COMMISSION COMMUNICATION

of 3 December 1999

on the Commission findings concerning reciprocal treatment with the Principality of Andorra within the meaning of Article 5(1)(d) and (3) and Article 29(5) of Council Regulation (EC) No 40/94 on the Community trade mark

(1999/C 359/08)

Under Rule 101(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark(1), the President of the Office for Harmonisation in the Internal Market (OHIM) asked the Commission to establish whether the Principality of Andorra accorded to nationals of all Member States of the Community reciprocal treatment within the meaning of Article 5(1)(d) and (3) and Article 29(5) of Council Regulation (EC) No 40/94(2), hereinafter referred to as "the Community Trade Mark Regulation", as amended by Regulation (EC) No 3288/94(3).

The Commission has examined the corresponding trade mark laws and has exchanged correspondence with the authorities of the Principality of Andorra.

- Under Article 5(1)(d) of the Community Trade Mark Regulation, nationals of any State which is not party to the Paris Convention and which, according to published findings, accords to nationals of all the Member States the same protection for trade marks as it accords to its own nationals may be proprietors of Community trade marks.

Likewise, under paragraph (c) of Article 5 of the Andorran law on trade marks, a national of another State which grants the same protection to nationals of the Principality of Andorra as it does to its own nationals with respect to trade marks, may be owner of the registration of a mark in the Principality of Andorra.

Moreover, the Andorran legislation on trade marks does not entail any obligation to the applicant regarding the need to prove the previous registration of a trade mark in the country of origin within the meaning of Article 5(1)(d) of the Community Trade Mark Regulation. Therefore, Article 5(3) of that Regulation does not apply in this case.

Finally, on a request for information on the application of Article 5 of the Andorran Trade Mark Law in respect of nationals of the European Union, the Andorran authorities have given proof that the current practice of the Andorran trade mark office is to grant to nationals of all Member States the same protection as it does to its own nationals with regard to trade marks.

Accordingly, OHIM shall accept, pursuant to Article 5(1) of the Community Trade Mark Regulation, trade mark applications from nationals of the Principality of Andorra.

- Under Article 29(5) of the Community Trade Mark Regulation, a person who has duly filed an application for a trade mark in a State which is not a party to the Paris Convention or to the Agreement establishing the World Trade Organisation, may only claim the priority date of that filing for the purpose of the filing of that mark as a Community trade mark, in so far as the State concerned accepts Community trade mark applications as a first filing for the purpose of the claiming of priority in relation to the filing of the same mark as its own trade mark office.

In this sense, the Andorran trade mark law states in its Article 6(5) that, provided that a State grants nationals of the Principality of Andorra a right of priority subject to conditions and having effects equivalent to those of the right of priority provided for in the said Article, nationals of that State may claim the right of priority provided for in Article 6 of the Andorran trade mark law in the Principality of Andorra.

Having been consulted about the application of that provision in relation to applicants of all the Member States or in relation to rights of priority derived from a first filing in any of the Member States or in the OHIM, the Andorran authorities have given proof that the Andorran trade mark office grants the right of priority set out in Article 29 of the Community Trade Mark Regulation.

Therefore, the OHIM shall accept, pursuant to Article 29(5) of the Community Trade Mark Regulation, trade mark priority claims deriving from a first application for the registration of a trade mark with the Andorran trade mark office.

Conclusions

This examination has shown that the Principality of Andorra's law on trade marks, and the practice of the Andorran trade mark office, afford nationals of all Member States the same protection in the matter of trade marks as its own nationals. Thus, under Article 5(1)(d) of the Community Trade Mark Regulation, Andorran nationals may become proprietors of a Community trade mark.

Applicants for a Community trade mark need not prove the prior registration in the Principality of Andorra of the trade mark for which they have filed a Community trade mark application.

This examination has also shown that the Principality of Andorra's law on trade marks, and the pratice of the Andorran trade mark office, grants, on the basis of a first filing made at the OHIM and subject to conditions equivalent to those laid down in the Community Trade Mark Regulation, a right of priority as set out in Article 29 of that Regulation.

Therefore, the OHIM shall accept, pursuant to Article 29(5) of the Community Trade Mark Regulation, priority claims deriving from a first application for the registration of a trade mark with the Andorran trade mark office.

These findings shall take effect on 1 April 1996.

(1) OJ L 303, 15.12.1995, p. 1.

(2) OJ L 11, 14.1.1994, p. 1.

(3) OJ L 349 vom 31.12.1994, p. 83.