Council Regulation (EC) No 207/2009 (repealed)Dangos y teitl llawn

Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (codified version) (Text with EEA relevance) (repealed)

TITLE XIU.K.EFFECTS ON THE LAWS OF THE MEMBER STATES

SECTION 1U.K.Civil actions on the basis of more than one trade mark

Article 109U.K.Simultaneous and successive civil actions on the basis of [F1EU trade marks] and national trade marks

1.Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of [F1an] [F1EU trade mark] and the other seized on the basis of a national trade mark:

(a)the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;

(b)the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services.

2.The court hearing an action for infringement on the basis of [F1an] [F1EU trade mark] shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services.

3.The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical [F1EU trade mark] valid for identical goods or services.

4.Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including protective, measures.

Textual Amendments

SECTION 2U.K.Application of national laws for the purpose of prohibiting the use of [F1EU trade marks]

Article 110U.K.Prohibition of use of [F1EU trade marks]

1.This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 or Article 53(2) in relation to the use of a later [F1EU trade mark. Claims for infringement of earlier rights within the meaning of Article 8(2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the EU trade mark] is invalid in accordance with Article 54(2).

2.This Regulation shall, unless otherwise provided for, not affect the right to bring proceedings under the civil, administrative or criminal law of a Member Sate or under provisions of [F1Union law for the purpose of prohibiting the use of [F1an] [F1EU trade mark] to the extent that the use of a national trade mark may be prohibited under the law of that Member State or under Union] law.

Article 111U.K.Prior rights applicable to particular localities

1.The proprietor of an earlier right which only applies to a particular locality may oppose the use of the [F1EU trade mark] in the territory where his right is protected in so far as the law of the Member State concerned so permits.

2.Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the [F1EU trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the EU trade mark] was applied for in bad faith.

3.The proprietor of the [F1EU trade mark shall not be entitled to oppose use of the right referred to in paragraph 1 even though that right may no longer be invoked against the EU trade mark] shall.

SECTION 3U.K.Conversion into a national trade mark application

Article 112U.K.Request for the application of national procedure

1.The applicant for or proprietor of [F1an] [F1EU trade mark may request the conversion of his EU trade mark application or EU trade mark] into a national trade mark application:

(a)to the extent that the [F1EU trade mark] application is refused, withdrawn, or deemed to be withdrawn;

(b)to the extent that the [F1EU trade mark] ceases to have effect.

2.Conversion shall not take place:

(a)where the rights of the proprietor of the [F1EU trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the EU trade mark] has been put to use which would be considered to be genuine use under the laws of that Member State;

(b)for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the [F1EU trade mark application or EU trade mark].

3.The national trade mark application resulting from the conversion of [F1an] [F1EU trade mark application or [F1an] EU trade mark] shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 34 or 35.

4.In cases where [F1an] [F1EU trade mark] application is deemed to be withdrawn, the Office shall send to the applicant a communication fixing a period of three months from the date of that communication in which a request for conversion may be filed.

5.Where the [F1EU trade mark application is withdrawn or the EU trade mark ceases to have effect as a result of a surrender being recorded or of failure to renew the registration, the request for conversion shall be filed within three months after the date on which the EU trade mark application has been withdrawn or on which the EU trade mark] ceases to have effect.

6.Where the [F1EU trade mark application is refused by decision of the Office or where the EU trade mark] ceases to have effect as a result of a decision of the Office or of [F1an] [F1EU trade mark court], the request for conversion shall be filed within three months after the date on which that decision acquired the authority of a final decision.

7.The effect referred to in Article 32 shall lapse if the request is not filed in due time.

Textual Amendments

[F1Article 113] U.K. Submission, publication and transmission of the request for conversion

1.A request for conversion shall be filed with the Office and shall specify the Member States in which application of the procedure for registration of a national trade mark is desired. The request shall not be deemed to be filed until the conversion fee has been paid.

2.If the [F1EU trade mark] application has been published, receipt of any such request shall be recorded in the Register of [F1EU trade marks] and the request for conversion shall be published.

3.The Office shall check whether the conversion requested fulfils the conditions set out in this Regulation, in particular Article 112(1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with the formal conditions laid down in the Implementing Regulation. If these conditions are fulfilled, the Office shall transmit the request for conversion to the industrial property offices of the Member States specified therein.

[F26. The Commission shall adopt implementing acts specifying:

(a) the details to be contained in a request for conversion of an EU trade mark application or a registered EU trade mark into a national trade mark application pursuant to paragraph 1;

(b) the details which are to be contained in the publication of the request for conversion pursuant to paragraph 2.

Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).]

Textual Amendments

Article 114U.K.Formal requirements for conversion

1.Any central industrial property office to which the request for conversion is transmitted may obtain from the Office any additional information concerning the request enabling that office to make a decision regarding the national trade mark resulting from the conversion.

2.[F1An] [F1EU trade mark application or [F1an] EU trade mark] transmitted in accordance with Article 113 shall not be subjected to formal requirements of national law which are different from or additional to those provided for in this Regulation or in the Implementing Regulation.

3.Any central industrial property office to which the request is transmitted may require that the applicant shall, within not less than two months:

(a)pay the national application fee;

(b)file a translation in one of the official languages of the State in question of the request and of the documents accompanying it;

(c)indicate an address for service in the State in question;

(d)supply a representation of the trade mark in the number of copies specified by the State in question.

Textual Amendments