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| author | Jonas Smedegaard <dr@jones.dk> | 2013-04-25 17:53:48 +0200 |
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| committer | Jonas Smedegaard <dr@jones.dk> | 2013-04-25 17:53:48 +0200 |
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diff --git a/content.txt b/content.txt index 8265462..bd3635a 100644 --- a/content.txt +++ b/content.txt @@ -1,2858 +1,925 @@ -24.3.2009 Official Journal of the European Union EN L 78/1 I (Acts adopted under the EC Treaty/Euratom Treaty whose publication is obligatory) REGULATIONS COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (Text with EEA relevance) THE COUNCIL OF THE EUROPEAN UNION, Community arrangements for trade marks whereby undertakings can by means of one procedural system obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community. The principle of the unitary character of the Community trade mark thus stated should apply unless otherwise provided for in this Regulation. +EUROPEAN COMMISSION Brussels, 27.3.2013 COM(2013) 161 final 2013/0088 (COD) Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL amending Council Regulation (EC) No 207/2009 on the Community trade mark (Text with EEA relevance) {SWD(2013) 95 final} {SWD(2013) 96 final} EN EN EXPLANATORY MEMORANDUM 1. -Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof, Having regard to the proposal from the Commission, Having regard to the opinion of the European Parliament (1), Whereas: (1) It is desirable to promote throughout the Community a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market. In order to create a market of this kind and make it increasingly a single market, not only must barriers to free movement of goods and services be removed and arrangements be instituted which ensure that competition is not distorted, but, in addition, legal conditions must be created which enable undertakings to adapt their activities to the scale of the Community, whether in manufacturing and distributing goods or in providing services. For those purposes, trade marks enabling the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers, should feature amongst the legal instruments which undertakings have at their disposal. +CONTEXT OF THE PROPOSAL 1.1. -The barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States cannot be removed by approximation of laws. In order to open up unrestricted economic activity in the whole of the internal market for the benefit of undertakings, trade marks should be created which are governed by a uniform Community law directly applicable in all Member States. +General context and grounds for the proposal The laws of the Member States relating to trade marks were partially harmonised by Council Directive 89/104/EEC of 21 December 1988, codified as Directive 2008/95/EC (hereinafter referred to as ‘the Directive’). Alongside and linked to the national trade mark systems, Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, codified as Regulation (EC) No 207/2009 (hereinafter referred to as ‘the Regulation’), established a stand-alone system for the registration of unitary rights having equal effect throughout the EU. In that context the Office for Harmonization in the Internal Market (OHIM) was set up to be responsible for registering and administering Community trade marks. -(5) Since the Treaty has not provided the specific powers to establish such a legal instrument, Article 308 of the Treaty should be applied. +A trade mark serves to distinguish the goods and services of a company. It is the mark through which a business can attract and retain customer loyalty, and create value and growth. -(6) The Community law relating to trade marks nevertheless does not replace the laws of the Member States on trade marks. It would not in fact appear to be justified to require undertakings to apply for registration of their trade marks as Community trade marks. National trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Community level. +The mark works in this case as an engine of innovation: the necessity to keep it relevant promotes investments in R & D, which leads in turn to a continuous process of product improvement and development. This dynamic process also has a favourable impact on employment. In an increasingly competitive environment, there has been a steady growth not only in the crucial role of trade marks for market success, but also in their commercial value and number. In 2012, a record number of Community trade mark applications were filed (over 107,900, against 98,217 in 2010 and 49,503 a decade earlier). OHIM also received its millionth application since starting operations in 1996 during 2011. This development has been accompanied by growing expectations on the part of stakeholders for more streamlined and high-quality trade mark registration systems, which are more consistent, publicly accessible and technologically up-to-date. -(7) The rights in a Community trade mark should not be obtained otherwise than by registration, and registration should be refused in particular if the trade mark is not distinctive, if it is unlawful or if it conflicts with earlier rights. +In 2007, when addressing the issue of the financial perspectives of OHIM, the Council1 emphasised that the establishment of OHIM had been a great success and that it had contributed substantially to strengthening the competitiveness of the EU. It recalled that the Community trade mark system had been designed to co-exist with the national trade mark systems which continued to be necessary for those undertakings which did not want their trade marks protected at EU level. The Council further noted the importance of the complementary work of national trade mark offices, and called on OHIM to expand its cooperation with them in the interest of the overall functioning of the Community trade mark system. Last, it acknowledged that more than a decade had passed since the creation of the Community