding the use of that trade mark, in relation to the goods and
services in respect of which it is registered, as such proprietor or licensee,
as the case may be, possesses for the time being in the United Kingdom by
virtue of the trade mark or the title or interest in it being registered in the
United Kingdom register of trade marks, but, save as aforesaid, no person shall
be entitled to any rights or remedies in respect of any trade mark.
(2) Subject
to paragraph (3), the rights and remedies so conferred shall date from the date
of registration in the United Kingdom and shall continue in force for so long
only as the registration in the United Kingdom remains in force in respect of
the goods or services for which the trade mark is registered under this Law.
(3) No
action for infringement of a trade mark shall be entertained and no offence
under Article 25 shall be committed –
(a) in respect of any use
of the trade mark prior to its registration under this Law; or
(b) where the registration
of the trade mark in the United Kingdom has been renewed, unless such renewal
has been registered.
ARTICLE 10
Power of court to
revoke registration
(1) A
petition for the revocation of the registration of a trade mark may be
presented to the court by –
(a) the Attorney General or
by any person who alleges that his interests have been prejudicially affected
by such registration on the ground –
(i) that the trade
mark was registered on the application of a person not entitled under the
provisions of this Law to make the application; or
(ii) which is set out in
paragraph (5) of Article 4; or
(b) the Attorney General or
any person having a sufficient interest on the ground of any contravention of,
or failure to observe, a condition registered in relation to that trade mark.
(2) On
the presentation of any petition under this Article, the court may, after
considering the representations of any party to the proceedings, revoke the
registration or dismiss the petition and the registrar shall forthwith take
such action as the order of the court may require.
(3) In
proceedings under this Article, the court may determine any question which it
may consider necessary or expedient to determine in connection with the revocation
of the registration.
ARTICLE 11
Fees
(1) The
Committee may require the payment to the registrar of such fees as may be
prescribed in respect of –
(a) the performance by the
registrar of such functions under this Law as may be prescribed, including the
receipt by him of any document under this Law which is required to be delivered
to him; and
(b) the inspection of
copying of documents or other material held by him under this Law.
(2) The
registrar may charge a fee for any services provided by him otherwise than in
pursuance of any obligation imposed on him by this Law.
(3) Where
a fee is provided for or charged under this Article for performance of an act
or duty by the registrar, no action need be taken by him until the fee is paid,
and where the fee is payable on the receipt by him of a document required to be
delivered to him he shall be deemed not to have received it until the fee is
paid.
(4) Fees
paid to the registrar shall form part of the annual income of the States.
PART III
COMMUNITY
TRADE MARKS AND PROTECTED INTERNATIONAL TRADE MARKS
ARTICLE 12
Community trade
marks
(1) The
provisions of the Community Trade Mark Regulation specified in the Schedule to
this Law shall have full force and effect in the Island subject to the
exceptions, adaptations and modifications specified in paragraphs (2) to (4).
(2) Unless
the context otherwise requires, references to the Community Trade Mark
Regulation or to any provision thereof shall be construed as references to the
Regulation or provision as it has effect in the Island.
(3) In
relation to the Island, references to a Community trade mark court shall be
construed as references to the Royal Court and references to the Community
trade mark court of second instance shall be construed as references to the Court
of Appeal.
(4) The
Community Trade Mark Regulation shall be construed as if the Island were a
Member State.
(5) The
States may by Regulations make any provision they consider appropriate
(including amending this Law) to give further effect to the Community Trade
Mark Regulation and any amendments made thereto.
ARTICLE 13
Protected
international trade marks
(1) Subject
to the provisions of this Law, the proprietor or licensee of a protected
international trade mark shall have the same rights and remedies under this Law
regarding use of that trade mark, in relation to the goods and services in
respect of which it confers protection, as if he was a registered proprietor or
registered licensee, as the case may be, but, save as aforesaid, no person
shall be entitled to any rights or remedies in respect of any protected
international trade mark.
(2) References
in this Law to goods or services in respect of which a trade mark is registered
shall be construed as references to goods or services in respect of which a
protected international trade mark confers protection.
(3) Where
a protected international trade mark is subject to a disclaimer or limitation
which has been notified to the Comptroller-General, the rights and remedies
afforded by this Law shall have effect subject to such disclaimer or
limitation.
(4) The
States may by Regulations make such provision as they think fit (including
amending this Law) for giving further effect in the Island to the provisions of
the Madrid Protocol.
PART IV
ADMINISTRATION AND
OTHER.SUPPLEMENTARY.PROVISIONS
ARTICLE 14
Rectification of
register
(1) The
court may, on the application of the Attorney General or of any person having a
sufficient interest, order the register of trade marks to be rectified by the
making of any entry therein or the variation or deletion of any such entry and
the registrar shall forthwith take such action as the order may require.
(2) In
proceedings under this Article the court may determine any question which it
may be necessary or expedient to determine in connection with the rectification
of the register of trade marks.
ARTICLE 15
Power to correct
clerical errors
(1) Subject
to the following provisions of this Article, the registrar may, either at the
written request of a person having a sufficient interest or of his own motion,
correct any clerical error in the register of trade marks.
(2) Where
the registrar proposes to make a correction under paragraph (1) of his own
motion, he shall give notice of the proposal to the registered proprietor or
the registered licensee, as the case may require, and to any other person who
appears to him to have a sufficient interest, and shall give them an
opportunity to be heard before making the correction.
(3) Where
the registrar receives a written request to make a correction under paragraph
(1) and he considers that the correction would materially affect the privileges
and rights conferred by the registration, he shall require the person making
the request to apply to the court for the rectification of the register of
trade marks in accordance with Article 14.
ARTICLE 16
Adaptation of
entries to UK registration
The registrar
may, either at the written request of a person having sufficient interest or of
his own motion, make such amendment to or substitution of any entry in the
register as is necessary to bring it into conformity with the entry for the
time being in respect of that trade mark in the United Kingdom register of
trade marks.
ARTICLE 17
Amendment of
filed regulations to be furnished to registrar
Where the
Comptroller-General has accepted the amendment of the filed regulations to
which any registered collective mark or certification mark relates, the
registered proprietor shall, within six weeks of such acceptance, furnish to
the registrar a copy of the amended regulations duly certified by the
Comptroller-General, and, if he fails to do so, he shall be liable to a fine
for each day during which the default continues.
ARTICLE 18
Restrictions on
recovery of damages for infringement of registered trade marks
(1) Damages
shall not be awarded in proceedings for the infringement of a registered trade
mark against a defendant who proves that at the date of the infringement he was
not aware, and had no reasonable ground for supposing, that the trade mark was
registered.
(2) A
person shall not be deemed to have been aware or to have had reasonable grounds
for supposing that the trade mark was registered by reason only of the
application of the word “Registered” or any other word or words
referring expressly or impliedly to registration unless the words “in
Jersey” followed the word “Registered” or the words
“Registered in Jersey” accompanied that other word or those other
words.
(3) Nothing
in this Article shall affect the power of the court to grant an injunction in any
proceedings for infringement of a registered trade mark.
ARTICLE 19
Remedy for
groundless threats of infringement proceedings
(1) Where
a person threatens another with proceedings for infringement of a registered
trade mark, Community trade mark or protected international trade mark other
than –
(a) the application of that
mark to goods or their packaging;
(b) the importation of
goods to which, or to the packaging of which, the mark has been applied; or
(c) the supply of services
under the mark,
any person
aggrieved may bring proceedings in the court for relief under this Article.
