Geography Reference
In-Depth Information
European Member States may be registered as collective or certification marks.
The Community Trade Mark Regulation provides for the registration of
Community collective marks in Title VIII (Arts 66-74), but currently contains
no provisions for the registration of certification marks. A study on behalf of the
Commission by the Max Planck Institute for Intellectual Property and Com-
petition Law carried out between November 2009 and February 2011 proposed
the addition of certification marks to the Community Trade Marks Regu-
lation.
116
Following consultations with various stakeholders, on 2 April 2013
the EU Council released a proposed amending regulation, mentioned above,
containing a suite of certification marks provisions.
117
These are detailed below.
This proposed regulation also contains provisions aligning the protection which
Art 7(1)(j) and (k) offers to GIs to that contained in the European geographical
indications regulations.
6.85
The Trade Marks Directive in Art 15(2) permits Member States by way of
derogation from Art 3(1)(c) to provide that signs or indications which may
serve, in trade, to designate the geographical origin of the goods or services may
constitute collective, guarantee or certification marks. However, it also provides
that such a mark does not entitle the proprietor to prohibit a third party from
using in the course of trade such signs or indications, provided he uses them in
accordance with honest practices in industrial or commercial matters; in
particular, such a mark may not be invoked against a third party who is entitled
to use a geographical name.
1. Community collective marks
6.86
Title VIII of the Community Trade Mark Regulation provides for the registra-
tion of collective marks. However, very few of these marks have been registered.
Only 89 were registered in 2012 and from 1996 to 2013 1268 collective marks
were registered at OHIM compared with more than 1.1 million individual
Community trade marks over that period.
118
This is attributed to their 'lack of
promotion', an unclear legal framework and 'confusion arising due to an overlap
with other rights, such as geographical indications and certification trademarks'
and 'wrong filing strategies'.
119
116
See http://ec.europa.eu/internal_market/indprop/tm/index_en.htm.
117
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.
118
Dimitris Botis, Deputy Director for Legal Affairs at OHIM, '
Collective and certification marks in the EU
'
www.worldipreview.com/news/ecta-2013-explaining-the-mysterious-collective-ctm.
119
Ibid.
