Dealing with EU trade marks as national trade marks
1. Unless Articles 20 to 28 provide otherwise, an EU trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the Union, as a national trade mark registered in the Member State in which, according to the Register:
(a)
the proprietor has his seat or his domicile on the relevant date;
(b)
where point (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 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.
Transfer
1. An EU trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.
2. A transfer of the whole of the undertaking shall include the transfer of the EU trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking.
3. Without prejudice to paragraph 2, an assignment of the EU trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void.
4. On request of one of the parties a transfer shall be entered in the Register and published.
5. An application for registration of a transfer shall contain information to identify the EU trade mark, the new proprietor, the goods and services to which the transfer relates, as well as documents duly establishing the transfer in accordance with paragraphs 2 and 3. The application may further contain, where applicable, information to identify the representative of the new proprietor.
6. The Commission shall adopt implementing acts specifying:
(a)
the details to be contained in the application for registration of a transfer;
(b)
the kind of documentation required to establish a transfer, taking account of the agreements given by the registered proprietor and the successor in title;
(c)
the details of how to process applications for partial transfers, ensuring that the goods and services in the remaining registration and the new registration do not overlap and that a separate file, including a new registration number, is established for the new registration.
Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
7. Where the conditions applicable to the registration of a transfer, as laid down in paragraphs 1, 2 and 3, or in the implementing acts referred to in paragraph 6, are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, it shall reject the application for registration of the transfer.
8. A single application for registration of a transfer may be submitted for two or more trade marks, provided that the registered proprietor and the successor in title are the same in each case.
9. Paragraphs 5 to 8 shall also apply to applications for EU trade marks.
10. In the case of a partial transfer, any application made by the original proprietor pending with regard to the original registration shall be deemed to be pending with regard to the remaining registration and the new registration. Where such application is subject to the payment of fees and those fees have been paid by the original proprietor, the new proprietor shall not be liable to pay any additional fees with regard to such application.
11. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the EU trade mark.
12. Where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office.
13. All documents which require notification to the proprietor of the EU trade mark in accordance with Article 98 shall be addressed to the person registered as proprietor.
Transfer of a trade mark registered in the name of an agent
1. Where an EU 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 authorisation, the latter shall be entitled to demand the assignment of the EU trade mark in his favour, unless such agent or representative justifies his action.
2. The proprietor may submit a request for assignment pursuant to paragraph 1 of this Article to the following:
(a)
the Office, pursuant to Article 60(1)(b), instead of an application for a declaration of invalidity;
(b)
a European Union trade mark court (‘EU trade mark court’) as referred to in Article 123, instead of a counterclaim for a declaration of invalidity based on Article 128(1).
Rights in rem
1. An EU trade mark may, independently of the undertaking, be given as security or be the subject of rights in rem .
2. At the request of one of the parties, the rights referred to in paragraph 1 or the transfer of those rights shall be entered in the Register and published.
3. An entry in the Register effected pursuant to paragraph 2 shall be cancelled or modified at the request of one of the parties.
Levy of execution
1. An EU trade mark may be levied in execution.
2. As regards the procedure for levy of execution in respect of an EU trade mark, the courts and authorities of the Member States determined in accordance with Article 19 shall have exclusive jurisdiction.
3. On request of one the parties, the levy of execution shall be entered in the Register and published.
4. An entry in the Register effected pursuant to paragraph 3 shall be cancelled or modified at the request of one of the parties.
Insolvency proceedings
1. The only insolvency proceedings in which an EU trade mark may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests.
However, where the debtor is an insurance undertaking or a credit institution as defined in Directive 2009/138/EC of the European Parliament and of the Council ( 13 ) and Directive 2001/24/EC of the European Parliament and of the Council ( 14 ) , respectively, the only insolvency proceedings in which an EU trade mark may be involved are those opened in the Member State where that undertaking or institution has been authorised.
2. In the case of joint proprietorship of an EU trade mark, paragraph 1 shall apply to the share of the joint proprietor.