(2) The
relief available under this Article is –
(a) a declaration that the
threats are unjustifiable;
(b) an injunction against
the continuance of the threats; and
(c) damages in respect of
any loss sustained by the threats.
(3) The
plaintiff is entitled to relief unless –
(a) the defendant shows
that the acts in respect of which proceedings were threatened constitute, or,
if done, would constitute, an infringement of the mark concerned; and
(b) the plaintiff is unable
to show that the registration (or, in the case of a protected international
trade mark, the protection) of the mark is invalid or liable to be revoked in a
relevant respect.
(4) The
mere notification –
(a) that a trade mark is
registered, or that an application for registration has been made; or
(b) in the case of a
protected international trade mark, that it is protected or is the subject of a
request for protection in the United Kingdom,
does not
constitute a threat of proceedings for the purposes of this Article.
ARTICLE 20
Privilege for
communications with trade mark agents or professional representatives
(1) Any
communication between a person and a person he has instructed –
(a) whose name is entered
in the register of trade mark agents kept under section 83 of the Trade Marks
Act; or
(b) who is on the list of
professional representatives maintained in pursuance of Article 89 of the
Community Trade Mark Regulation,
in relation to
the protection of any trade mark or any matter involving passing off, is
privileged from disclosure in the same way as a communication between a person
and his advocate or solicitor.
(2) Any
communication for the purpose of obtaining, or in response to a request for,
information which a person is seeking for the purpose of instructing a person
described in sub-paragraph (a) or (b) of paragraph (1) in relation to the
protection of any trade mark or any matter involving passing off, is privileged
from disclosure in the same way as a communication for the purpose of
obtaining, or in response to a request for, information which a person is
seeking for the purpose of instructing his advocate or solicitor.
ARTICLE 21
Use of trade mark
for export trade
The application
in the Island of a trade mark to goods or services to be exported from the
Island, and any other act done in the Island in relation to goods or services
to be so exported which, if done in relation to goods or services to be sold or
otherwise traded in within the Island, would constitute use of a trade mark
therein, shall be deemed to constitute use of the trade mark in relation to
those goods or services for any purpose for which such use is material under
this Law or under the customary law.
ARTICLE 22
Infringing goods,
material or articles may be treated as prohibited goods
(1) The
proprietor or licensee of a registered trade mark, Community trade mark or
protected international trade mark may give notice in writing to the Agent of
the Impôts –
(a) that he is the
proprietor or, as the case may be, a licensee of that mark;
(b) that, at a time and
place specified in the notice, goods which are, in relation to the mark,
infringing goods, material or articles are expected to arrive in the Island
–
(i) from outside the
European Economic Area; or
(ii) from within that Area
but not having been entered for free circulation; and
(c) that he requests the
Agent of the Impôts to treat them as prohibited goods.
(2) Where
a notice is in force under this Article, any goods to which the notice relates
which are imported otherwise than by a person for his private and domestic use
shall be liable to forfeiture (but a person shall not, by reason of the goods
being treated as prohibited, be liable to any other penalty in respect of
them).
(3) This
Article does not apply to goods entered, or expected to be entered for free
circulation, export, re-export or for a suspensive procedure in respect of
which an application may be made under Article 3(1) of Council Regulation (EC)
No. 3295/94 (O.J. No. L341. 30.12.94, p.8) laying down measures to prohibit the
release for free circulation, export, re-export or entry for a suspensive
procedure of counterfeit and pirated goods.
ARTICLE 23
Orders concerning
the importation of infringing goods, material or articles
(1) The
Committee may make Orders prescribing the form in which notice is to be given
under Article 22 and requiring a person giving notice –
(a) to furnish the Agent of
the Impôts with such evidence as may be specified in the Order, either on
giving notice or when the goods are imported, or at both these times; and
(b) to comply with such
other conditions as may be specified in the Order.
(2) An
Order may, in particular, require a person giving notice –
(a) to pay such fees in
respect of the notice as may be specified by the Order;
(b) to give such security
as may be so specified in respect of any liability or expense which the Agent
of the Impôts may incur in consequence of the notice by reason of the
detention of any goods or anything done to goods detained; and
(c) to indemnify the Agent
of the Impôts against any such liability or expense, whether security has
been given or not.
(3) Article
8 of the Customs and Excise (Jersey) Law 2000 applies to fees paid in pursuance
of an Order made under this Article as it applies to receipts under the
enactments relating to customs and excise.
ARTICLE 24
Power of Agent of
the Impôts to disclose information
Where information
relating to infringing goods, material or articles has been obtained by the
Agent of the Impôts for the purposes of, or in connection with, the
exercise of his functions in relation to imported goods, he may authorize the
disclosure of that information for the purpose of facilitating the exercise by
any person of any function in connection with the investigation or prosecution
of an offence under Article 25 or any enactment relating to trade descriptions.
ARTICLE 25
Unauthorized use
of trade mark in relation to goods
(1) A
person commits an offence who, with a view to gain for himself or another, or
with intent to cause loss to another, and without the consent of the proprietor
–
(a) applies to goods or
their packaging a sign identical to, or likely to be mistaken for, a registered
trade mark, Community trade mark or protected international trade mark;
(b) sells or lets for hire,
offers or exposes for sale or hire or distributes goods which bear, or the
packaging of which bears, such a sign; or
(c) has in his possession,
custody or control in the course of a business any such goods with a view to the
doing of anything, by himself of another, which would be an offence under
sub-paragraph (b).
(2) A
person commits an offence who, with a view to gain for himself or another, or
with intent to cause loss to another, and without the consent of the proprietor
–
(a) applies a sign
identical to, or likely to be mistaken for, a registered trade mark, Community
trade mark or protected international trade mark to material intended to be
used –
(i) for labelling or
packaging goods;
(ii) as a business paper in
relation to goods; or
(iii) for advertising goods;
(b) uses in the course of a
business material bearing such a sign for labelling or packaging goods, as a
business paper in relation to goods, or for advertising goods; or
(c) has in his possession,
custody or control in the course of a business any such material with a view to
the doing of anything, by himself of another, which would be an offence under
sub-paragraph (b).
(3) A
person commits an offence who, with a view to gain for himself or another, or
with intent to cause loss to another, and without the consent of the proprietor
–
(a) makes an article
specifically designed or adapted for making copies of a sign identical to, or
likely to be mistaken for, a registered trade mark, Community trade mark or
protected international trade mark; or
(b) has such an article in
his possession, custody or control in the course of a business,
knowing or having
reason to believe that it has been, or is to be, used to produce goods, or
material for labelling or packaging goods, as a business paper in relation to
goods, or for advertising goods.
(4) A person does not commit an offence
under this Article unless –
(a) the goods are goods in
respect of which the trade mark is registered; or
(b) the trade mark has a
reputation in the Island and the use of the sign takes or would take unfair
advantage of, or is or would be detrimental to, the distinctive character or
the repute of the trade mark.
(5) It
is a defence for a person charged with an offence under this Article to prove that
he believed on reasonable grounds that the use of the sign in the manner in
which it was used, or was to be used, was not an infringement of the trade
mark.
(6) A
person guilty of an offence under this Article shall be liable to a fine or to
imprisonment for a term not exceeding 10 years, or to both.
ARTICLE 26
Enforcement
function of inspectors of weights and measures
(1) Every
inspector of weights and measures appointed under Article 2 of the Weights and
Measures Law shall enforce the provisions of Article 25.
