Judgment — ECLI:EU:T:2001:266
Date: 2001-11-15
Language of the case: English
Court formation: Fourth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Registration procedure;General
Procedure: Action for annulment - successful

Summary of the Judgment 
1. Community trade mark — Filing an application for a Community trade mark — 
Right of priority — Application for a trade mark accompanied by a claim of 
priority — Examination by the Office of whether all the requirements, both 
substantive and formal, have been satisfied 
(Council Regulation No 40/94, Art. 29) 
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SUMMARY — CASE T-128/99 
2. Community trade mark — Registration procedure — Withdrawal, restriction and 
amendment of trade mark applications — Request for correction of a mark — 
Request directly linked to a claim of priority — Effect on the examination of the 
request for correction 
(Council Regulation No 40/94, Arts 29 and 44(2)) 
1. In the case of an application for a 
Community trade mark accompanied 
by a claim of priority, made in accor­
dance with Article 29 of Regulation 
No 40/94, the fact that the applicant's 
intention is to apply for registration of 
the same mark as that on which he 
relies for the purpose of claiming 
priority does not, as such, mean that 
there is no point in examining the claim 
of priority or that a claim of priority 
could never be rejected because the 
document evidencing the priority 
would be compelling for the Office 
for Harmonisation in the Internal 
Market (Trade Marks and Designs) 
(OHIM) as regards showing the appli­
cant's intention. An application for a 
Community trade mark accompanied 
by a claim of priority cannot be 
accepted automatically on the basis of 
an absolute presumption that the appli­
cant's intention is to apply for the same 
mark as that by reference to which he 
claims priority, but must be subjected 
to an examination in which the Office 
considers whether all the requirements, 
both substantive and formal, have been 
satisfied. 
(see paras 43-44) 
2. By providing for the possibility of 
amending a Community trade mark 
application at the request of the appli­
cant in the cases set out in Article 44(2) 
of Regulation No 40/94 and under 
certain specific conditions in order, in 
particular, to correct errors of wording 
or of copying, or obvious mistakes, 
provided that such correction does not 
substantially change the trade mark, 
the Community legislature sought to 
achieve two aims. First, it wished to 
avoid the difficulties — including the 
need for the applicant to file a new 
application — which would be occa­
sioned by an absolute prohibition of 
amendment of applications for a trade 
mark. Second, in limiting that possibi­
lity by requiring that the amendment 
should not substantially change the 
trade mark, the legislature meant to 
prevent the abuses that might result 
from a very liberal system of amend­
ment and thus to protect the interests 
of third parties so far as the availability 
of signs is concerned. 
Where the request for correction of the 
Community trade mark applied for is 
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SIGNAL COMMUNICATIONS v OHIM (TELEYE) 
directly linked to a claim of priority in 
the sense that the correction is intended 
to make the spelling of that mark 
coincide with that of the mark applied 
for earlier, this factor is one which must 
be taken into account in construing the 
requirement, mentioned above, that the 
amendment should not substantially 
change the trade mark. 
(see paras 48-49) 
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