Struggling for coherence: A review of recent developments in European trade mark law

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Journal Article

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It is now more than nine years since the Community trade mark (the "CTM") system created by European Council Regulation 40/94 of 20 December 1993 on the Community trade mark (the "CTMR") 1 opened for business. The system operates independently of, but in parallel with, the national systems of trade mark registration in each of the 25 EU Member States 2 , which have in turn been harmonised through the provisions of the First Council Directive 89/104EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (the "Directive"). 3 Since the introduction of the Directive and the CTM, there have been many key decisions by the Court of First Instance (the "CFI") and the European Court of Justice (the "ECJ" or "Court") interpreting the two legislative instruments, by way of appeals from decisions of the Boards of Appeal of OHIM or through references from national courts to the ECJ under Article 234 of the EC Treaty (as amended in Amsterdam) requesting guidance on the interpretation of particular provisions. In cases before the ECJ, the Opinions of the Advocates General ("AGs") have often contributed to a better understanding of the law in this difficult area. This paper gives an account of recent developments at Community level and discusses their impact both on the CTM system and on the national systems of trade mark registration. Mention will also be made of a couple of recent decisions of the English courts (and of the UK Trade Mark Registry). Attention will be focussed on live issues such as distinctiveness, the concepts of trade mark use in relation to a finding of infringement and of 'non-use' with and Slovakia. Since the enlargement of the EU, trade mark applications may be filed at OHIM in any of the 20 official languages. For publication OHIM will translate the application into the remaining 19 languages. 3 OJ 1989 L 40, p. 1.


Intellectual Property Law | International Trade Law

Research Areas

Intellectual Property and Technology-related Law


Australian Intellectual Property Journal

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