3. Where an EU trade mark is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the European Union Trade Marks Bulletin referred to in Article 116.
Licensing
1. An EU trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Union. A licence may be exclusive or non-exclusive.
2. The proprietor of an EU trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to:
(a)
its duration;
(b)
the form covered by the registration in which the trade mark may be used;
(c)
the scope of the goods or services for which the licence is granted;
(d)
the territory in which the trade mark may be affixed; or
(e)
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 an EU 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 EU trade mark.
5. On request of one of the parties the grant or transfer of a licence in respect of an EU trade mark shall be entered in the Register and published.
6. An entry in the Register effected pursuant to paragraph 5 shall be cancelled or modified at the request of one of the parties.
Procedure for entering licences and other rights in the Register
1. Article 20(5) and (6) and the rules adopted pursuant to it and Article 20(8) shall apply mutatis mutandis to the registration of a right in rem or transfer of a right in rem as referred to in Article 22(2), the levy of execution as referred to in Article 23(3), the involvement in insolvency proceedings as referred to in Article 24(3), as well as to the registration of a licence or transfer of a licence as referred to in Article 25(5), subject to the following:
(a)
the requirement relating to the identification of goods and services to which the transfer relates shall not apply in respect of a request for registration of a right in rem , of a levy of execution or of insolvency proceedings;
(b)
the requirement relating to the documents proving the transfer shall not apply where the request is made by the proprietor of the EU trade mark.
2. The application for registration of the rights referred to in paragraph 1 shall not be deemed to have been filed until the required fee has been paid.
3. The application for registration of a licence may contain a request to record a licence in the Register as one or more of the following:
(a)
an exclusive licence;
(b)
a sub-licence in the event that the licence is granted by a licensee whose licence is recorded in the Register;
(c)
a licence limited to only part of the goods or services for which the mark is registered;
(d)
a licence limited to part of the Union;
(e)
a temporary licence.
Where a request is made to record the licence as a licence listed in points (c), (d) and (e) of the first subparagraph, the application for registration of a licence shall indicate the goods and services, the part of the Union and the time period for which the licence is granted.
4. Where the conditions applicable to registration, as laid down in Articles 22 to 25, in paragraphs 1 and 3 of this Article and in the other applicable rules adopted pursuant to this Regulation, are not fulfilled, the Office shall notify the applicant of the deficiency. If the deficiency is not corrected within a period specified by the Office, it shall reject the application for registration.
5. Paragraphs 1 and 3 shall apply mutatis mutandis to applications for EU trade marks.
Effects vis-à-vis third parties
1. Legal acts referred to in Articles 20, 22 and 25 concerning an EU trade mark shall have effects vis-à-vis third parties in all the Member States only 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 EU trade mark or a right concerning the EU trade mark by way of transfer of the whole of the undertaking or by any other universal succession.
3. The effects vis-à-vis third parties of the legal acts referred to in Article 23 shall be governed by the law of the Member State determined in accordance with Article 19.
4. Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-à-vis third parties of bankruptcy or similar proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field.
The application for an EU trade mark as an object of property
Articles 19 to 27 shall apply to applications for EU trade marks.
Procedure for cancelling or modifying the entry in the Register of licences and other rights
1. A registration effected under Article 26(1) shall be cancelled or modified at the request of one of the persons concerned.
2. The application shall contain the registration number of the EU trade mark concerned and the particulars of the right for which registration is requested to be cancelled or modified.
3. The application for cancellation of a licence, a right in rem or an enforcement measure shall not be deemed to have been filed until the required fee has been paid.
4. The application shall be accompanied by documents showing that the registered right no longer exists or that the licensee or the holder of another right consents to the cancellation or modification of the registration.
5. Where the requirements for cancellation or modification of the registration are not satisfied, the Office shall notify the applicant of the deficiency. If the deficiency is not corrected within a period to be specified by the Office, it shall reject the application for cancellation or modification of the registration.
6. Paragraphs 1 to 5 of this Article shall apply mutatis mutandis to entries made in the files pursuant to Article 26(5).
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