(2) The
following provisions of the Weights and Measures Law shall apply in relation to
the enforcement of Article 25 as they apply in relation to the enforcement of
that Law –
(a) Article 29 excluding
paragraph (3) (power of inspector with respect to certain documents);
(b) Article 31 (power to
make test purchases);
(c) Article 33 excluding
sub-paragraph (a) of paragraph (1) and sub-paragraph (b) of paragraph (2)
(general powers of inspection and entry); and
(d) Article 34 excluding
the reference to Article 28 in sub-paragraph (b) of paragraph (1) (obstruction
of inspectors).
(3) An
inspector of weights and measures may ascertain, by testing or otherwise any
goods seized and detained under the powers applied by virtue of sub-paragraph
(c) of paragraph (2), whether an offence under this Law has been committed.
(4) An
inspector of weights and measures seizing any goods or documents in the
exercise of the powers applied by virtue of sub-paragraphs (a) or (c) of
paragraph (2) shall inform the person from whom they are seized, and where the
owner of such goods –
(a) suffers loss by reason
of that seizure or by the goods being lost or damaged or deteriorating whilst
being detained in pursuance of such powers; and
(b) is not convicted of an
offence under this Law in relation to those goods,
the Committee
shall be liable to compensate him for the loss so suffered.
(5) Any
disputed question as to the right of or the amount of any compensation payable
under paragraph (4) shall be determined by a single arbiter appointed by the
parties or, failing agreement between the parties, by the registrar.
(6) Notwithstanding
Article 37 of the Weights and Measures Law, a person guilty of any offence
under Article 34 of that Law as applied by sub-paragraph (d) of paragraph (2)
shall be liable to a fine not exceeding level 4 on the standard scale.
(7) A
person who discloses to any person any information obtained by him in pursuance
of this Law other than in, or for the purpose of, the performance by him or any
other of functions under this Law shall be liable to a fine or to imprisonment
for a term not exceeding two years, or to both.
(8) Any
enactment which authorizes the disclosure of information for the purpose of
facilitating the enforcement of the Weights and Measures Law shall apply as if
–
(a) Article 25 of this Law
were contained in that Law; and
(b) the functions of any
person in relation to the enforcement of that Article were functions under this
Law.
(9) In
this Article “the Weights and Measures Law” means the Weights and
Measures (Jersey) Law 1967
ARTICLE 27
Falsification of
register of trade marks
A person who
–
(a) makes or causes to be
made –
(i) a false entry in
the register of trade marks; or
(ii) anything falsely
purporting to be a copy of an entry in that register; or
(b) produces or tenders or
causes to be produced or tendered in evidence any such thing,
knowing or having
reason to believe the entry or thing to be false shall be liable to
imprisonment for a term not exceeding two years or to a fine, or to both.
ARTICLE 28
False
representations in respect of trade marks
(1) A
person who –
(a) falsely represents that
a mark is a registered trade mark, a Community trade mark or a protected
international trade mark; or
(b) makes a false
representation as to the goods or services for which such a mark is registered,
knowing or having
reason to believe the representation to be false shall be liable to a fine.
(2) For
the purposes of this Article, the use in the Island in relation to a trade mark
of the words “Registered in Jersey”, or of any other word or symbol
referring, whether expressly or impliedly, to registration, shall be deemed to
import a reference to registration in the register of trade marks.
ARTICLE 29
Forfeiture
(1) Where,
in connection with the investigation or prosecution of a relevant offence
–
(a) goods which, or the
packaging of which, bears a sign identical to or likely to be mistaken for a
registered trade mark, Community trade mark or protected international trade
mark;
(b) material bearing such a
sign and intended to be used for labelling or packaging goods, as a business
paper in relation to goods, or for advertising goods; or
(c) articles specifically
designed or adapted for making copies of such a sign,
have come into
the possession of any person, he may apply to the court for an order for the
forfeiture of the goods, material or articles, and where the court is satisfied
that such an offence has been committed, it shall make such an order.
(2) For
the purposes of this Article the court may infer that a relevant offence has
been committed in relation any to goods, material or articles if it is
satisfied that such an offence has been committed in relation to goods,
material or articles which are representative of them, whether by reason of
being of the same design or part of the same consignment or batch, or
otherwise.
(3) Where
any goods, material or articles are forfeited under this Article the court
shall –
(a) direct that they be
destroyed in accordance with such directions as it may give; or
(b) if it considers it
appropriate to do so, direct that they shall be released to such person it may
specify, on condition that that person –
(i) causes the
offending sign to be erased, removed or obliterated; and
(ii) complies with any order
to pay costs which has been made against him in the proceedings for the order
for forfeiture.
(4) In
this Article “relevant offence” means –
(a) an offence under
Article 25;
(b) an offence under any
enactment relating to trades descriptions; or
(c) any offence involving
dishonesty or deception.
PART V
MISCELLANEOUS
ARTICLE 30
Offences by
partnerships and bodies corporate
(1) Proceedings
for an offence under this Law alleged to have been committed by a partnership
shall be brought against the partnership in the name of the firm and not that
of the partners, but without prejudice to any liability of the partners under
paragraph (3).
(2) A
fine imposed on a partnership on its conviction in proceedings for an offence
under this Law shall be paid out of the partnership assets.
(3) Where
a partnership is guilty of an offence under this Law, every partner, other than
a partner who is proved to have been ignorant of or to have attempted to
prevent the commission of the offence, is guilty of the offence and liable to
be proceeded against and punished accordingly.
(4) Where
an offence under this Law committed by a body corporate is proved to have been
committed with the consent or connivance of a director, manager, secretary or
other similar officer of the body corporate, or any person purporting to act in
any such capacity, he (as well as the body corporate) shall be guilty of that
offence and shall be liable to be proceeded against and punished accordingly.
ARTICLE 31
Accessories and
abettors
A person who
aids, abets, counsels or procures the commission of an offence under this Law
shall be liable to be dealt with, tried and punished as a principal offender.
ARTICLE 32
Orders
(1) The
Committee may by Order make provision for the purpose of carrying this Law into
effect and in particular, but without prejudice to the generality of the
foregoing, for prescribing any matter which may be prescribed under this Law.
(2) Provision
may, in particular, be made –
(a) as to the manner of
filing of applications and other documents;
(b) requiring and
regulating the translation of documents and the filing and authentication of
any translation;
(c) as to the service of
documents;
(d) authorizing the
rectification of irregularities of procedure;
(e) prescribing time limits
for anything required to be done in connection with any proceeding under this
Law; and
(f) providing for the
extension of any time limit so prescribed, or specified by the registrar,
whether or not it has already expired.
(3) An
Order made under this Law may –
(a) make different
provision in relation to different cases or circumstances; and
(b) contain such
incidental, supplementary or transitional provisions as the Committee may
consider necessary or expedient.
(4) The
Subordinate Legislation (Jersey) Law 1960 shall apply to Orders made under
this Law.
ARTICLE 33
Rules of Court
(1) Rules
of Court made under the Royal Court (Jersey) Law 1948 for the purposes of this Law and
proceedings thereunder may make provision –
(a) for the appointment of
advisers to assist the court in proceedings for infringement of trade marks and
proceedings under this Law, and for regulation the functions of such advisers;
(b) for enabling persons to
take proceedings under this Law in forma
pauperis;
(c) for the hearing by the
court in vacation of all such matters under this Law as may require to be
immediately or promptly heard.
(2) The
remuneration of any adviser appointed under Rules made in pursuance of this
Article shall be defrayed out of the annual income of the States.
