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Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark The functions of a trade mark distinguishing the goods or services of one undertaking from those of others channel of communication expression of lifestyle carrier of distinctive values identifying the origin Slide 2 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark The main legal provisions regarding the Community trade mark are contained in three Community Regulations, namely: Council Regulation No 40/94 of December 20 th, 1993 usually referred to as the CTMR Commission Regulation No 2868/95 of December 13 th, 1995 implementing Regulation 40/94 (EC) usually referred to as the CTMIR Commission Regulation No 2869/95 of December 13 th, 1995 on the fees payable to the Office Slide 3 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Three Key Principles of the Community trade mark system: coexistence unity autonomy Slide 4 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Languages to file applications : Languages which will be added with enlargement: Bulgarian, Rumanian Inter partes proceedings, e.g. opposition proceedings: English, French, German, Italian, Spanish All official languages of the European Union: Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Slovak, Slovene, Spanish and Swedish Slide 5 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Signs which may be registered as a CTM A Community trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings Slide 6 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark word marks including letters, numbers or combination of letters, numbers and words figurative marks, whether or not including words three-dimensional marks Slide 7 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark colours or combinations of colours Lilac/ purple, single colour as shown in the representation. The mark can be located in Pantone's Process Book between the shades with number E 176-4 and E 176-3. Slide 8 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark sound marks Slide 9 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark List of goods and services according to the Nice Agreement Slide 10 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Examples for Absolute grounds for refusal The sign will not be registered as a trade mark, if the sign exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service Slide 11 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Examples for Absolute grounds for refusal The sign will not be registered as a trade mark, if the sign signs which consist exclusively of the shape which results from the nature of the goods themselves, which is necessary to obtain a technical result or which gives substantial value to the goods Slide 12 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Examples for Absolute grounds for refusal The sign will not be registered as a trade mark, if the sign is contrary to public policy or to accepted principles of morality is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service Slide 13 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Examples for Absolute grounds for refusal The sign will not be registered as a trade mark, if the sign contains or consists of a geographical indication identifying wines or spirits and is applied for wine or spirit while they do not have that origin Slide 14 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Examples for Absolute grounds for refusal The sign will not be registered as a trade mark, if the sign contains or consists of a designation of origin or a geographical indication registered in accordance with Regulation (EEC) No 2081/92 when it correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication Slide 15 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark The CTM application will be refused on the basis of an earlier mark, if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier mark is protected; if because of its identity or similarity to the earlier trade mark and the identity or similarity to the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark; if it is identical or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier mark has a reputation and where that mark would suffer unfair advantage or detriments in respect of its distinctive character or its repute. Opposition proceedings based on a relative ground for refusal Slide 16 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark www.oami.eu.int Slide 17 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark www.oami.eu.int Slide 18 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Provisions in the Community trade mark Regulation dealing with geographical indications Article 7 (1) (c), (3) CTMR Article 12 (b) CTMR Article 64 CTMR: Community collective marks Slide 19 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Provisions in the Community trade mark Regulation dealing with geographical indications Article 7 (1) (c), (3) CTMR (1) The following sign shall not be registered: (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the geographical origin (3) Paragraph 1 (b), (c), (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Slide 20 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Slide 21 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Slide 22 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Provisions in the Community trade mark Regulation dealing with geographical indications Article 7 (1) (c), (3) CTMR (1) The following sign shall not be registered: (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the geographical origin (3) Paragraph 1 (b), (c), (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Slide 23 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Provisions in the Community trade mark Regulation dealing with geographical indications Article 12 (b) CTMR A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (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 services provided he uses them in accordance with honest practices in industrial or commercial matters. Slide 24 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Provisions in the Community trade mark Regulation dealing with geographical indications Article 64: Community collective marks In 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 Community collective marks within the meaning of paragraph 1. Slide 25 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Slide 26 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Slide 27 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Slide 28 Melanie Fiedler, Attorney at law 2005 Sofia The Community Trade Mark Description: The mark consists of the yell of the fictional character TARZAN, the yell consisting of five distinct phases, namely sustain, followed by ululation, followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency, and being represented by the representation set out below, the upper representation being a plot, over the time of the yell, of the normalised envelope of the air pressure waveform and the lower representation being a normalised spectogram of the yell consisting of a three dimensional depiction of the frequency content (colours as shown) versus the frequency (vertical axis) over the time of the yell (horizontal axis). sound marks