trade mark, and underlined the need for an overall assessment of the functioning of the Community trade mark system. It invited the Commission to start work on a corresponding study, in particular, with a view to intensifying and broadening the existing instruments of cooperation between OHIM and national trade mark offices. -Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (2) has been substantially amended several times (3). In the interests of clarity and rationality the said Regulation should be codified. +1 EN Competitiveness Council Conclusions of 21 and 22 May 2007, Council document 9427/07. -(2) (4) (3) For the purpose of pursuing the Community's said objectives it would appear necessary to provide for (1) OJ C 146 E, 12.6.2008, p. 79. +1 EN In its 2008 Small Business Act2 the Commission pledged to make the Community trade mark system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe3 underlined the Commission’s commitment to effective and efficient trade mark protection and to a trade mark system of high quality. It concluded that it was time for an overall evaluation which could form the basis for a future review of the trade mark system in Europe and for the further improvement of cooperation between OHIM and National Offices. In 2010, in the Communication on Europe 2020, under the Flagship Initiative ‘Innovation Union’, the Commission undertook to modernise the framework of trade marks in order to improve framework conditions for business to innovate4. Finally, in its 2011 IPR strategy for Europe5, the Commission announced a review of the trade mark system in Europe with a view to modernising the system, both at EU and at national level, by making it more effective, efficient and consistent overall. -(2) OJ L 11, 14.1.1994, p. 1. +1.2. -(3) See Annex I. +Aim of the proposal Considered together as a package, the main common objective of this initiative and of the parallel proposal for recast of the Directive is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems. -L 78/2 (8) (9) EN Official Journal of the European Union The protection afforded by a Community trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in cases of similarity between the mark and the sign and the goods or services. An interpretation should be given of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. +As regards this initiative to revise the Regulation, the Commission is not proposing a new system, but well-targeted modernisation of existing provisions, with these main aims: 5 EN Establishing an appropriate framework for cooperation between OHIM and national offices for the promoting convergence of practices and developing common tools (see section 5.4); 4 Increasing legal certainty by clarifying provisions and removing ambiguities (see section 5.3); 3 Streamlining procedures to apply for and register a European trade mark (see section 5.2); 2 Adapting terminology to the Lisbon Treaty and provisions to the Common Approach on decentralised agencies (see section 5.1); Aligning the framework to Article 290 of the Treaty on the Functioning of the European Union (TFEU) (see section 5.5). -It follows from the principle of free movement of goods that the proprietor of a Community trade mark must not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the Community, under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods. +Communication from the Commission: "Think Small First", A "Small Business Act" for Europe COM(2008) 394 final of 25 June 2008. -(10) There is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used. +COM(2008) 465 final of 16 July 2008. -(11) A Community trade mark is to be regarded as an object of property which exists separately from the undertakings whose goods or services are designated by it. Accordingly, it should be capable of being transferred, subject to the overriding need to prevent the public being misled as a result of the transfer. It should also be capable of being charged as security in favour of a third party and of being the subject matter of licences. +COM(2010)546 final of 6 October 2010. -(12) Administrative measures are necessary at Community level for implementing in relation to every trade mark the trade mark law created by this Regulation. It is therefore essential, while retaining the Community's existing institutional structure and balance of powers, to provide for an Office for Harmonisation in the Internal Market (trade marks and designs) which is independent in relation to technical matters and has legal, administrative and financial autonomy. To this end it is necessary and appropriate that that Office should be a body of the Community having legal personality and exercising the implementing powers which are conferred on it by this Regulation, and that it should operate within the framework of Community law without detracting from the competencies exercised by the Community institutions. +A Single Market for Intellectual Property Rights: Boosting creativity and innovation to provide economic growth, high quality jobs and first class products and services in Europe - COM(2011) 287. -24.3.2009 decide on it. Decisions of the Boards of Appeal are, in turn, amenable to actions before the Court of Justice of the European Communities, which has jurisdiction to annul or to alter the contested decision. +2 EN 2. -(14) Under the first subparagraph of Article 225(1) of the EC Treaty the Court of First Instance of the European Communities has jurisdiction to hear and determine at first instance the actions referred to in particular in Article 230 of the EC Treaty with the exception of those assigned to a judicial panel and those reserved in the Statute to the Court of Justice. The jurisdiction which this Regulation confers on the Court of Justice to cancel and alter decisions of the Boards of Appeal should accordingly be exercised at first instance by the Court. +RESULTS OF CONSULTATIONS WITH INTERESTED PARTIES AND IMPACT ASSESSMENT 2.1. -(15) In