Council Regulation (EC) No 40/94 (repealed)Show full title

TITLE VIII U.K. COMMUNITY COLLECTIVE MARKS

Article 64 U.K. Community collective marks

1. A Community collective mark shall be a Community 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 Community collective marks.

2. 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. A collective mark shall 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.

3. The provisions of this Regulation shall apply to Community collective marks, unless Articles 65 to 72 provide otherwise.

Article 65 U.K. Regulations governing use of the mark

1. An applicant for a Community collective mark must submit regulations governing its use within the period prescribed.

2. The regulations governing use shall specify the persons authorized 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 64 (2) must authorize 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.

Article 66 U.K. Refusal of the application

1. In addition to the grounds for refusal of a Community trade mark application provided for in Articles 36 and 38, an application for a Community collective mark shall be refused where the provisions of Article 64 or 65 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality.

2. An application for a Community 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.

Article 67 U.K. Observations by third parties

Apart from the cases mentioned in Article 41, any person, group or body referred to in that Article may submit to the Office written observations based on the particular grounds on which the application for a Community collective mark should be refused under the terms of Article 66.

Article 68 U.K. Use of marks

Use of a Community 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 Community trade marks are fulfilled.

Article 69 U.K. Amendment of the regulations governing use of the mark

1. The proprietor of a Community collective mark must 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 65 or involve one of the grounds for refusal referred to in Article 66.

3. Article 67 shall apply 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.

Article 70 U.K. Persons who are entitled to bring an action for infringement

1. The provisions of Article 22 (3) and (4) concerning the rights of licensees shall apply to every person who has authority to use a Community collective mark.

2. The proprietor of a Community 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 unauthorized use of the mark.

Article 71 U.K. Grounds for revocation

Apart from the grounds for revocation provided for in Article 50, the rights of the proprietor of a Community 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 66 (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 69 (2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of those provisions.

Article 72 U.K. Grounds for invalidity

Apart from the grounds for invalidity provided for in Articles 51 and 52, a Community collective mark which is registered in breach of the provisions of Article 66 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.