The answer to question 6 should be read in conjunction with that question. In this context, the EC indicated that the issue of the determination whether a mark is well known is not addressed by the provisions of Directive 89/104/EEC and Council Regulation (EC) 40/94. The issue of protection of well-known marks as such, pursuant to Article 16.2 of the TRIPS Agreement and Article 6bis of the Paris Convention, is dealt with in Articles 8(2)(c), 9 and 52(1) of Council Regulation (EC) 40/94 on the Community trademark. According to these provisions, the holder of a well-known mark, in the sense of Article 6bis of the Paris Convention, may oppose the registration of, or invalidate, younger Community trademarks for similar goods and services.

Articles 4(3), 4(4)(a) and 5(2) of Directive 89/104/EEC and Articles 8(5) and 9(1)(c) of Council Regulation (EC) 40/94 address the issue of well-known marks in the context of, and in conformity with, Article 16.3 of the TRIPS Agreement. It should be noted that, pursuant to these Articles, any mark which has a reputation enjoys protection against dilution, which implies that a lower threshold applies.

The Community trademark system, established by Council Regulation (EC) 40/94, became operational on 1 April 1996. For this reason, questions concerning the interpretation of Article 15(1) of the said Regulation are not expected to arise in the foreseeable future.

The Commission proposals for a Directive on the harmonization of the laws of the Member States on the protection of designs and for a Regulation on the Community Design are pending before the Council and the European Parliament. Thus, for the time being, design protection is not subject to Community-wide legislation and, consequently, users of industrial designs must rely on protection at the Member State level.

See the answer to US question 9 above.

The policy of the European Medicines Evaluation Agency is that an applicant for marketing authorization for medicinal products under Council Regulation (EEC) 2309/93 must adopt a single trademark for use throughout the Community for such products. The Agency, however, does not impose any requirements on the use of the single trademark in relation to such products which conflict with Article 20 of the TRIPS Agreement. The users of the centralized procedure are not obliged, for example, to use their marks with another mark, to use them in a special form or to use them in a manner detrimental to the distinctive character of the marks concerned.

Yes. Council Regulation (EC) 40/94 has not replaced the trademark systems of Member States, nor did Council Regulation (EEC) 2309/93 replace national authorization procedures for the marketing of pharmaceuticals in a given Member State.

Council Regulation (EC) 40/94 became operational on 1 April 1996. Thus, no Community trademarks exist prior to the entry into force of the WTO Agreement. Directive 89/104/EEC on the approximation of the laws of the Member States relating to trademarks has not been modified following the entry into force of the WTO Agreement. As a result, no new provisions have been introduced into the Directive which would oblige the Member States to prejudice eligibility for, or the validity of, the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication, where such a trademark existed prior to the entry into force of the WTO Agreement. Moreover, Article 40, paragraph 3, second indent of Council Regulation (EEC) 2392/89 (as amended by Council Regulation (EEC) 3897/91) concerning description and presentation of wines and grape musts envisages that the holder of a well-known registered brand name for a wine or a grape must which contains wording that is related to geographical indications may continue to use that brand name if: -it corresponds to the identity of its original holder or of the original provider of the name; and -the brand name was registered at least 25 years before the official recognition of the geographical name in question by the producer Member State and it has actually been used without interruption. The same rule applies to sparkling wines (Article 13, paragraph 3 of Council Regulation (EEC) 2333/92). As regards geographical indications and designations of origin of agricultural products or foodstuffs registered under Council Regulation 2081/92/EEC, the provisions of Article 14, paragraphs 2 and 3 apply with regard to trademarks existing prior to the registration. Under Article 14(3), a designation of origin or a geographical indication shall not be registered where, in light of the trademark's reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. Under Article 14(2), use of a trademark corresponding to one of the situations referred to in Article 13 of Regulation 2081/92 (usurpation, imitation, direct or indirect evocation, etc.) in relation to a registered geographical indication or designation of origin, is permitted under the following conditions: -The trademark was registered in good faith before the date on which application for registration of a designation of origin or geographical indication was lodged; -It can be demonstrated that the use of the trademark could be done in conformity with Community law; -It cannot be demonstrated, at the time of registration of the trademark, that there are the following grounds for invalidity or revocation as provided by the First Council Directive (89/104/EEC) on the approximation of the laws of the Member States relating to trademarks, i.e.: (a)the trademark is exclusively an indication of geographical origin (Article 3(1)(c); (b)the trademark is of such a nature as to deceive the public as to the geographical origin of the product (Article 3(1)(g)); (c)as a consequence of the use made of it by the proprietor of the trademark, or with his consent, the trademark is liable to mislead the public, particularly as to the geographical origin of the product (Article 12(2)(b)).