order to strengthen the protection of Community trade marks the Member States should designate, having regard to their own national system, as limited a number as possible of national courts of first and second instance having jurisdiction in matters of infringement and validity of Community trade marks. +Public consultation This initiative is based on an evaluation of the way the trade mark system works in Europe as a whole and of extensive consultations with all major stakeholders involved. -(16) Decisions regarding the validity and infringement of Community trade marks must have effect and cover the entire area of the Community, as this is the only way of preventing inconsistent decisions on the part of the courts and the Office and of ensuring that the unitary character of Community trade marks is not undermined. The provisions of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (1) should apply to all actions at law relating to Community trade marks, save where this Regulation derogates from those rules. +The main component of the evaluation was a study the Max Planck Institute for Intellectual Property and Competition Law undertook on behalf of the Commission. The study was carried out between November 2009 and February 20116. In addition to expert analysis, the study involved consultations with various stakeholders. It included a survey among users of the Community trade mark system, contributions from organisations representing trade mark users at national, European and international level and a hearing in June 2010 involving these organisations. Lastly, the Institute consulted the National Offices of all the Member States and OHIM. -(17) Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks. For this purpose, when the actions are brought in the same Member State, the way in which this is to be achieved is a matter for national procedural rules, which are not prejudiced by this Regulation, whilst when the actions are brought in different Member States, provisions modelled on the rules on lis pendens and related actions of Regulation (EC) No 44/2001 appear appropriate. +The Final Report concluded that the basics of the European trade mark system are solid. In particular, the procedures followed by OHIM generally met business needs and expectations. -(18) In order to guarantee the full autonomy and independence of the Office, it is considered necessary to grant it an autonomous budget whose revenue comes principally from fees paid by the users of the system. However, the Community budgetary procedure remains applicable as far as any subsidies chargeable to the general budget of the European Communities are concerned. Moreover, the auditing of accounts should be undertaken by the Court of Auditors. +There was further consensus that the coexistence of Community and national trade mark rights is fundamental and necessary for the efficient functioning of a trade mark system that meets the requirements of companies of different sizes, markets and geographical needs. The Report nevertheless found that further convergence of trade mark laws and practices in the EU was required. It confirmed that many aspects of the current Community trade mark system were working well, and made a large number of proposals for improvement. It identified specific areas in which the OHIM and National Offices could enhance their cooperation. -(13) It is necessary to ensure that parties who are affected by decisions made by the Office are protected by the law in a manner which is suited to the special character of trade mark law. To that end provision is made for an appeal to lie from decisions of the examiners and of the various divisions of the Office. If the department whose decision is contested does not rectify its decision it is to remit the appeal to a Board of Appeal of the Office, which is to (19) Measures necessary for the implementation of this Regulation should be adopted, particularly as regards fees regulations and an Implementing Regulation, in accordance with Council Decision 1999/468/EC of 28 June 1999 (1) OJ L 12, 16.1.2001, p. 1. +Responding to the interim results of the study, the Council adopted Conclusions on 25 May +20107. These endorsed the agreement reached in September 2008 within the OHIM governing bodies (Administrative Board and Budget Committee) on a set of budgetary measures intended to better balance OHIM's budget in the future. The Council agreed that these budgetary measures also contributed to modernising, streamlining, harmonising and strengthening the trade mark system in Europe as a whole. It called on the Commission to include in the revision the introduction of a specific provision to define the framework for cooperation between OHIM and the National Offices. This should make explicit that all EU trade mark offices should pursue harmonisation of practices and that the OHIM should facilitate their efforts to this end. It also called for the creation of a legal basis for distributing an amount equal to 50% of OHIM’s renewal fees to National Offices to be used for protecting, promoting and/or enforcing trade marks. -24.3.2009 Official Journal of the European Union EN laying down the procedures for the exercise of implementing powers conferred on the Commission (1), L 78/3 or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. +As a follow-up to the study, the Commission services convened a hearing of user associations on 26 May 2011. The results shaped and confirmed the Commission’s preliminary analysis. -HAS ADOPTED THIS REGULATION: -====Article 5==== +6 7 EN See the final MPI study, including annexes, at http://ec.europa.eu/internal_market/indprop/tm/index_en.htm. +Competitiveness Council Conclusions of 25 May 2010 on the future revision of the Trade Mark system in the EU, OJ C 140, 29.5.2010, p.22. -===TITLE I=== +3 EN 2.2. -Persons who can be proprietors of Community trade marks GENERAL PROVISIONS Any natural or legal person, including authorities established