Article 74a / EU certification marks
1. An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.
2. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.
3. Titles I to VII and IX to XIV shall apply to EU certification marks to the extent that this Section does not provide otherwise.
Article 74b / Regulations governing use of the EU certification mark
1. An applicant for an EU certification mark shall submit regulations governing the use of the certification mark within two months of the date of filing.
2. The regulations governing use shall specify the persons authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark. Those regulations shall also specify the conditions of use of the mark, including sanctions.
3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).
Article 74c / Refusal of the application
1. In addition to the grounds for refusal of an EU trade mark application provided for in Articles 36 and 37, an application for an EU certification mark shall be refused where the conditions set out in Articles 74a and 74b are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality.
2. An application for an EU certification 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 certification mark.
3. An application shall not be refused if the applicant, as a result of an amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2.
Article 74d / Observations by third parties
Where written observations on an EU certification mark are submitted to the Office pursuant to Article 40, those observations may also be based on the particular grounds on which the application for an EU certification mark should be refused pursuant to Article 74c.
Article 74e / Use of the EU certification mark
Use of an EU certification mark by any person who has authority to use it according to the regulations governing use referred to in Article 74b shall satisfy the requirements of this Regulation, provided that the other conditions laid down in this Regulation with regard to the use of EU trade marks are fulfilled.
Article 74f / Amendment of the regulations governing use of the mark
1. The proprietor of an EU certification mark shall submit to the Office any amended regulations governing use.
2. Amendments shall not be mentioned in the Register where the regulations as amended do not satisfy the requirements of Article 74b or involve one of the grounds for refusal referred to in Article 74c.
3. Written observations in accordance with Article 74d may also be submitted with regard to amended regulations governing use.
4. For the purposes of this Regulation, amendments to the regulations governing use shall take effect only as from the date of entry of the mention of the amendment in the Register.
Article 74g / Transfer
By way of derogation from Article 17(1), an EU certification mark may only be transferred to a person who meets the requirements of Article 74a(2).
Article 74h / Persons who are entitled to bring an action for infringement
1. Only the proprietor of an EU certification mark, or any person specifically authorised by him to that effect, shall be entitled to bring an action for infringement.
2. The proprietor of an EU certification mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage as a consequence of unauthorised use of the mark.
Article 74i / Grounds for revocation
In addition to the grounds for revocation provided for in Article 51, the rights of the proprietor of an EU certification mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, where any of the following conditions is fulfilled:
(a)
the proprietor no longer complies with the requirements set out in Article 74a(2);
(b)
the proprietor does not take reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;
(c)
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 74c(2);
(d)
an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of Article 74f(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article.
Article 74j / Grounds for invalidity
In addition to the grounds for invalidity provided for in Articles 52 and 53, an EU certification mark which is registered in breach of Article 74c 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 Article 74c.
Article 74k / Conversion
Without prejudice to Article 112(2), conversion of an application for an EU certification mark or of a registered EU certification mark shall not take place where the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to Article 28 of Directive (EU) 2015/2436 of the European Parliament and of the Council.’.