The Community trademark system, established by Council Regulation (EC) 40/94, became operational on 1 April 1996. To date, the concept of "reputation" under Article 8(5) of the Regulation has not yet been applied in practice. In addition, neither Article 8(5) of the Regulation nor any other relevant Community instrument contains elements on the interpretation of "reputation". Nevertheless, it should be noted that "reputation" constitutes a lower threshold than "well known".

The EC does not plan to issue a directive or other guidelines concerning the standards or criteria to be used to determine the concept of "reputation". An interpretation of this concept will be given by the Office for Harmonization in the Internal Market (trademarks and designs) and, if conflicts on the interpretation of this concept were to arise, by the competent courts, including the European Court of Justice.

Concerning designations of origin or geographical indications protected by Council Regulation 2081/92/EEC, Article 13, paragraph 1(b) provides that registered names shall be protected against "any measure, imitation or evocation, even if the true origin of the product is indicated...". Concerning wines, the general rule is contained in Article 40, paragraph 1, first indent of Council Regulation (EEC) 2392/89, which envisages that the description and presentation of wines and grape musts, and any form of advertising for such products, must not be incorrect or likely to cause confusion or to mislead the persons to whom they are addressed as regards, among other things, geographical indications. This provision shall apply even if the indication is used in translation, or with reference to the actual origin or with additions such as "type", "style", "method", "imitation", "brand" or the like. Furthermore, the last paragraph of Article 29(1) of the same Regulation provides that the geographical descriptions for imported wines must not be likely to be confused with a term used to describe a quality wine produced in a specified region in the list referred to in Article 1(3) of Council Regulation (EEC) 823/87, a table wine in the list drawn up in connection with Article 2(3)(i) of Regulation (EEC) 2392/89 or an imported wine in the lists under agreements between third countries and the Community. The above-mentioned terms used to describe Community wines are listed in Official Journal C 344 of 15 November 1996, Notices 344/07 and 344/08. The terms used to describe imported wines are those listed under letter B of the annexes of the agreements between the Community and Bulgaria, Hungary, Romania (Council Decisions 93/722/EC, 93/724/EC and 93/726/EC, Official Journal L 337 of 31 December 1993) and those listed under B of Annex II of the Agreement between the European Community and Australia (Council Decision 94/184/EC, Official Journal L 86 of 31 March 1994). Concerning spirit drinks and aromatized wines, please see paragraph 2 of Article 5 of Council Regulation (EEC) 1576/89 and paragraph 3 of Article 6 of Council Regulation (EEC) 1601/91 as notified to the Council for TRIPS and circulated to WTO Members.