ARTICLE 34
Saving of vested
rights
(1) Nothing
in this Law shall be deemed to derogate from such rights as may be possessed by
any person by virtue of the registration in the rolls of the Royal Court before
the coming into force of the Trade Marks (Jersey) Law 1958 of any document relating to a
trade mark.
(2) Nothing
in this Law shall entitle the registered proprietor or a registered licensee of
a registered trade mark to interfere with or restrain the use by any person of
a trade mark identical with or similar to it in relation to goods or services
for which that person or a predecessor in title of his has continuously used
that trade mark from a date prior to the registration in the United Kingdom of
the first-mentioned trade mark in respect of those goods in the name of the
registered proprietor or a predecessor in title of his.
ARTICLE 35
Saving of rights
of action for passing off
Nothing in this
Law shall affect rights of action against any person for passing off or the
remedies in respect thereof.
ARTICLE 36
Amendment of
Merchandise Marks (Jersey) Law 1958
The Merchandise
Marks (Jersey) Law 1958 is amended as follows –
(a) in Article 1 –
(i) for the
definition of “trade mark” in paragraph (1) there shall be
substituted the following definition –
“
‘trade mark’ means –
(a) a registered trade
mark, Community trade mark or protected international trade mark; or
(b) a trade mark registered
under the Trade Marks Act;” and
(ii) after paragraph (1)
there shall be inserted the following paragraph –
“(1A) Words
and phrases used in this Law shall, unless the context otherwise requires, have
the same respective meanings as in the Trade Marks (Jersey) Law 1999”;
and
(b) in Article 14 –
(i) for the words
“a certification trade mark registered under Article 4 of the Trade Marks
(Jersey) Law, 1958, or a certification trade mark registered or deemed to be
registered under section 37 of the Trade Marks Act, 1938” there shall be
substituted the words “a certification mark registered under Article 4 of
the Trade Marks (Jersey) Law 1999 or a certification mark registered or deemed
to be registered under the Trade Marks Act”; and
(ii) in the proviso for the
words “certification trade mark” there shall be substituted the
words “certification mark”.
ARTICLE 37
Repeals and
savings in relation to repealed legislation
(1) The
following Laws are repealed –
(a) the Trade Marks
(Jersey) Law 1958;
(b) the Trade Marks
(Amendment) (Jersey) Law 1969;9
(c) the Trade Marks
(Amendment No. 2) (Jersey) Law 1986; and
(d) the Trade Marks
(Amendment No. 3) (Jersey) Law 1987
(2) On
the commencement of this Law –
(a) any registered trade
mark registered or purported to be registered in accordance with the 1958 Law
(whether before or after the commencement of the Trade Marks Act) shall have
effect as if registered under this Law;
(b) an application for the
registration of a trade mark made under Article 4 of the 1958 Law or an
application for registration as a registered user under Article 6 of that Law
and not yet determined shall be treated as an application under Article 4 or
Article 6 of this Law as the case may be;
(c) any note indicating
that a trade mark registered under the 1958 Law is associated with any other
mark shall cease to have effect;
(d) a condition entered in
the register of trade marks kept under Article 3 of the 1958 Law shall cease to
have effect;
(e) a disclaimer or
limitation or an assignment or transmission entered in the register of trade
marks kept under Article 3 the 1958 Law shall have effect as if entered in the
register maintained under Article 3 of this Law; and
(f) any proceedings
begun under Article 10 or Article 11 of the 1958 Law but not yet determined
shall have effect as if begun under Article 10 or Article 14 of this Law as the
case may be.
(3) In
paragraph (2) “the 1958 Law” means the Trade Marks (Jersey) Law
1958
ARTICLE 38
Short title and
commencement
This Law may be
cited as the Trade Marks (Jersey) Law 2000 and shall come into force on such
day as the States may by Act appoint.
G.H.C. COPPOCK
Greffier of the
States.
SCHEDULE
(Article 12)
PROVISIONS OF COMMUNITY TRADE MARK
REGULATION APPLIED TO THE ISLAND
TITLE I: GENERAL
PROVISIONS
|
Article
1
|
(Community
trade mark)
|
Article
3
|
(Capacity
to act)
|
TITLE II: THE LAW
RELATING TO TRADE MARKS
|
Article
9
|
(Rights
conferred by a Community trade mark)
|
Article
10
|
(Reproduction
of Community trade marks in dictionaries)
|
Article
11
|
(Prohibition on the use of a Community trade mark registered in
the name of an agent or representative)
|
Article
12
|
(Limitation
of the effects of a Community trade mark)
|
Article
13
|
(Exhaustion of the rights conferred by a Community trade mark)
|
Article
14
|
(Complementary application of national law relating to
infringement)
|
Article
15
|
(Use
of Community trade marks)
|
Article
16
|
(Dealing with Community trade marks as national trade marks
|
Article
19
|
(rights
in rem), except paragraph 2
|
Article
22
|
(Licensing)
except –
|
|
in paragraph 1, the words “and for the whole of part of
the Community”;
|
|
paragraph 5
|
Article 23
|
(Effects vis-à-vis third parties), except
–
|
in paragraph 1 the words “17” and “in all the
Member States”;
|
paragraphs 3 and 4
|
TITLE VI: SURRENDER,
REVOCATION AND INVALIDITY
|
Article
53
|
(Limitation
in consequence of acquiescence)
|
Article
54
|
(Consequences
of revocation and invalidity)
|
TITLE VIII:
COMMUNITY COLLECTIVE MARKS
|
Article
64
|
(Community
collective marks), except paragraphs 2 and 3
|
Article
70
|
(Persons who are entitled to bring an action for infringement)
|
TITLE IX: PROCEDURE
|
Article
86
|
(Administrative
cooperation), except –
|
in
the first sentence the words “the Office and”
|
the
second sentence
|
TITLE X:
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS
|
Article
92
|
(Jurisdiction over infringement and validity), except paragraph
(d)
|
Article
95
|
(Presumption of validity – Defence as to the merits),
except –
|
|
in paragraph 1, the words from “unless to the end of the
paragraph;
|
|
paragraph 3
|
Article 97
|
(Applicable law)
|
Article 98
|
(Sanctions)
|
Article
99
|
(Provisional
and protective measures), except –
|
|
in paragraph 1 the words “or Community trade mark
application”
|
|
paragraph
2
|
Article
100
|
(Specific
rules on related actions), except paragraph 2
|
Article
101
|
(Jurisdiction of Community trade mark courts of second instance
– Further appeal)
|
Article
103
|
(Obligation
of the national court)
|
TITLE XI: EFFECTS
ON THE LAWS OF MEMBER STATES
|
Article
105
|
(Simultaneous and successive civil actions on the basis of
Community trade marks and national trade marks)
|
Article
106
|
(Prohibition of use of Community trade marks), except paragraph
1
|
Article
107
|
(Prior
rights applicable to particular localities)
|
TITLE XIII: FINAL
PROVISIONS
|
Article
142
|
(Compatibility
with other Community legal provisions)
|
TEXT OF THE
PROVISIONS OF COUNCIL REGULATION (EC) No 40/94 OF 20 DECEMBER 1993 ON THE
COMMUNITY TRADE MARK AS APPLICABLE IN THE ISLAND
(For information
only – not part of this Law)
THE COUNCIL OF
THE EUROPEAN UNION,
Having regard to
the Treaty establishing the European Community, and in particular Article 235 thereof,
Having regard to
the proposal from the Commission,
Having regard to
the opinion of the European Parliament,
Having regard to
the opinion of the Economic and Social Committee,
Whereas it is
desirable to promote throughout the Community a harmonious development of
economic activities and a continuous and balanced expansion by completing an
internal market which functions properly and offers conditions which are
similar to those obtaining in a national market; whereas in order to create a
market of this kind and make it increasingly a single market, not only must be
barriers to free movement of goods and services be removed and arrangements be
instituted which ensure that competition is not distorted, but, in addition,
legal conditions must be created which enable undertakings to adapt their
activities to the scale of the Community, whether in manufacturing and
distributing goods or in providing services; whereas for those purposes, trade
marks enabling the products and services of undertakings to be distinguished by
identical means throughout the entire Community, regardless of frontiers,
should feature amongst the legal instruments which undertakings have at their
disposal;
Whereas action by
the Community would appear to be necessary for the purpose of attaining the
Community’s said objectives; whereas such action involves the creation of
Community arrangements for trade marks whereby undertakings can by means of one