under public law, may be the proprietor of a Community trade mark. +Impact Assessment The impact assessment identified one main problem the revised Regulation needs to address: the low level of cooperation among trade mark offices in Europe. As explained in the impact assessment, there are many links between the Community trade mark and national trade mark regimes, with direct consequences for both trade mark users and intellectaul property offices. +These require a certain level of complementarity between the two systems. To achieve and ensure this, OHIM and National Offices should cooperate closely. -====Article 1==== - -Community trade mark -1. A trade mark for goods or services which is registered in accordance with the conditions contained in this Regulation and in the manner herein provided is hereinafter referred to as a ‘Community trade mark’. - - -2. A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation. - - -====Article 6==== - -Means whereby a Community trade mark is obtained A Community trade mark shall be obtained by registration. - - -====Article 7==== - -Absolute grounds for refusal -1. The following shall not be registered: (a) signs which do not conform to the requirements of Article 4; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: -====Article 2==== - -Office An Office for Harmonisation in the Internal Market (trade marks and designs), hereinafter referred to as ‘the Office’, is hereby established. - - -====Article 3==== - -Capacity to act For the purpose of implementing this Regulation, companies or firms and other legal bodies shall be regarded as legal persons if, under the terms of the law governing them, they have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued. - -(i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; -===TITLE II=== - -THE LAW RELATING TO TRADE MARKS (iii) the shape which gives substantial value to the goods; -==SECTION 1== - -Definition of a Community trade mark and obtaining a Community trade mark (f) trade marks which are contrary to public policy or to accepted principles of morality; -====Article 4==== - -(g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h) trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’; Signs of which a Community trade mark may consist A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods (1) OJ L 184, 17.7.1999, p. 23. - -L 78/4 (i) (j) (k) Official Journal of the European Union EN 24.3.2009 trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given; mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks: (i) Community trade marks; trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin; (ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property; trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (1) when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication. - -(iii) trade marks registered under international arrangements which have effect in a Member State; (iv) trade marks registered under international arrangements which have effect in the Community; (b) applications for the trade marks referred to in subparagraph (a), subject to their registration; (c) trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention. - - -2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. - - -3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. - - -3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action. - - -====Article 8==== - -Relative grounds for refusal -1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (a) (b) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. - - -2. For the purposes of paragraph 1, ‘earlier trade marks’ means: (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade (1) OJ L 93, 31.3.2006, p. 12. - - -4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. - - -5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. - -24.3.2009 Official Journal of the European Union EN L 78/5 -==SECTION 2== - - -====Article 10==== - -Effects of Community trade marks Reproduction of Community trade marks in dictionaries -====Article 9==== - -Rights conferred by a Community trade mark -1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: If the reproduction of a Community trade mark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the Community trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark. - - -====Article 11==== - -(a) (b) (c) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered; any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. - -Prohibition on the use of a Community trade mark registered in the name of an agent or representative Where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use, unless the agent or representative justifies his action. - - -====Article 12==== - -Limitation of the effects of a Community trade mark A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, -2. The following, inter alia, may be prohibited under paragraph 1: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under that sign; (d) using the sign on business papers and in advertising. - - -3. The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of acts occurring after the date of publication of a Community trade mark application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seized of the case may not decide upon the merits of the case until the registration has been published. - -provided he uses them in accordance with honest practices in industrial or commercial matters. - - -====Article 13==== - -Exhaustion of the rights conferred by a Community trade mark -1. A Community trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. - - -2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. - -L 78/6 Official Journal of the European Union EN -====Article 14==== - -Complementary application of national law relating to infringement -1. The effects of Community trade marks shall be governed solely by the provisions of this Regulation. In other respects, infringement of a Community trade mark shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Title X. - - -2. This Regulation shall not prevent actions concerning a Community trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition. - - -3. The rules of procedure to be applied shall be determined in accordance with the provisions of Title X. - - -==SECTION 3== - -24.3.2009 entirety, and for the whole area of the Community, as a national trade mark registered in the Member State in which, according to the Register of Community trade marks: (a) the proprietor has his seat or his domicile on the relevant date; (b) where point (a) does not apply, the proprietor has an establishment on the relevant date. - - -2. In cases which are not provided for by paragraph 1, the Member State referred to in that paragraph shall be the Member State in which the seat of the Office is situated. - - -3. If two or more persons are mentioned in the Register of Community trade marks as joint proprietors, paragraph 1 shall apply to the joint proprietor first mentioned; failing this, it shall apply to the subsequent joint proprietors in the order in which they are mentioned. Where paragraph 1 does not apply to any of the joint proprietors, paragraph 2 shall apply. - -Use of Community trade marks -====Article 17==== - - -====Article 15==== - -Transfer Use of Community trade marks -1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for nonuse. - -The following shall also constitute use within the meaning of the first subparagraph: (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; (b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. - - -2. Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. - - -==SECTION 4== - - -1. A Community trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered. - - -2. A transfer of the whole of the undertaking shall include the transfer of the Community trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking. - - -3. Without prejudice to paragraph 2, an assignment of the Community trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void. - - -4. Where it is clear from the transfer documents that because of the transfer the Community trade mark is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, the Office shall not register the transfer unless the successor agrees to limit registration of the Community trade mark to goods or services in respect of which it is not likely to mislead. - - -5. On request of one of the parties a transfer shall be entered in the Register and published. - -Community trade marks as objects of property -====Article 16==== - -Dealing with Community trade marks as national trade marks -1. Unless Articles 17 to 24 provide otherwise, a Community trade mark as an object of property shall be dealt with in its -6. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the Community trade mark. - - -7. Where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office. - -24.3.2009 Official Journal of the European Union EN -8. All documents which require notification to the proprietor of the Community trade mark in accordance with Article 79 shall be addressed to the person registered as proprietor. - - -====Article 18==== - -Transfer of a trade mark registered in the name of an agent Where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to demand the assignment in his favour of the said registration, unless such agent or representative justifies his action. - - -====Article 19==== - -L 78/7 -2. In the case of joint proprietorship of a Community trade mark, paragraph 1 shall apply to the share of the joint proprietor. - - -3. Where a Community trade mark is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the Community Trade Marks Bulletin referred to in Article 89. - - -====Article 22==== - -Licensing -1. A Community trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Community. A licence may be exclusive or nonexclusive. - -Rights in rem -1. A Community trade mark may, independently of the undertaking, be given as security or be the subject of rights in rem. - - -2. The proprietor of a Community trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to: -2. On request of one of the parties, rights mentioned in paragraph 1 shall be entered in the Register and published. - -(a) its duration; (b) the form covered by the registration in which the trade mark may be used; (c) the scope of the goods or services for which the licence is granted; (d) the territory in which the trade mark may be affixed; or (e) the quality of the goods manufactured or of the services provided by the licensee. - - -====Article 20==== - -Levy of execution -1. A Community trade mark may be levied in execution. -2. As regards the procedure for levy of execution in respect of a Community trade mark, the courts and authorities of the Member States determined in accordance with Article 16 shall have exclusive jurisdiction. - -Insolvency proceedings -3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a Community trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period. - - -1. The only insolvency proceedings in which a Community trade mark may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests. - - -4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the Community trade mark. - -However, where the debtor is an insurance undertaking or a credit institution as defined in Directive 2001/17/EC of the European Parliament and of the Council of 19 March 2001 on the reorganisation and winding-up of insurance undertakings (1) and Directive 2001/24/EC of the European Parliament and of the Council of 4 April 2001 on the reorganisation and winding up of credit institutions (2), respectively, the only insolvency proceedings in which a Community trademark may be involved are those opened in the Member State where that undertaking or institution has been authorised. - - -5. On request of one of the parties the grant or transfer of a licence in respect of a Community trade mark shall be entered in the Register and