Commission Communication of 5 November 1998 on the Commission findings concerning the grant under the Taiwan trademark law of priority rights deriving from Community trademark applications (Article 29(5) of Council Regulation (EC) No 40/94 on the Community trademark)
Date: 1998-11-05
Institutions: European Commission
Subjects: EU trade mark, Taiwan, industrial property, international trade, trade-mark law

18.11.98

EN

Official  Journal  of  the  European  Communities

C  351/3

COMMISSION  COMMUNICATION

of  5  November  1998

on  the  Commission  findings  concerning  the  grant  under  the  Taiwan  trademark  law  of  priority
rights  deriving  from  Community  trademark  applications  (Article  29(5)  of  Council  Regulation
(EC)  No  40/94  on  the  Community  trademark)

(98/C  351/03)

On  the  basis  of  Commission  Communication  96/C(cid:216)335/03(cid:216)(˛),  Taiwanese  nationals  may
become  proprietors  of  Community  trademarks  under  Article  5(1)(d)  of  Council  Regulation
(EC)  No  40/94  on  the  Community  trademark.

In  the  same  communication,  however,  the  Commission  declared  that  through  the  lack  of  an
agreement  between  the  Community  and  Taiwan  on  the  subject  matter,  Taiwanese  nationals
applying  for  Community  trademark  may  not  claim  priority  on  the  basis  of  a  first  filing  of  the
same  mark  in  Taiwan.

Article  29(5)  of  Regulation  No  40/94(cid:216)(ˇ),  as  amended  by  Council  Regulation  (EC)  No
3288/94(cid:216)(—),  provides  that  a  person  who  has  duly  filed  an  application  for  trademark  in  a  State
which  is  not  a  party  to  the  Paris  Convention  or  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  trademark,  in  so  far  as  the  State  concerned  accepts  Community
trademark  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  Trademark  Office.

the  publication  of 

the
Since 
Commission  and  Taiwan  have  discussed  possible  solutions  in  order  to  find  an  agreement  on  the
issue  of  priority.

the  Commission  Communication,  as  referred 

to  above, 

The  delegations  from  Taiwan  and  the  European  Commission  reached  the  following  agreement
on  the  issue  of  priority.

"Registration  of  trademarks

The  National  Bureau  of  Standards  of  Taiwan  shall  accept,  pursuant  to  Article  4  of  the  Taiwan
Trademark  law,  priority  claims  deriving  from  a  first  application  for  the  registration  of  a  European
Communities’  trademark  effected  with  the  Office  for  Harmonisation  in  the  Internal  Market
(trademarks  and  designs).

The  Office  for  Harmonisation  shall  accept,  pursuant  to  Article  29(5)  of  Council  Regulation  No
40/94  on  the  European  Communities’  trademark,  priority  claims  deriving  from  a  first  application
for  the  registration  of  a  trademark  effected  with  the  national  Bureau  of  Standards  of  Taiwan.

For  the  purpose  of  the  implementation  of  the  preceding  provisions,  both  parties  refer  to  Article  4  of
the  Paris  Convention  for  the  Protection  of  Industrial  Property.’

These  conclusions  were 
in  the  Record  of  Negotiations  between  the  European
Commission  and  the  Separate  Customs  territory  of  Taiwan,  Penghu  and  Matsu  on  WTO
Accession  of  23  July  1998.

included 

The  parties  agreed  that  the  agreement  shall  take  effect  as  from  1  August  1998.

(˛)(cid:217)OJ  C  335,  9.11.1996,  p.  3.
(ˇ)(cid:217)OJ  L  11,  14.1.1994,  p.  1.
(—)(cid:217)OJ  L  349,  31.12.1994,  p.  84.