procedural system obtain Community trade marks to which uniform protection is given
and which produce their effects throughout the entire area of the Community;
whereas the principle of the unitary character of the Community trade mark thus
stated will apply unless otherwise provided for in this Regulation;
Whereas the
barrier of territoriality of the rights conferred on proprietors of trade marks
by the laws of the Member States cannot be removed by approximation of laws;
whereas in order to open up unrestricted economic activity in the whole of the
common market for the benefit of undertakings, trade marks need to be created
which are governed by a uniform Community law directly applicable in all Member
States;
Whereas since the
Treaty has not provided the specific powers to establish such a legal
instrument, Article 235 of the Treaty should be applied;
Whereas the
Community law relating to trade marks nevertheless does not replace the laws of
the Member States on trade marks; whereas it would not in fact appear to be
justified to require undertakings to apply for registration of their trade marks
as Community trade marks; whereas national trade marks continue to be necessary
for those undertakings which do not want protection of their trade marks at
Community level;
Whereas the
rights in a Community trade mark may not be obtained otherwise than by
registration, and registration is to be refused in particular if the trade mark
is not distinctive, if it is unlawful or if it conflicts with earlier rights;
Whereas the
protection afforded by a Community trade mark, the function of which is in
particular to guarantee the trade mark as an indication of origin, is absolute
in the case of identity between the mark and the sign and the goods or
services; whereas the protection applies also in cases of similarity between
the mark and the sign and the goods or services; whereas an interpretation
should be given of the concept of similarity in relation to the likelihood of
confusion; whereas the likelihood of confusion, the appreciation of which
depends on numerous elements and, in particular, on the recognition of the
trade mark on the market, the association which can be made with the used or
registered sign, the degree of similarity between the trade mark and the sign
and between the goods or services identified, constitutes the specific
condition for such protection;
Whereas it
follows from the principle of free flow of goods that the proprietor of a
Community trade mark must not be entitled to prohibit its use by a third party
in relation to goods which have been put into circulation in the Community, under
the trade mark, by him or with his consent, save where there exist legitimate
reasons for the proprietor to oppose further commercialization of the goods;
Whereas there is
not justification for protecting Community trade marks or, as against them, any
trade mark which has been registered before them, except where the trade marks
are actually used;
Whereas a
Community trade mark is to be regarded as an object of property which exists
separately from the undertakings whose goods or services are designated by it;
whereas accordingly, it must be capable of being transferred, subject to the
overriding need to prevent the public being misled as a result of the transfer.
It must also be capable of being charged as security in favour of a third party
and of being the subject matter of licences;
Whereas
administrative measures are necessary at Community level for implementing in
relation to every trade mark the trade mark law created by this Regulation;
whereas it is therefore essential, while retaining the Community’s
existing institutional structure and balance of powers, to establish an Office
for Harmonization in the Internal Market (trade marks and designs) which is
independent in relation to technical matters and has legal, administrative and
financial autonomy; whereas to this end it is necessary and appropriate that it
should be a body of the Community having legal personality and exercising the
implementing powers which are conferred on it by this Regulation, and that it
should operate within the framework of Community law without detracting from
the competencies exercised by the Community institutions;
Whereas it is
necessary to ensure that parties who are affected by decisions made by the
Office are protected by the law in a manner which is suited to the special
character of trade mark law; whereas to that end provision is made for an
appeal to lie from decisions of the examiners and of the various divisions of
the Office; whereas if the department whose decision is contested does not
rectify its decision it is to remit the appeal to a Board of Appeal of the
Office, which is to decide on it; whereas decisions of the Boards of Appeal
are, in turn, amenable to actions before the Courts of Justice of the European
Communities, which has jurisdiction to annul or to alter the contested
decision;
Whereas under
Council Decision 88/591/ECSC, EEC, Euratom of 24 October 1988 establishing a
Court of First Instance of the European Communities, as amended by Decision
93/350/Euratom, ECSC, EEC of 8 June 1993, that Court shall exercise at the
first instance the jurisdiction conferred on the Court of Justice by the
Treaties establishing the Communities – with particular regard to appeals
lodged under the second subparagraph of Article 173 of the EC Treaty –
and by the acts adopted in implementation thereof, save as otherwise provided
in an act setting up a body governed by Community law; whereas the jurisdiction
which this Regulation confers on the Court of Justice to cancel and reform
decisions of the appeal courts shall accordingly be exercised at the first
instance by the Court in accordance with the above Decision;
Whereas in order
to strengthen the protection of Community trade marks the Members States should
designate, having regard to their own national system, as limited a number as
possible of national courts of first and second instance having jurisdiction in
matters of infringement of validity of Community trade marks;
Whereas decisions
regarding the validity and infringement of Community trade marks must have
effect and cover the entire area of the Community, as this is the only way of
preventing inconsistent decisions on the part of the courts and the Office and
of ensuring that the unitary character of Community trade marks is not
undermined; whereas the rules contained in the Brussels Convention of
Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters
will apply to all actions at law relating to Community trade marks, save where
this Regulation derogates from those rules;
Whereas
contradictory judgments should be avoided in actions which involve the same
acts and the same parties and which are brought on the basis of a Community
trade mark and parallel national trade marks; whereas for this purpose, when
the actions are brought in the same Member State, the way in which this is to
be achieved is a matter for national procedural rules, which are not prejudiced
by this Regulation, whilst when the actions are brought in different Member
States, provisions modelled on the rules on lis pendens and related actions of
the abovementioned Brussels Convention appear appropriate;
Whereas in order
to guarantee the full autonomy and independence of the Office, it is considered
necessary to grant it an autonomous budget whose revenue comes principally from
fees paid by the users of the system; whereas however, the Community budgetary
procedure remains applicable as far as any subsidies chargeable to general
budget of the European Communities are concerned; whereas moreover, the
auditing of accounts should be undertaken by the Court of Auditors;
Whereas
implementing measures are required for the Regulation’s application,
particularly as regards the adoption and amendment of fees regulations and an
Implementing Regulation; whereas such measures should be adopted by the
Commission, assisted by a Committee composed of representatives of the Member
States, in accordance with the procedural rules laid down in Article 2,
procedure III(b), of Council Decisions 87/373/EEC of 13 July 1987 laying down
the procedures for the exercise of implementing powers conferred on the
Commission (6),
HAS ADOPTED THIS
REGULATION:
TITLE I: GENERAL
PROVISIONS
ARTICLE 1
Community trade
mark
1. A
trade mark for goods or services which is registered in accordance with the
conditions contained in this Regulation and in the manner herein provided is
hereinafter referred to as a ‘Community trade mark’.
