SECTION 1 — EU collective marks
EU collective marks
1. A European Union collective mark (‘EU collective mark’) shall be an EU 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 EU collective marks.
2. By way of derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute EU collective marks within the meaning of paragraph 1. An EU collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided that he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark shall not be invoked against a third party who is entitled to use a geographical name.
3. Chapters I to VII and IX to XIV shall apply to EU collective marks to the extent that this section does not provide otherwise.
Regulations governing use of an EU collective mark
1. An applicant for an EU collective mark shall submit regulations governing use within two months of the date of filing.
2. The regulations governing use shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including sanctions. The regulations governing use of a mark referred to in Article 74(2) shall authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.
3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Refusal of the application
1. In addition to the grounds for refusal of an EU trade mark application provided for in Articles 41 and 42, an application for an EU collective mark shall be refused where the provisions of Articles 74 or 75 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality.
2. An application for an EU collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.
3. An application shall not be refused if the applicant, as a result of amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2.
Observations by third parties
Where written observations on an EU collective mark are submitted to the Office pursuant to Article 45, those observations may also be based on the particular grounds on which the application for an EU collective mark should be refused pursuant to Article 76.
Use of marks
Use of an EU collective mark by any person who has authority to use it shall satisfy the requirements of this Regulation, provided that the other conditions which this Regulation imposes with regard to the use of EU trade marks are fulfilled.
Amendment of the regulations governing use of the EU collective mark
1. The proprietor of an EU collective mark shall submit to the Office any amended regulations governing use.
2. The amendment shall not be mentioned in the Register if the amended regulations do not satisfy the requirements of Article 75 or involve one of the grounds for refusal referred to in Article 76.
3. Written observations made in accordance with Article 77 may also be submitted with regard to amended regulations governing use.
4. For the purposes of applying this Regulation, amendments to the regulations governing use shall take effect only from the date of entry of the mention of the amendment in the Register.
Persons who are entitled to bring an action for infringement
1. The provisions of Article 25(3) and (4) concerning the rights of licensees shall apply to every person who has authority to use an EU collective mark.
2. The proprietor of an EU collective mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage in consequence of unauthorised use of the mark.
Grounds for revocation
Apart from the grounds for revocation provided for in Article 58, the rights of the proprietor of an EU collective mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, if:
(a)
the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;
(b)
the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 76(2);
(c)
an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of the provisions of Article 79(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of those provisions.
Grounds for invalidity
Apart from the grounds for invalidity provided for in Articles 59 and 60, an EU collective mark which is registered in breach of the provisions of Article 76 shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of those provisions.
SECTION 2 — EU certification marks
EU certification marks
1. An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.
2. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.
3. Chapters I to VII and IX to XIV shall apply to EU certification marks to the extent that this Section does not provide otherwise.
Regulations governing use of an EU certification mark
1. An applicant for an EU certification mark shall submit regulations governing the use of the EU certification mark within two months of the date of filing.
2. The regulations governing use shall specify the persons authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark. Those regulations shall also specify the conditions of use of the mark, including sanctions.
3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Refusal of the application
1. In addition to the grounds for refusal of an EU trade mark application provided for in Articles 41 and 42, an application for an EU certification mark shall be refused where the conditions set out in Articles 83 and 84 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality.
2. An application for an EU certification mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.
3. An application shall not be refused if the applicant, as a result of an amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2.
Observations by third parties
Where written observations on an EU certification mark are submitted to the Office pursuant to Article 45, those observations may also be based on the particular grounds on which the application for an EU certification mark should be refused pursuant to Article 85.
Use of the EU certification mark
Use of an EU certification mark by any person who has authority to use it pursuant to the regulations governing use referred to in Article 84 shall satisfy the requirements of this Regulation, provided that the other conditions laid down in this Regulation with regard to the use of EU trade marks are fulfilled.
Amendment of the regulations governing use of the EU certification mark
1. The proprietor of an EU certification mark shall submit to the Office any amended regulations governing use.
2. Amendments shall not be mentioned in the Register where the regulations as amended do not satisfy the requirements of Article 84 or involve one of the grounds for refusal referred to in Article 85.
3. Written observations in accordance with Article 86 may also be submitted with regard to amended regulations governing use.
4. For the purposes of this Regulation, amendments to the regulations governing use shall take effect only as from the date of entry of the mention of the amendment in the Register.
Transfer
By way of derogation from Article 20(1), an EU certification mark may only be transferred to a person who meets the requirements of Article 83(2).
Persons who are entitled to bring an action for infringement
1. Only the proprietor of an EU certification mark, or any person specifically authorised by him to that effect, shall be entitled to bring an action for infringement.
2. The proprietor of an EU certification mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage as a consequence of unauthorised use of the mark.
Grounds for revocation
In addition to the grounds for revocation provided for in Article 58, the rights of the proprietor of an EU certification mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, where any of the following conditions is fulfilled:
(a)
the proprietor no longer complies with the requirements set out in Article 83(2);
(b)
the proprietor does not take reasonable steps to prevent the EU certification mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;
(c)
the manner in which the EU certification mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 85(2);
(d)
an amendment to the regulations governing use of the EU certification mark has been mentioned in the Register in breach of Article 88(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article.
Grounds for invalidity
In addition to the grounds for invalidity provided for in Articles 59 and 60, an EU certification mark which is registered in breach of Article 85 shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the EU certification mark, by amending the regulations governing use, complies with the requirements of Article 85.
Conversion
Without prejudice to Article 139(2), conversion of an application for an EU certification mark or of a registered EU certification mark shall not take place where the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to Article 28 of Directive (EU) 2015/2436.
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
