Council Regulation (EC) No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs
Date: 2006-12-18
Institutions: Council of the European Union
Subjects: EU law, EU trade mark, European Community, European Union Intellectual Property Office, World Intellectual Property Organisation, accession to an agreement, designs and models, intellectual property

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Official Journal of the European Union

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COUNCIL REGULATION (EC) No 1891/2006

of 18 December 2006

amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European
Community to the Geneva Act of the Hague Agreement concerning the international registration of
industrial designs

THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Commu-
nity, and in particular Article 308 thereof,

Having regard to the proposal from the Commission,

Having regard to the opinion of the European Economic and
Social Committee,

Having regard to the opinion of the European Parliament,

Whereas:

(1)

(2)

(3)

Council Regulation (EC) No 6/2002 of 12 Decem-
ber 2001 on Community designs (1) created the Commu-
nity design system whereby undertakings can by means
of one procedural system obtain Community designs to
which uniform protection is given and which produce
their effects throughout the entire area of the Community.

Following preparations initiated and carried out by the
World Intellectual Property Organisation (WIPO) with the
participation of the Member States which are members of
the Hague Union, the Member States which are not mem-
bers of the Hague Union and the European Community,
the Diplomatic Conference, convened for that purpose at
Geneva, adopted the Geneva Act of the Hague Agreement
concerning the international registration of
industrial
designs (hereinafter referred to as the ‘Geneva Act’) on
2 July 1999.

The Council, by Council Decision 954 approved the acces-
sion of the European Community to the Geneva Act of
the Hague Agreement concerning the international regis-
tration of industrial designs (2) and authorised the Presi-
dent of the Council to deposit the instrument of accession
with the Director-General of WIPO as from the date on
which the Council has adopted the measures which are
necessary to give effect to the accession of the Commu-
nity to the Geneva Act. This Regulation contains those
measures.

(4)

(5)

(6)

(7)

The appropriate measures should be incorporated in Regu-
lation (EC) No 6/2002 through the inclusion of a new title
on ‘International registration of designs’.

The rules and procedures relating to international registra-
tions designating the Community should, in principle, be
the same as the rules and procedures which apply to Com-
munity designs applications. According to this principle,
an international registration designating the Community
should be subject to the examination as to the grounds
for non-registrability before it takes the same effect as a
registered Community design. Likewise, an international
registration having the same effect as a registered Com-
munity design should be subject to the same rules on
invalidation as a registered Community design.

Regulation (EC) No 6/2002 should therefore be amended
accordingly.

The accession of the Community to the Geneva Act will
create a new source of revenues for the Office for the Har-
monisation in the
(Trade Marks
and Designs). Council Regulation (EC) No 40/94 of
20 December 1993 on the Community trade mark (3)
should therefore be amended accordingly,

Internal Market

HAS ADOPTED THIS REGULATION:

Article 1

Article 134(3) of Regulation (EC) No 40/94 is replaced by the
following:

‘3.
Revenue shall comprise, without prejudice to other types
of income, total fees payable under the fees regulations, total fees
payable under the Madrid Protocol referred to in Article 140 of
this Regulation for an international registration designating the
European Communities and other payments made to Contract-
ing Parties to the Madrid Protocol, total fees payable under the
Geneva Act referred to in Article 106c of Regulation (EC)
No 6/2002 for an international registration designating the Euro-
pean Community and other payments made to Contracting Par-
ties to the Geneva Act, and, to the extend necessary, a subsidy
entered against a specific heading of the general budget of the
European Communities, Commission section.’.

(1) OJ L 3, 5.1.2002, p. 1. Regulation as last amended by 2005 Act of

Accession.

(2) See page 18 of this Official Journal.

(3) OJ L 11, 14.1.1994, p. 1. Regulation as last amended by 2005 Act

of Accession.

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Article 2

Regulation (EC) No 6/2002 is amended as follows:

1. Article 25(1)(d) is replaced by the following:

Any recording of an international registration desig-
2.
nating the Community in the International Register shall
have the same effect as if it had been made in the register of
Community designs of the Office, and any publication of an
international registration designating the Community in the
Bulletin of the International Bureau shall have the same effect
as if it had been published in the Community Designs
Bulletin.

‘(d)

if the Community design is in conflict with a prior
design which has been made available to the public after
the date of filing of the application or, if priority is
claimed, the date of priority of the Community design,
and which is protected from a date prior to the said
date

(i)

by a registered Community design or an applica-
tion for such a design,

or

S e c t i o n 2

International registrations designating the community

Article 106b

Procedure for filing the international application

(ii) by a registered design right of a Member State, or

by an application for such a right,

International applications pursuant to Article 4(1) of the
Geneva Act shall be filed directly at the International Bureau.

or

(iii) by a design right registered under the Geneva Act
of the Hague Agreement concerning the interna-
tional registration of industrial designs, adopted in
Geneva on 2 July 1999, hereinafter referred to as
“the Geneva Act”, which was approved by Council
Decision 954/2006 and which has effect in the
Community, or by an application for such a right;’

2. The following title is inserted after title XI:

Article 106c

Designation fees

The prescribed designation fees referred to in Article 7(1) of
the Geneva Act are replaced by an individual designation
fee.

‘TITLE XIa:

INTERNATIONAL REGISTRATION OF DESIGNS

Article 106d

Effects of international registration designating the
European Community

S e c t i o n 1

General provisions

Article 106a

Application of provisions

1.
Unless otherwise specified in this title, this Regulation
and any Regulations implementing this Regulation adopted
pursuant to Article 109 shall apply, mutatis mutandis, to
registrations of industrial designs in the international regis-
ter maintained by the International Bureau of the World
Intellectual Property Organisation (hereinafter referred to as
“international registration” and “the International Bureau”)
designating the Community, under the Geneva Act.

1.
An international registration designating the Commu-
nity shall, from the date of its registration referred to in
Article 10(2) of the Geneva Act, have the same effect as an
application for a registered Community design.

If no refusal has been notified or if any such refusal
2.
has been withdrawn, the international registration of a
design designating the Community shall, from the date
referred to in paragraph 1, have the same effect as the reg-
istration of a design as a registered Community design.

3.
The Office shall provide information on international
registrations referred to in paragraph 2, in accordance with
the conditions laid down in the Implementing Regulation.

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Article 106e

Refusal

1.
The Office shall communicate to the International
Bureau a notification of refusal not later than six months
from the date of publication of the international registra-
tion, if in carrying out an examination of an international
registration, the Office notices that the design for which pro-
tection is sought does not correspond to the definition under
Article 3(a), or is contrary to public policy or to accepted
principles of morality.

The notification shall state the grounds on which the refusal
is based.

2.
The effects of an international registration in the Com-
munity shall not be refused before the holder has been
allowed the opportunity of renouncing the international reg-
istration in respect of the Community or of submitting
observations.

The conditions for the examination as to the grounds
3.
shall be laid down in the Implementing
refusal
for
Regulation.

Article 106f

Invalidation of the effects of an international
registration

The effects of an international registration in the Com-
1.
munity may be declared invalid partly or in whole in accor-
dance with the procedure in Titles VI and VII or by a
Community design court on the basis of a counterclaim in
infringement proceedings.

2. Where the Office is aware of the invalidation, it shall
notify it to the International Bureau.’.

Article 3

This Regulation shall enter into force on the date on which the
Geneva Act enters into force with respect to the European
Community.

The date of entry into force of this Regulation shall be published
in the Official Journal of the European Union.

This Regulation shall be binding in its entirety and directly applicable in all Member States.

Done at Brussels, 18 December 2006.

For the Council
The President
J.-E. ENESTAM