Commission communication on the Commission findings concerning reciprocal treatment with the Cayman Islands 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

(2001/C 149/06)

Under rule 101(1) of Commission Regulation (EC) No 2868/95(1)), the President of the Office for Harmonisation of the Internal Market (OHMI) has asked the Commission to establish whether the Cayman Islands accord 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 the Community trade mark Regulation(2)), as modified by Council Regulation (EC) No 3288/94(3)).

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

- Under Article 5(1)(d) of the Community trade mark Regulation, nationals of any State which is not party to the Paris Convention or to the Agreement establishing the World Trade Organisation; 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 and, if nationals of the Member States are required to prove registration in the country of origin, recognises the registration of Community trade mark as such proof, may be proprietors of Community trade marks.

According to the Cayman Islands legislation, Articles 6 and 9 of the Cayman Islands Patents and Trade Marks Law (1995 Revision), the owner of a trade mark registered in the United Kingdom may apply to have such right extended to the Islands. The effect of such extension is to afford in the Islands to the owner of such right the protection and rights afforded to an owner of a trade mark by virtue of the Merchandise Marks Law, 1976 and all the equivalent rights and remedies available to such owner in the United Kingdom.

Likewise, according to the revision of the Cayman Islands legislation as amended by the Patents and Trade Marks (Amendment) (Community Trade Marks) Law of 1998, Community trade mark owners may also apply to the Cayman Islands Registrar to have their trade mark extended to the Cayman Islands in the same conditions.

Section 6 of the Cayman Islands Patents and Trade Marks Regulations (1998 Revision), which according to the United Kingdom authorities is of application to Community trade marks, imposes an obligation on an applicant for the extension to the Cayman Islands of a trade mark to prove the existence of his previous right by a certified extract of registration. This provision also applies to Community trade marks. Thus, in accordance with Article 5(3) of the Community trade mark Regulation, nationals of the Cayman Islands must therefore prove that the trade mark for which an application for a Community trade mark has been submitted is registered in the Cayman Islands.

Thus, the Office for Harmonisation must accept, pursuant to Article 5(1)(d) and (3) of the Community trade mark Regulation, trade mark applications from nationals of the Cayman Islands, provided that the trade mark for which an application for a Community trade mark has been submitted is registered in the Cayman Islands.

- Article 29 (5) of the Community trade mark Regulation provides that 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 at its own Trade Mark Office.

However, under the Cayman Islands trade mark system, the owner of a Community trade mark may only apply for the extension of such trade mark to the territory of the Cayman Islands but cannot file an application for a Cayman Island trade mark on the basis of a previous application for a Community trade mark. Therefore, the right of priority, as established in Article 29(5) of the Community trade mark Regulation does not apply.

CONCLUSIONS

This examination has shown that reciprocal treatment within the meaning of Article 5(1)(d) and 5(3) of the Community trade mark Regulation can be accorded to the Cayman Islands.

This examination has also shown that reciprocal treatment within the meaning of Article 29(5) of the Community trade mark Regulation cannot be accorded to the Cayman Islands.

These findings are effective as of 14 April 1998.

(1) OJ L 303, 15.12.1995, p. 31. Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark.

(2) OJ L 11, 14.1.1994, p. 1. Council Regulation (EC) No 40/94 on the Community trade mark.

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