2. A
Community trade mark shall have a unitary character. It shall have equal effect
throughout the Community: it shall not be registered, transferred or
surrendered or be the subject of a decision revoking the rights of the
proprietor or declaring it invalid, nor shall its use be prohibited, save in
respect of the whole Community. This principle shall apply unless otherwise
provided in this Regulation.
ARTICLE 2
* * * * * * *
ARTICLE 3
Capacity to act
For the purpose
of implementing this Regulation, companies or firms and other legal bodies
shall be regarded as legal persons if, under the terms of the law governing
them, they 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.
TITLE II: THE LAW
RELATING TO TRADE MARKS
ARTICLE 4
* * * * * * *
ARTICLE 5
* * * * * * *
ARTICLE 6
* * * * * * *
ARTICLE 7
* * * * * * *
ARTICLE 8
* * * * * * *
ARTICLE 9
Rights conferred
by a Community trade mark
1. A
Community trade mark shall confer on the proprietor exclusive rights therein.
The proprietor shall be entitled to prevent all third parties not having his
consent from using in the course of trade:
(a) any
sign which is identical with the Community trade mark in relation to goods or
services which are identical with those for which the Community trade mark is
registered;
(b) any
sign where, because of its identity with or similarity to the Community trade
mark and the identity or similarity of the goods or services covered by the
Community trade mark and the sign, there exists a likelihood of confusion on
the part of the public; the likelihood of confusion includes the likelihood of
association between the sign and the trade mark;
(c) any
sign which is identical with or similar to the Community trade mark in relation
to goods or services which are not similar to those for which the Community
trade mark is registered, where the latter has a reputation in the Community
and where use of that sign without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the Community trade
mark.
2. The
following, inter alia, may be prohibited under paragraph 1:
(a) affixing
the sign to the goods or to the packaging thereof;
(b) offering
the goods, putting them on the market or stocking them for these purposes under
that sign, or offering or supplying services thereunder;
(c) importing
or exporting the goods under that sign;
(d) using
the sign on business papers and in advertising.
3. The
rights conferred by a Community trade mark shall prevail against third parties
from the date of publication of registration of the trade mark. Reasonable
compensation may, however, be claimed in respect of matters arising after the
date of publication of a Community trade mark application, which matters would,
after publication of the registration of the trade mark, be prohibited by
virtue of that publication. The court seized of the case may not decide upon
the merits of the case until the registration has been published.
ARTICLE 10
Reproduction of
Community trade marks in dictionaries
If the
reproduction of a Community trade mark in a dictionary, encyclopaedia or
similar reference work gives the impression that it constitutes the generic
name of the goods or services for which the trade mark is registered, the
publisher of the work shall, at the request of the proprietor of the Community
trade mark, ensure that the reproduction of the trade mark at the latest in the
next edition of the publication is accompanied by an indication that it is a
registered trade mark.
ARTICLE 11
Prohibition on
the sue of a Community trade mark registered in the name of an agent or
representative
Where a Community
trade mark is registered in the name of the agent or representative of a person
who is the proprietor of that trade mark, without the proprietor’s
authorization, the latter shall be entitled to oppose the use of his mark by
his agent or representative if he has not authorized such use, unless the agent
or representative justifies his action.
ARTICLE 12
Limitation of the
effects of a Community trade mark
A Community trade
mark shall not entitle the proprietor to prohibit a third party from using in
the course of trade:
(a) his
own name or address;
(b) indications
concerning the kind, quality, quantity, intended purpose, value, geographical
origin, the time of production of the goods or of rendering of the service, or
other characteristics of the goods or service;
(c) the
trade mark where it is necessary to indicate the intended purpose of a product
or service, in particular as accessories or spare parts,
provided he uses
them in accordance with honest practises in industrial or commercial matters.
ARTICLE 13
Exhaustion of
the rights conferred by a
Community trade mark
1. A
Community trade mark shall not entitle the proprietor to prohibit its use in
relation to goods which have been put on the market in the Community under that
trade mark by the proprietor or with his consent.
2. Paragraph
1 shall not apply where there exists legitimate reasons for the proprietor to
oppose further commercialization of the goods, especially where the condition
of the goods is changed or impaired after they have been put on the market.
ARTICLE 14
Complementary
application of national law relating to infringement
1. The
effects of Community trade marks shall be governed solely by the provisions of
this Regulation. In other respects, infringement of a Community trade mark
shall be governed by the national law relating to infringement of a national
trade mark in accordance with the provisions of Title X.
2. This
Regulation shall not prevent actions concerning a Community trade mark being
brought under the law of Member States relating in particular to civil
liability and unfair competition.
3. The
rules of procedure to be applied shall be determined in accordance with the
provisions of Title X.
ARTICLE 15
Use of Community
trade marks
1. If,
within a period of five years following registration, the proprietor has not
put the Community trade mark to genuine use in the Community in connection with
the goods or services in respect of which it is registered, or if such use has
been suspended during an uninterrupted period of five years, the Community
trade mark shall be subject to the sanctions provided for in this Regulation,
unless there are proper reasons for non-use.
2. The
following shall also constitute use within the meaning of paragraph 1:
(a) use
of the Community trade mark in a form differing in elements which do not alter
the distinctive character of the mark in the form in which it was registered;
(b) affixing
of the Community trade mark to goods or to the packaging thereof in the
Community solely for the export purposes.
3. Use
of the Community trade mark with the consent of the proprietor shall be deemed
to constitute use by the proprietor.
ARTICLE 16
Dealing with
Community trade marks as national trade marks
1. Unless
Articles 17 to 24 provide otherwise, a Community trade mark as an object of
property shall be dealt with in its entirety, and for the whole area of the
Community, as a national trade mark registered in the Member State in which,
according to the Register of Community trade marks,
(a) the
proprietor has his seat or his domicile on the relevant date; or
(b) where
subparagraph (a) does not apply, the proprietor has an establishment on the
relevant date.
2. In
cases which are not provided for by paragraph 1, the Member State referred to
in that paragraph shall be the Member State in which the seat of the Office is
situated.
3. If
two or more persons are mentioned in the Register of Community trade marks as
joint proprietors, paragraph 1 shall apply to the joint proprietor first
mentioned; failing this, it shall apply to the subsequent joint proprietors in
the order in which they are mentioned. Where paragraph 1 does not apply to any
of the joint proprietors, paragraph 2 shall apply.
ARTICLE 17
* * * * * * *
ARTICLE 18
* * * * * * *
ARTICLE 19
Rights in rem
1. A
Community trade mark may, independently of the undertaking, be given as
security or be the subject of rights in rem.
2. *
* * * *
ARTICLE 20
* * * * * * *
ARTICLE 21
* * * * * * *
ARTICLE 22
Licensing
1. A
Community trade mark may be licensed for some or all to the goods or services
for which it is registered * * *. A licence may be exclusive or non-exclusive.
2. The
proprietor of a Community trade mark may invoke the rights conferred by the
trade mark against a licensee who contravenes any provision in his licensing
contract with regard to its duration, the form covered by the registration in
which the trade mark may be used, the scope of the goods or services for which
the licence is granted, the territory in which the trade mark may be affixed,
or the quality of the goods manufactured or of the services provided by the
licensee.
3. Without
prejudice to the provisions of the licensing contract, the licensee may bring
proceedings for infringement of a Community trade mark only if its proprietor
consents thereto. However, the holder of an exclusive licence may bring such
proceedings if the proprietor of the trade mark, after formal notice, does not
himself bring infringement proceedings within an appropriate period.
