Geography Reference
In-Depth Information
February 2011.
8
The study involved consultations with stakeholders. The Final
Report found that further convergence of trade mark laws and practices in the
EU was required. The Council accepted the findings of this report in its
Conclusions of 25 May 2010.
9
On 2 April 2013 the EU Council released a
proposed amending regulation.
10
Article 1 of this instrument proposes that as a
consequence of the entry into force of the Lisbon Treaty, the terminology of the
Community Trade Mark Regulation should be updated by changing 'Com-
munity trade mark' to 'European trade mark'. It also proposed that Art 2(1) be
amended to replace 'the Office for Harmonisation in the Internal Market' with
the 'European Union Trade Marks and Designs Agency'.
6.05
In this chapter the previous terminology is used. A subsequent edition of this
topic will update the terminology when the proposed regulation is adopted.
6.06
This chapter addresses those aspects of European trade marks law which bear
on geographical marks.
1. Distinctiveness
6.07
Article 3(1)(b) of the Trade Marks Directive
11
and Art 7(1)(c) of the Com-
munity Trade Marks Regulation provide that 'trade marks which are devoid of
any distinctive character' shall not be registered or if registered shall be liable to
be declared invalid.
6.08
As the OHIM Trade Marks Examination Manual
12
emphasises, Art 7(1)(c) of
the Community Trade Marks Regulation does not exclude GIs as such from
registration, but 'trade marks which consist exclusively of signs or indications
which may serve, in trade, to designate the kind, quality, geographical origin or
other characteristics of the goods or services'.
13
As with all other descriptive
terms, the test is whether the geographic term describes objective characteris-
tics of the goods and services, assessed with reference to the goods and services
8
See Max Planck Institute for Intellectual Property and Competition Law,
Study on the Overall Functioning of
the European Trade Mark System
, Munich, 15.02.2011 http://ec.europa.eu/internal_market/indprop/tm/
index_en.htm.
9
Competitiveness Council Conclusions of 25 May 2010 on the future revision of the Trade Mark system in the
EU, OJ C 140, 29.5.2010, p. 22.
10
Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC)
No 207/2009 on the Community trade mark, COM(2013) 161 final, 2 April 2013.
11
Article 7(1)(b) of the Community Trade Mark Regulation.
12
OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade
Marks and Designs), Part B, Examination (hereinafter 'the OHIM Trade Marks Manual'.
13
Ibid, at 37.