Article 72a of Council Regulation (EEC) 822/87 envisages that Member States shall take all necessary measures to enable interested parties to prevent, on the terms stipulated in Articles 23 and 24 of the TRIPS Agreement, the use in the Community of a geographical indication attached to the products referred to in Article 1, paragraph 2(b) of the Regulation for products not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like. It is, therefore, Member States who are responsible for providing the legal means for interested parties to prevent the use of a geographical indication for a wine or spirit not originating in the place indicated, in accordance with Article 23.1 of the TRIPS Agreement. Interested parties must seek redress from the national authorities of the EC Member States. Member States' laws lay down the procedures to be followed, the competent authorities involved, the instances of appeal and sanctions or penalties applied by the authorities. Member States' courts may request the European Court of Justice for preliminary rulings on the interpretation of Council Regulation (EEC) 822/87 under Article 177 of the Treaty Establishing the European Community. Further, on the measures adopted by EC Member States under Article 23 of the TRIPS Agreement and under Article 72a of Council Regulation (EEC) 822/87, Article 11a of Council Regulation (EEC) 1576/89 and Article 10a of Council Regulation (EEC) 1601/91, as a preliminary remark, one should underline that, pursuant to Council Regulation (EEC) 2048/89 laying down general rules on controls in the wine sector, controls on the description and presentation of wine products are subject to common principles and assistance proceedings between a Member State's competent authority and the Commission. Under this regulation, the control authority designated in one Member State may take protective measures regarding the description, presentation and marketing of a wine sector product. It may request assistance from the Commission or from the competent authority of another Member State. The Commission shall be notified whenever the product which is the subject of the control activities originates in a third country and if the marketing of this product may be of specific interest to other Member States. (a)According to Member States' legislation, interested parties are those damaged or likely to be damaged by the misuse of a geographical indication, i.e. producers entitled to use the geographical indication or their representatives. Before an administrative body or an Ombudsman, "any person" (consumer, importer, retailer, producer, exporter) may file a complaint. However, it is unlikely that national governments from WTO Members may file complaints in a Member State: only Italy provides for such a possibility. National governments from WTO Members are of course free to complain to the European Commission or Member States' governments. (b)In all Member States, redress can be sought through civil proceedings. Therefore, the plaintiff may have to prove direct interest in the claim. Where misuses of geographical indications are subject to criminal penalties, as in Belgium, Germany, France, Italy, Portugal and Spain, an interested party may file a complaint to the police or the public prosecutor, who may then decide to launch a criminal investigation. In Austria, Belgium, Denmark, France, Portugal and the United Kingdom, an interested party may also file a complaint to an administrative authority in the Ministry of Agriculture, Ministry of Economy or local Council according to each Member State's legislation. Finland and Sweden provide for a market jurisdiction where the first instance is the Ombudsman and the appellate body is the Market Court. In Finland, only members or representatives of the affected industry or the Ombudsman may file a complaint before this court. WTO Member governments may make representations to the European Commission or Member States' governments. (c)The way the entity conducts an investigation depends on where the claim is brought. Before a civil court, the judge relies upon evidence presented by the parties. In cases of criminal investigation, it is conducted "ex officio" by the police or other administrative authority vested with investigative powers by the public prosecutor. When the complaint is made to an administrative authority or to an Ombudsman, the investigator is the authority where the claim is filed. In both situations, the investigator has the power to issue an order to stop the infringement. If the order is not followed, the administrative authority may decide to bring the case before the public prosecutor while the Ombudsman may bring the case to the Market Court in Finland or to the Stockholm City Court in Sweden. The Commission services conduct their investigation upon elements brought by the government of the WTO Member. (d)The final decision is taken according to the procedure. In civil and criminal cases, any decision taken by a court of first instance may be appealed, subject to restrictions concerning the amount of damages in Germany. In administrative enforcement, any action from the administrative authority may be appealed to the Minister and to administrative courts. In Finland, a decision of the Market Court may not be appealed if the plaintiff is sentenced. After investigation, the Commission may raise the matter with the Member State where the infringement has taken place. If the Commission considers that a Member State has failed to fulfil an obligation under the European Union Treaty, the Commission shall deliver a reasoned opinion on the matter. The latter may bring the matter before the European Court of Justice, if the Member State concerned does not comply with the opinion within the period laid down by the Commission (Article 169 of the EU Treaty). (e)The administrative authority and the Ombudsman have the power to issue an order to stop the infringement and/or to give adequate information to the consumer. Their decisions are enforceable through public prosecution and court decisions which may provide for penalties in case of non compliance with the order. Any civil court decision may order the defendant to stop the infringement and to pay damages. In criminal cases, the decision of the court is enforced "ex officio" and may consist of jail penalties, at least in Spain and Germany. Where the European Court of Justice finds that a Member State has failed to implement its obligations under the Treaty and if the European Commission considers that the Member State does not take the necessary measures to comply with the judgement of the Court of Justice, the European Commission shall bring the matter to the Court of Justice, which may order pecuniary sanctions and periodic penalty payments.

(a)The legal basis under which homonymous geographical indications for wines are distinguished from one another is provided by Council Regulation (EEC) 2392/89, Article 29 paragraph 3 second subparagraph. This provision establishes: "Exceptions to the general rule, that a name of a geographical unit used to describe a table wine or a quality wine of a given region in the Community may not be used to describe an imported wine, may be allowed where such name is used in that third country to describe a wine in accordance with traditional and consistent usage and on condition that its use is governed by rules in that country." This legal basis has so far only been used for solving specific cases in the context of bilateral agreements. (b/c)The EC wishes to recall that the full text of Article 23.3 of the TRIPS Agreement reads as follows: "In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22 [see below]. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled." Article 22.4 of the TRIPS Agreement reads as follows: "The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory." The European Community acts in conformity with Article 23.3 of the TRIPS Agreement as regards homonymous geographical indications. The European Community considers that the specific cases indicated are to be addressed at a bilateral level or in the framework of negotiations under Article 23.4 of the TRIPS Agreement.

Until now, the procedure in force in the European Community is based on communications of third countries to the Commission of the recognised geographical indications. The Commission then proceeds to take the appropriate steps to include these indications in Annex II of Commission Regulation (EEC) 3201/90. The new procedure introduced by Council Regulation (EC) 1427/96 will enter into force only on 1 September 1997 and has not yet been implemented. The EC will communicate such implementation to the US. Article 1, paragraph 13 of Regulation 1427/96 makes reference to the TRIPS Agreement. The EC does not intend to make "determinations" concerning WTO Members' implementation of the TRIPS Agreement. The purpose of the modifications introduced by Regulation 1427/96 is to ensure that within the EC territory geographical indications of wines, whether imported or domestically produced, are used in conformity with the TRIPS Agreement.