4. A
licensee shall, for the purpose of obtaining compensation for damage suffered
by him, be entitled to intervene in infringement proceedings brought by the
proprietor of the Community trade mark.
5. *
* * * *
ARTICLE 23
Effects vis-à-vis third parties
1. Legal
acts referred to in Article * * *, 19 and 22 concerning a Community trade mark
shall only have effects vis-à-vis third parties * * * after entry in the
Register. Nevertheless, such an act, before it is so entered, shall have effect
vis-à-vis third parties who have acquired rights in the trade mark after
the date of that act but who knew of the act at the date on which the rights
were acquired.
2. Paragraph
1 shall not apply in the case of a person who acquires the Community trade mark
or a right concerning the Community trade mark by way of transfer of the whole
of the undertaking or by any other universal succession.
3. *
* * * *
4. *
* * * *
ARTICLE 24
* * * * * * *
TITLE III:
APPLICATION FOR COMMUNITY TRADE MARKS
ARTICLE 25
* * * * * * *
ARTICLE 26
* * * * * * *
ARTICLE 27
* * * * * * *
ARTICLE 28
* * * * * * *
ARTICLE 29
* * * * * * *
ARTICLE 30
* * * * * * *
ARTICLE 31
* * * * * * *
ARTICLE 32
* * * * * * *
ARTICLE 33
* * * * * * *
ARTICLE 34
* * * * * * *
ARTICLE 35
* * * * * * *
TITLE IV: REGISTRATION PROCEDURE
ARTICLE 36
* * * * * * *
ARTICLE 37
* * * * * * *
ARTICLE 38
* * * * * * *
ARTICLE 39
* * * * * * *
ARTICLE 40
* * * * * * *
ARTICLE 41
* * * * * * *
ARTICLE 42
* * * * * * *
ARTICLE 43
* * * * * * *
ARTICLE 44
* * * * * * *
ARTICLE 45
* * * * * * *
TITLE V:
DURATION, RENEWAL AND ALTERATION OF COMMUNITY TRADE MARKS
ARTICLE 46
* * * * * * *
ARTICLE 47
* * * * * * *
ARTICLE 48
* * * * * * *
TITLE VI:
SURRENDER, REVOCATION AND INVALIDITY
ARTICLE 49
* * * * * * *
ARTICLE 50
* * * * * * *
ARTICLE 51
* * * * * * *
ARTICLE 52
* * * * * * *
ARTICLE 53
Limitation in
consequence of acquiescence
1. Where
the proprietor of a Community trade mark has acquiesced, for a period of five
successive years, in the use of a later Community trade mark in the Community
while being aware of such use, he shall no longer be entitled on the basis of
the earlier trade mark either to apply for a declaration that the later trade
mark is invalid or to oppose the use of the later trade mark in respect of the
goods or services for which the later trade mark has been used, unless
registration of the later Community trade mark was applied for in bad faith.
2. Where
the proprietor of an earlier national trade mark as referred to in Article 8(2)
or of another earlier sign referred to in Article 8(4) has acquiesced, for a
period of five successive years, in the use of a later Community trade mark in
the Member State in which the earlier trade mark or other earlier sign is
protected while being aware of such use, he shall no longer be entitled on the
basis of the earlier trade mark or of the other earlier sign either to apply
for a declaration that the later trade mark is invalid or to oppose the use of
the later trade mark in respect of the goods or services for which the later
trade mark has been used, unless registration of the later Community trade mark
was applied for in bad faith.
3. In
the case referred to in paragraphs 1 and 2, the proprietor of a later Community
trade mark shall not be entitled to oppose the use of the earlier right, even
though that right may no longer be invoked against the later Community trade
mark.
ARTICLE 54
Consequences of
revocation and invalidity
1. The
Community trade mark shall be deemed not to have had, as from the date of the
application for revocation or of the counterclaim, the effects specified in
this Regulation, to the extent that the rights of the proprietor have been
revoked. An earlier date, on which one of the grounds for revocation occurred,
may be fixed in the decision at the request of one of the parties.
2. The
Community trade mark shall be deemed not to have had, as from the outset, the
effects specified in this Regulation, to the extent that that trade mark has
been declared invalid.
3. Subject
to the national provisions relating either to claims for compensation for
damage caused by negligence or lack of good faith on the part of the proprietor
of the trade mark, or to unjust enrichment, the retroactive effect of
revocation or invalidity of the trade mark shall not affect:
(a) any
decision on infringement which has acquired the authority of a final decision
and been enforced prior to the revocation or invalidity decision;
(b) any
contract concluded prior to the revocation or invalidity decision, in so far as
it has been performed before that decision; however, repayment, to an extent
justified by the circumstances, of sums paid under the relevant contract, may
be claimed on grounds of equity.
ARTICLE 55
* * * * * * *
ARTICLE 56
* * * * * * *
TITLE VII: APPEALS
ARTICLE 57
* * * * * * *
ARTICLE 58
* * * * * * *
ARTICLE 59
* * * * * * *
ARTICLE 60
* * * * * * *
ARTICLE 61
* * * * * * *
ARTICLE 62
* * * * * * *
ARTICLE 63
* * * * * * *
TITLE VIII:
COMMUNITY COLLECTIVE MARKS
ARTICLE 64
Community
collective marks
1. 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. 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,
as well as legal persons governed by public law, may apply for Community
collective marks.
2. *
* * * *
3. *
* * *.*
ARTICLE 65
* * * * * * *
ARTICLE 66
* * * * * * *
ARTICLE 67
* * * * * * *
ARTICLE 68
* * * * * * *
ARTICLE 69
* * * * * * *
ARTICLE 70
Persons who are
entitled to bring an action for infringement
1. The
provisions of Article 22(3) and (4) concerning the rights of licensees shall
apply to every person who has authority to use a Community collective mark.
2. The
proprietor of a Community collective mark shall be entitled to claim
compensation of behalf of persons who have authority to use the mark where they
have sustained damage in consequence of unauthorized use of the mark.
ARTICLE 71
* * * * * * *
ARTICLE 72
* * * * * * *
TITLE IX: PROCEDURE
ARTICLE 73
* * * * * * *
ARTICLE 74
* * * * * * *
ARTICLE 75
* * * * * * *
ARTICLE 76
* * * * * * *
ARTICLE 77
* * * * * * *
ARTICLE 78
* * * * * * *
ARTICLE 79
* * * * * * *
ARTICLE 80
* * * * * * *
ARTICLE 81
* * * * * * *
ARTICLE 82
* * * * * * *
ARTICLE 83
* * * * * * *
ARTICLE 84
* * * * * * *
ARTICLE 85
* * * * * * *
ARTICLE 86
Administrative
cooperation
Unless otherwise
provided in this Regulation or in national laws, * * * the courts or
authorities of the Member States shall on request give assistance to each other
by communicating information or opening files for inspection. * * *.
ARTICLE 87
* * * * * * *
ARTICLE 88
* * * * * * *
ARTICLE 89
* * * * * * *
TITLE X:
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS
ARTICLE 90
* * * * * * *
ARTICLE 91
* * * * * * *
ARTICLE 92
Jurisdiction over
infringement and validity
The Community
trade mark courts shall have exclusive jurisdiction:
(a) for
all infringement actions and – if they are permitted under national law
– actions in respect of threatened infringement relating to Community
trade marks;
(b) for
actions for declaration of non-infringement, if they are permitted under
national law;
(c) for
all actions brought as a result of acts referred to in Article 9(3), second
sentence;
(d) *
* * * *
ARTICLE 93
* * * * * * *
ARTICLE 94
* * * * * * *
ARTICLE 95
Presumption of
validity – Defence as to the merits
1. The
Community trade mark courts shall treat Community trade mark as valid * * *.
