The Community Trade Mark Regulations 2006

Explanatory Note

(This note is not part of the Regulations)

These Regulations make provision for the operation of the Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community trade mark (O.J. No. L 11, 14.1.94, p.1) (“the Community Trade Mark Regulation”). A Community trade mark registered at the Office for Harmonization in the Internal Market (trade marks and designs) under the Community Trade Mark Regulation has effect throughout the Community. As a result of the Community’s accession to the Madrid Agreement Concerning the International Registration of Marks (adopted at Madrid on 27th June 1989), holders of an international registration under that Protocol may apply for protection of their marks under the Community trade mark system; and conversely applicants for, or proprietors of, a Community trade mark may apply for international protection of their marks under the Protocol. The provision made by these Regulations in respect of the Community trade mark also extends to marks protected under that Protocol in the territory of the Community.

Regulations 3 and 4 provides for the procedure for determining the invalidity, or liability to revocation, of the registration of a trade mark from which a Community trade mark claims seniority.

Regulation 5 sets out the sanctions available under national law for infringement of a Community trade mark. It also applies to such marks the provisions of the Trade Marks Act 1994 (c. 26) (“the 1994 Act”) which deal with infringement proceedings.

Regulation 6 applies to Community trade marks the provisions of the 1994 Act dealing with groundless threats of infringement.

Regulation 7 and 8 applies the provisions to Community trade marks of the 1994 Act dealing with the importation of infringing goods, materials and articles, and offences and forfeiture.

Regulation 9 makes it a criminal offence to falsely represent that a mark is a Community trade mark or to make false representations as to the goods and services for which a Community trade mark is registered.

Regulation 10 provides for the conversion of a Community trade mark, or an application for a Community trade mark, into an application for registration under the 1994 Act.

Regulation 11 provides the privilege for communications with persons on the list of professional representatives maintained in pursuance of Article 89 of the Community Trade Mark Regulation.

Regulation 12 designates the courts in the United Kingdom having jurisdiction over proceedings arising out of the Community Trade Mark Regulation.

These Regulations replace the Community Trade Mark Regulations 1996 (SI 1996/1908).