欧州連合商標(EUTM)の団体商標と新しい証明商標

european union

欧州連合商標の団体商標(collective mark)と証明商標(certification mark)

共同体商標(CTM)から欧州連合商標(EUTM)へと名称を変更した今回の法改正の第2弾の1つとして、欧州連合商標の1つの形態として2017年10月1日より証明商標(certification mark)が新たに出願可能となります。欧州連合商標には、元々団体商標(collective mark)制度があり、いくつかの締約国には証明商標も存在していましたが、そこに欧州連合商標レベルでの証明商標制度が追加されることになります。この証明商標により、商標の種類(TMView: kind of mark, eSearch+: nature of mark)は、individual(一般)、collective(団体)、certification(証明)の3種類となります。団体商標は団体自体や構成員との関係を標章で表示するのに対して、証明商標は証明される品質を標章で表示することになります。

証明商標の特徴

証明商標は証明される品質を標章で表示することになりますので、証明商標の特徴としては、証明するような商品や役務を提供する業務を行っている者は、証明商標の所有者にはなれないという点と、地理的な出所に関して証明された商品や役務を区別する目的では出願することができないという点が挙げられます。

欧州連合商標、団体商標、証明商標の比較

(一般の)欧州連合商標(individual) 団体商標(collective) 証明商標(certification)
方式 団体商標や証明商標として出願されていないこと。 団体商標として出願される。使用を管理する規則を提出する。 証明商標として出願される。使用を管理する規則を提出する。
主体 個人又は法人 組織、公法で設立された法人(個人は不適格) 個人又は法人
絶対的不登録自由(AG) 法7条の要件 追加要件:誤認させる表示を除いた地理的出所 追加要件:地理的出所は証明しない。
使用 一般に、権利者に取得され、使用される。 組織が所有し、構成員が使用する。 権利者が所有し、品質などの証明を受けた個人や法人が使用する。
機能 商業的な出所表示 商品・役務を他の組織のものと区別する。 商品・役務について証明されたものと証明されていないものを区別する。

証明商標の出願書類

証明商標として、登録するためには、regulations of useに関する書類を出願から2カ月以内に提出する必要があります。証明商標は、特に証明すべき商品若しくは役務の特徴、証明商標の使用を管理する条件、証明商標の所有者による試験若しくは監督の手段を説明することが求められます。

証明商標の出願費用

欧州連合知的財産庁に納付する出願料は、最初の1区分の出願がEUR1500、次の第2区分を追加するとプラスEUR50、それ以降の区分追加がEUR150となります。

団体商標の登録例

eutm6462113
eutm6462113
eutm7605579
eutm7605579
ir1114840
ir1114840
eutm1565886
eutm1565886
eutm1840818
eutm1840818
etum5882469
etum5882469

COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 [Previous rules]

EUTMR Article 66 / EU collective marks
1. A European Union collective mark (‘EU collective mark’) shall be an EU 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 European Union collective marks (‘EU 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 EU 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 EU collective marks , unless Articles 67 to 74 provide otherwise.
EUTMR Article 67 / Regulations governing use of the mark
1. An applicant for an EU collective mark must submit regulations governing its use within the period prescribed.
2. The regulations governing use shall specify the persons authorised 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 66(2) must authorise 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.
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).
EUTMR Article 68 / 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 collective mark shall be refused where the provisions of Articles 66 or 67 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 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.
EUTMR Article 69 / Observations by third parties
Where written observations on an EU collective 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 collective mark should be refused pursuant to Article 68.
EUTMR Article 70 / Use of marks
Use of an EU 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 EU trade marks are fulfilled.
EUTMR Article 74 / Grounds for invalidity
Apart from the grounds for invalidity provided for in Articles 52 and 53, an EU collective mark which is registered in breach of the provisions of Article 68 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.
EUTMR Article 74b / Regulations governing use of the EU certification mark
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).

REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015 [Current rules] ‘SPECIFIC PROVISIONS ON EUROPEAN UNION COLLECTIVE MARKS AND CERTIFICATION MARKS’.

EUTMR ‘SECTION 1, EU collective marks’ as amending Articles 66, 67, 69, and 71
In Article 66, paragraph 3 is replaced by the following:
‘3. Titles I to VII and IX to XIV shall apply to EU collective marks to the extent that this section does not provide otherwise.’.
(64)
Article 67 is amended as follows:
(a)
paragraph 1 is replaced by the following:
‘1. An applicant for an EU collective mark shall submit regulations governing its use within two months of the date of filing.’;
(b)
the following paragraph is added:
‘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).’.
(65)
Article 69 is replaced by the following:
‘Article 69
Observations by third parties
Where written observations on an EU collective 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 collective mark should be refused pursuant to Article 68.’.
(66)
In Article 71, paragraph 3 is replaced by the following:
‘3. Written observations made in accordance with Article 69 may also be submitted with regard to amended regulations governing use.’.
(67)
In Title VIII, the following section is added:
EUTMR SECTION 2 EU certification marks
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.’.