2. The
validity of a Community trade mark may not be put in issue in an action for a
declaration of non-infringement.
3. *
* * * *
ARTICLE 96
* * * * * * *
ARTICLE 97
Applicable law
1. The
Community trade mark courts shall apply the provisions of this Regulation.
2. On
all matters not covered by this Regulation a Community trade mark court shall
apply its national law, including its private international law.
3. Unless
otherwise provided in this Regulation, a Community trade mark court shall apply
the rules of procedure governing the same type of action relating to a national
trade mark in the Member State where it has its seat.
ARTICLE 98
Sanctions
1. Where
a Community trade mark courts finds that the defendant has infringed or
threatened to infringe a Community trade mark, it shall, unless there are no
special reasons for not doing so, issue an order prohibiting the defendant from
proceeding with the acts which infringed or would infringe the Community trade
mark. It shall also take such measures in accordance with its national law as
are aimed at ensuring that this prohibition is complied with.
2. In
all other respects the Community trade mark court shall apply the law of the
Member State to which the acts of infringement or threatened infringement were
committed, including the private international law.
ARTICLE 99
Provisional and
protective measures
1. Application
may be made to the courts of Member State, including Community trade mark
courts, for such provisional, including protective, measures in respect of a
Community trade mark * * * as may be available under the law of that State in
respect of a national trade mark, even if, under this Regulation, a Community
trade mark court of another Member State has jurisdiction as to the substance
of the matter.
2. *
* * * *
ARTICLE 100
Specific rules on
related actions
1. A
Community trade mark court hearing an action referred to in Article 92, other
than an action for a declaration of non-infringement shall, unless there are
special grounds for continuing the hearing, of its own motion after hearing the
parties or at the request of one of the parties and after hearing the parties,
stay the proceedings where the validity of the Community trade mark is already
in issue before another Community trade mark court on account of a counterclaim
or where an application for revocation or for a declaration of invalidity has
been already been filed at the Office.
2. *
* * * *
3. Where
the Community trade mark court stays the proceedings it may order provisional
and protective measures for the duration of the stay.
ARTICLE 101
Jurisdiction of
Community trade mark courts of second instance – Further appeal
1. An
appeal to the Community trade mark courts of second instance shall lie from
judgments of the Community trade mark courts of first instance in respect of
proceedings arising from the actions and claims referred to in Article 92.
2. The
conditions under which an appeal may be lodged with a Community trade mark
court of second instance shall be determined by the national law of the Member
State in which that court is located.
3. The
national rules concerning further appeal shall be applicable in respect of judgments
of Community trade mark courts of second instance.
ARTICLE 102
* * * * * * *
ARTICLE 103
Obligation of the
national court
A national court
which is dealing with an action relating to a Community trade mark, other than
the action referred to in Article 92, shall treat the trade mark as valid.
ARTICLE 104
* * * * * * *
TITLE XI: EFFECTS
ON THE LAWS OF MEMBER STATES
ARTICLE 105
Simultaneous and
successive civil actions on the basis of Community trade marks and national
trade marks
1. Where
actions for infringement involving the same cause of action and between the
same parties are brought in the courts of different Member States, one seized
on the basis of a Community trade mark and the other seized on the basis of a
national trade mark:
(a) the
court other than the court first seized shall of its own motion decline
jurisdiction in favour of that court where the trade marks concerned are
identical and valid for identical goods or services. The court which would be
required to decline jurisdiction may stay its proceedings if the jurisdiction
of the other court is contested;
(b) the
court other than the court first seized may stay its proceedings where the
trade marks concerned are identical and valid for similar goods or services and
where the trade marks concerned are similar and valid for identical or similar
goods or services.
2. The
court hearing an action for infringement on the basis of a Community trade mark
shall reject the action if a final judgment on the merits has been given on the
same cause of action and between the same parties on the basis of an identical
national trade mark valid for identical goods or services.
3. The
court hearing an action for infringement on the basis of a national trade mark
shall reject the action if a final judgment on the merits has been given on the
same cause of action and between the same parties on the basis of an identical
Community trade mark valid for identical goods or services.
4. Paragraphs
1, 2 and 3 shall not apply in respect of provisional, including protective,
measures.
ARTICLE 106
Prohibition of
use of Community trade marks
1. *
* * * *
2. This
Regulation shall, unless otherwise provided for, not affect the right to bring
proceedings under the civil, administrative or criminal law of a Member State
or under provisions of Community law for the purpose of prohibiting the use of
a Community trade mark to the extent that the use of a national trade mark may
be prohibited under the law of that Member State or under Community law.
ARTICLE 107
Prior rights applicable
to particular localities
1. The
proprietor of an earlier right which only applies to a particular locality may
oppose the use of the Community trade mark in the territory where his right is
protected in so far as the law of the Member State concerned so permits.
2. Paragraph
1 shall cease to apply if the proprietor of the earlier right has acquiesced in
the use of the Community trade mark in the territory where his right is
protected for a period of five successive years, being aware of such use, unless
the Community trade mark was applied for in bad faith.
3. The
proprietor of the Community trade mark shall not be entitled to oppose use of
the right referred to in paragraph 1 even though that right may no longer be
invoked against the Community trade mark.
ARTICLE 108
* * * * * * *
ARTICLE 109
* * * * * * *
ARTICLE 110
* * * * * * *
TITLE XII: THE
OFFICE
ARTICLE 111
* * * * * * *
ARTICLE 112
* * * * * * *
ARTICLE 113
* * * * * * *
ARTICLE 114
* * * * * * *
ARTICLE 115
* * * * * * *
ARTICLE 116
* * * * * * *
ARTICLE 117
* * * * * * *
ARTICLE 118
* * * * * * *
ARTICLE 119
* * * * * * *
ARTICLE 120
* * * * * * *
ARTICLE 121
* * * * * * *
ARTICLE 122
* * * * * * *
ARTICLE 123
* * * * * * *
ARTICLE 124
* * * * * * *
ARTICLE 125
* * * * * * *
ARTICLE 126
* * * * * * *
ARTICLE 127
* * * * * * *
ARTICLE 128
* * * * * * *
ARTICLE 129
* * * * * * *
ARTICLE 130
* * * * * * *
ARTICLE 131
* * * * * * *
ARTICLE 132
* * * * * * *
ARTICLE 133
* * * * * * *
ARTICLE 134
* * * * * * *
ARTICLE 135
* * * * * * *
ARTICLE 136
* * * * * * *
ARTICLE 137
* * * * * * *
ARTICLE 138
* * * * * * *
ARTICLE 139
* * * * * * *
TITLE XIII: FINAL
PROVISIONS
ARTICLE 140
* * * * * * *
ARTICLE 141
* * * * * * *
ARTICLE 142
Compatibility
with other Community legal provisions
This Regulation
shall not affect Council Regulation (EEC) No. 2081/92 on the protection of
geographical indications and designations of origin for agricultural products
and foodstuffs of 14 July 1992, and in particular Article 14 thereof.
ARTICLE 143
* * * * * * *
This Regulation
shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels,
20 December 1993.
For the Council
The
President
A. BOURGEOIS