Amendments to Community Trademark Regulation now in force

European Union

Council Regulation 422/2004, which amends the Community Trademark Regulation, has come into force.

Some of the more important amendments include the following:

  • Article 5 is amended to lift the restrictions on the ownership of Community trademarks so that any natural or legal person, including authorities established under public law, can now own such a mark.

  • The list of absolute grounds for refusal in Article 7(1) now includes point (k), which prohibits the registration of trademarks that (i) contain or consist of designations of origin or geographical indications that have been registered pursuant to Council Regulation 2081/92, and (ii) fall into one of the categories set out in Article 13 of Regulation 2081/92.

  • Article 21, which covers Community trademarks in relation to insolvency proceedings, has been revised so that the only insolvency proceedings in which a Community trademark may be involved are those opened in the member state in the territory of which the debtor has its centre of main interests. An exception exists where the debtor is an insurance company or credit institution. In such cases, the only insolvency proceedings in which a Community trademark may be involved are those opened in the member state where that company or institution has been authorized.

  • New Articles 44a and 48a have been inserted. These articles provide for the division of Community trademark applications and registrations.

  • Article 77a has been added and allows the ex officio revocation of decisions where the Office for Harmonization in the Internal Market has made an obvious procedural error.

  • A New Article 78a indicates that the continuation of proceedings is possible if a party has failed to observe a time limit. However, this provision only applies to certain time limits.

Peter Heinrich, Lenz & Staehelin, Zurich

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