The continuous use of a grape variety existing in the territory of a WTO Member as of 1 January 1995 and which is contrary to Article 23 of the TRIPS Agreement is subject to negotiations between WTO Members under Article 24.1 of the Agreement. In the absence of such negotiations, the conditions under which a variety name can be used on the label of an imported wine are established in Article 30 of Council Regulation (EEC) 2392/89. Under this provision, third countries communicate the list of varieties and its synonyms legally used in their territory to the Commission which includes them in Annex IV of Commission Regulation (EEC) 3201/90, provided that they do not create confusion with: -the name of a specified region or a geographical unit used to designate a quality wine produced in a specified region ("psr"), a table wine or another imported wine; -the name of another vine variety, genetically different, grown in the Community. Derogations may be decided, provided they are in conformity with the provisions in the third country and concern a vine variety which is well known in the country of origin.

Spain recognizes a right of priority based on a trademark application filed in or for Spain that claims such a right on the basis of a prior application filed in any WTO Member. Justification: The Union right of priority (Article 4 of the Paris Convention) has been incorporated in the TRIPS Agreement by implication, according to Article 2.1 of the Agreement, and consequently applies to all nationals of WTO Members, who are granted the treatment provided for in Article 1.3 of the Agreement, which by implication includes the Union right of priority. Moreover, pursuant to the most-favoured-nation clause (Article 4 of the TRIPS Agreement), nationals of WTO Members must be granted the same advantages as those granted to the nationals of any other country, in this particular case the right of priority recognized to nationals of States belonging to the Paris Union.

Yes, it is true that Article 2 of the Spanish Trademark Law does not include "combinations of colours" among the signs capable of constituting a trademark, unlike Article 15.1 of the TRIPS Agreement. However, in both instances, the enumeration of signs capable of constituting a trademark is open-ended and is not exhaustive. Actually, the list in Article 2 of the Spanish Trademark Law starts with the word "especially", and it may therefore be said that a combination of colours could also be considered as a trademark. Moreover, the list of registrable signs in Article 15.1 of the TRIPS Agreement is also illustrative and starts with "in particular". The TRIPS Agreement and the Spanish Trademark Law also coincide in that colour in itself is not protectable, since a monopoly might be conferred on such scarce goods as pure colours. The difference between the two texts lies in the approach to the prohibition. Whereas the Spanish Trademark Law rejects a trademark on "colour in itself" (Article 11.1(g)), the TRIPS Agreement affirms the protectability of colour combinations. These are two sides of the same coin, with the same underlying reasoning. Furthermore, the prohibitions on registration contained in Article 11 are interpreted restrictively by examiners and judges.

The reasons justifying the non-use of a mark are assessed by the courts. The Spanish Trademark Law, unlike the TRIPS Agreement, does not establish specific criteria for reasons justifying non-use. However, in practice, the reasons are fully in keeping with the criterion of force majeure set out in the TRIPS Agreement (Article 19, second sentence), in other words, circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to use of the trademark.

Article 16.1 of the TRIPS Agreement, first sentence, fully coincides with Article 31.1 of the Spanish Trademark Law. The requirement to exercise jus prohibendi lies in the fact that the use "may be misleading" (Article 31.1 of the Spanish Trademark Law) or "result in a likelihood of confusion" (Article 16.1 of the TRIPS Agreement). The difference between the two texts is that the Spanish Trademark Law does not give any example of what is misleading. The TRIPS Agreement indicates that there is a likelihood of confusion when the signs for identical goods or services are identical. This "double identity" criterion is followed in Spanish registration and judicial practice, whereby two identical signs for identical goods or services are considered incompatible. The legal foundation for this practice is an a contrario interpretation of Article 12.2 of the Spanish Trademark Law. Thus, Article 12.2 allows the registration of trademarks similar to others registered previously in order to distinguish similar goods or service, with the authorization of the previous right owner. On the other hand, when the signs are identical and the goods or services also coincide, the practice followed - on the basis of Article 12.2 of the Spanish Trademark Law - does not allow registration.

Protection of a well-known mark is approached in the Spanish Trademark Law from two angles. First, Article 13(c) prohibits the registration of "signs or media which involve improper utilization of the reputation of other registered signs or media". Furthermore, Article 35 establishes that "the owner of a registered trademark may bring before judicial bodies any appropriate civil or criminal action against any one who injures his rights and may demand the necessary measures to safeguard them". The possibility also exists of protecting a well-known mark under the Unfair Competition Act of 10 January 1991. Specifically, the use of a well-known mark may be included among misleading acts that involve the risk of association (Article 6) and among acts that exploit the reputation of someone else, as unfair utilization of distinctive signs (Article 12).