published. - - -3. On request of one the parties, levy of execution shall be entered in the Register and published. - - -====Article 21==== - -(1) OJ L 110, 20.4.2001, p. 28. - -(2) OJ L 125, 5.5.2001, p. 15. - - -====Article 23==== - -Effects vis-à-vis third parties -1. Legal acts referred to in Articles 17, 19 and 22 concerning a Community trade mark shall have effects vis-à-vis third parties in all the Member States only after entry in the Register. - -Nevertheless, such an act, before it is so entered, shall have L 78/8 Official Journal of the European Union EN effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired. - - -2. Paragraph 1 shall not apply in the case of a person who acquires the Community trade mark or a right concerning the Community trade mark by way of transfer of the whole of the undertaking or by any other universal succession. - - -3. The effects vis-à-vis third parties of the legal acts referred to in Article 20 shall be governed by the law of the Member State determined in accordance with Article 16. - -24.3.2009 -3. Applications referred to in paragraph 2 which reach the Office more than two months after filing shall be deemed to have been filed on the date on which the application reached the Office. - - -4. Ten years after the entry into force of Regulation (EC) No 40/94, the Commission shall draw up a report on the operation of the system of filing applications for Community trade marks, together with any proposals for modifying this system. - - -====Article 26==== - - -4. Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-à-vis third parties of bankruptcy or like proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field. - -Conditions with which applications must comply -1. An application for a Community trade mark shall contain: (a) The application for a Community trade mark as an object of property (b) information identifying the applicant; (c) a list of the goods or services in respect of which the registration is requested; (d) -====Article 24==== - -a request for the registration of a Community trade mark; a representation of the trade mark. - -Articles 16 to 23 shall apply to applications for Community trade marks. - - -===TITLE III=== +Efficient and effective cooperation between trade mark offices in Europe is currently seriously hindered by a number of obstacles: Lack of a clear legal basis for cooperation on EU trade mark legislation Lack of technical facilities in National Offices Lack of sustainable financing in the medium to long term. -APPLICATION FOR COMMUNITY TRADE MARKS -==SECTION 1== +The following options were considered to solve these problems and to achieve three corresponding objectives. -Filing of applications and the conditions which govern them -2. The application for a Community trade mark shall be subject to the payment of the application fee and, when appropriate, of one or more class fees. +1. +Providing an adequate legal basis for cooperation: (a) (b) Option 2: Legal basis allowing National Offices and OHIM to cooperate with one another (optional cooperation); (c) 2. -3. An application for a Community trade mark must comply with the conditions laid down in the Implementing Regulation referred to in Article 162(1), hereinafter referred to as the ‘Implementing Regulation’. +Option 1: No specific legal basis for cooperation between intellectual property offices in Europe; Option 3: Legal basis obliging National Offices and OHIM to cooperate with one another (mandatory cooperation). +Technical capacity building at National Offices: (a) (b) Option 2: Optional access to tools: the required facilities and tools accessible to IP offices within a framework of voluntary cooperation; (c) 3. -====Article 25==== +Option 1: Each office to procure and develop the required facilities and tools; Option 3: Mandatory access to tools: the required facilities accessible through a compulsory cooperation framework. This option overlaps with option 3 above regarding an adequate legal basis and option 3 below on long-term financing of cooperation activities. +Securing long-term financing for cooperation activities: (a) (b) Option 2: Financing from EU budget; (c) EN Option 1: Financing from Member States; Option 3: Financing from OHIM budget. -====Article 27==== +4 EN The impact assessment concluded that option 3 would in all cases be proportionate and best suited to achieving the objectives pursued. -Filing of applications Date of filing -1. An application for a Community trade mark shall be filed, at the choice of the applicant: The date of filing of a Community trade mark application shall be the date on which documents containing the information specified in Article 26(1) are filed with the Office by the applicant or, if the application has been filed with the central office of a Member State or with the Benelux Office for Intellectual Property, with that office, subject to payment of the application fee within a period of one month of filing the abovementioned documents. +3. -(a) at the Office; (b) at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property. An application filed in this way shall have the same effect as if it had been filed on the same date at the Office. +LEGAL BASIS AND SUBSIDIARITY In the context of the establishment and functioning of the internal market, Article 118(1) TFEU provides for the creation of European intellectual property rights to provide uniform protection for these rights throughout the EU, including the setting up of centralised Unionwide authorisation, coordination and supervision arrangements. +The Community trade mark is a self-standing EU intellectual property title created by an EU Regulation. The analysis carried out as part of the impact assessment proved that parts of the Regulation need to be changed to improve and streamline the Community trade mark system. -====Article 28==== +Only the EU legislator has the competence to make the amendments needed. +4. -2. Where the application is filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application. +BUDGETARY IMPLICATION The proposal will not have an impact on the European Union budget and is therefore not accompanied by the financial statement required under Article 31 of the Financial Regulation (Regulation (EC, Euratom) No 966/2012 of the European Parliament and of the Council of 25 October 2012 on the financial rules applicable to the general budget of the Union and repealing Council Regulation (EC, Euratom) No 1605/2002). -Classification Goods and services in respect of which Community trade marks are applied for shall be classified in conformity with the system of classification specified in the Implementing Regulation. +5. -24.3.2009 Official Journal of the European Union EN -==SECTION 2== +DETAILED EXPLANATION OF THE PROPOSAL The proposed amendments to the Regulation are presented according to the objectives set out in section 1.2 above. -Priority L 78/9 application for the purposes of establishing which rights take precedence. +5.1. +Adaptation of terminology and Common approach on Union decentralised agencies As a consequence of the entry into force of the Lisbon Treaty, the terminology of the Regulation is updated. This means changing ‘Community trade mark’ to ‘European trade mark’. -====Article 29==== +There is a range of measures to improve the governance and efficiency of existing agencies and agencies yet to be established in the common approach on decentralised agencies, agreed by the European Parliament, the Council and the Commission in July 2012. The Regulation needs to be adapted to take into account the common approach as regards its provisions on OHIM. Regarding the name of the agency, it is proposed to rename it as the ‘European Union Trade Marks and Designs Agency’ (hereinafter ‘the Agency’), to enhance the functions of its Management Board, to align selection procedures for senior officials and to provide for annual and multi-annual work programmes and regular evaluations. +5.2. -====Article 32==== +Streamlining procedures - Filing of applications (Article 25) National Offices hardly ever receive applications for European trade marks any more. Almost all applications (96,3% in 2012) are now directly filed through the OHIM’s e-filing system. In EN 5 EN the light of this situation, given that applications can now easily be filed on line, the option for filing these at National Offices should be abolished. -Right of priority Equivalence of Community filing with national filing -1. A person who has duly filed an application for a trade mark in or in respect of any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing a Community trade mark application for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application. +- Filing date (Article 27) Most European trade mark applications are nowadays examined before the expiry of the onemonth period before applicants have to pay the application fee. This allows applicants to file ‘test applications’ and not to pay the fee if a deficiency or objection is raised by the Agency. -A Community trade mark application which has been accorded a date of filing shall, in the Member States, be equivalent to a regular national filing, where appropriate with the priority claimed for the Community trade mark application. +Payments via current accounts are deemed to be have been made on the last day of the month, if applicants so wish. Article 27 is therefore amended to abolish the one-month period and to link the ‘obligation’ to pay with the filing of the application, so that applicants will have to provide evidence that they submitted or authorised their payment when they filed their application. +- Searches (Articles 38 and 155) The present regimes on searches provide neither a reliable trade mark clearance tool, nor fully comprehensive monitoring of the Register. The weaknesses of national and EU searches have become more acute over time, while IT advances nowadays mean users can have access to better, faster and cheaper alternatives. Applicants now have very little interest in obtaining the results of national searches from National Offices taking part in the optional system. The Agency is in the process of developing, together with National Offices, a number of promising tools that offer far better means of conducting priority searches and monitoring the registry for infringements. Current search regimes are therefore abolished. -==SECTION 3== - -Exhibition priority -2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority. - - -====Article 33==== - -Exhibition priority -3. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application. - - -4. A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority. - - -5. If the first filing has been made in a State which is not a party to the Paris Convention or to the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of the first filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect. - - -1. If an applicant for a Community trade mark has displayed goods or services under the mark applied for, at an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972, he may, if he files the application within a period of six months from the date of the first display of the goods or services under the mark applied for, claim a right of priority from that date within the meaning of Article 31. - - -2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the display of goods or services under the mark applied for under the conditions laid down in the Implementing Regulation. - - -3. An exhibition priority granted in a Member State or in a third country does not extend the period of priority laid down in Article 29. - - -==SECTION 4== - - -====Article 30==== - -Claiming the seniority of a national trade mark Claiming priority An applicant desiring to take advantage of the priority of a previous application shall file a declaration of priority and a copy of the previous application. If the language of the latter is not one of the languages of the Office, the applicant shall file a translation of the previous application in one of those languages. - - -====Article 31==== - -Effect of priority right The right of priority shall have the effect that the date of priority shall count as the date of filing of the Community trade mark -====Article 34==== - -Claiming the seniority of a national trade mark -1. The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered. - -L 78/10 Official Journal of the European Union EN -2. Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered. - - -3. The seniority claimed for the Community trade mark shall lapse if the earlier trade mark the seniority of which is claimed is declared to have been revoked or to be invalid or if it is surrendered prior to the registration of the Community trade mark. - - -====Article 35==== - -Claiming seniority after registration of the Community trade mark -1. The proprietor of a Community trade mark who is the proprietor of an earlier identical trade mark registered in a Member State, including a trade mark registered in the Benelux countries or of an earlier identical trade mark, with an international registration effective in a Member State, for goods or services which are identical to those for which the earlier trade mark has been registered, or contained within them, may claim the seniority of the earlier trade mark in respect of the Member State in or for which it was registered. - - -2. Article 34(2) and (3) shall apply. 24.3.2009 -3. If the deficiencies or the default on payment established pursuant to paragraph 1(a) are not remedied within this period, the application shall not be dealt with as a Community trade mark application. If the applicant complies with the Office's request, the Office shall accord as the date of filing of the application the date on which the deficiencies or the default on payment established are remedied. - - -4. If the deficiencies established pursuant to paragraph 1(b) are not remedied within the prescribed period, the Office shall refuse the application. - - -5. If the default on payment established pursuant to paragraph 1(c) is not remedied within the prescribed period, the application shall be deemed to be withdrawn unless it is clear which categories of goods or services the amount paid is intended to cover. - - -6. Failure to satisfy the requirements concerning the claim to priority shall result in loss of the right of priority for the application. - - -7. Failure to satisfy the requirements concerning the claiming of seniority of a national trade mark shall result in loss of that right for the application. - - -====Article 37==== - -Examination as to absolute grounds for refusal -===TITLE IV=== - -REGISTRATION PROCEDURE -==SECTION 1== - -Examination of applications -====Article 36==== - -Examination of the conditions of filing -1. The Office shall examine whether: (a) the Community trade mark application satisfies the requirements for the accordance of a date of filing in accordance with Article 27; (b) the Community trade mark application complies with the conditions laid down in this Regulation and with the conditions laid down in the Implementing Regulation; (c) where appropriate, the class fees have been paid within the prescribed period. - - -1. Where, under Article 7, a trade mark is ineligible for registration in respect of some or all of the goods or services covered by the Community trade mark application, the application shall be refused as regards those goods or services. - - -2. Where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the Community trade mark, as the case may be. - - -3. The application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations. - - -==SECTION 2== - -Search -====Article 38==== - -Search -2. Where the Community trade mark application does not satisfy the requirements referred to in paragraph 1, the Office shall request the applicant to remedy the deficiencies or the default on payment within the prescribed period. - - -1. Once the Office has accorded a date of filing, it shall draw up a Community search report citing those earlier Community trade marks or Community trade mark applications discovered which 24.3.2009 Official Journal of the European Union EN may be invoked under Article 8 against the registration of the Community trade mark applied for. - - -2. Where, at the time of filing a Community trade mark application, the applicant requests that a search report also be prepared by the central industrial property offices of the Member States and where the appropriate search fee has been paid within the time limit for the payment of the filing fee, the Office shall, as soon as a Community trade mark application has been accorded a date of filing, transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks in respect of Community trade mark applications. - -referred to in Article 38(7) has expired, the application shall be published to the extent that it has not been refused pursuant to Article 37. - - -2. Where, after publication, the application is refused under Article 37, the decision that it has been refused shall be published upon becoming final. - - -==SECTION 4== - -Observations by third parties and opposition -3. Each of the central industrial property offices referred to in paragraph 2 shall communicate to the Office within two months as from the date on which it received the Community trade mark application a search report which shall either cite those earlier national trade marks or trade mark applications discovered which may be invoked under Article 8 against the registration of the Community trade mark applied for, or state that the search has revealed no such rights. - - -4. The search reports referred to in paragraph 3 shall be prepared on a standard form drawn up by the Office, after consulting the Administrative Board provided for in Article 126(1), hereinafter referred to as ‘the Administrative Board’. - -The essential contents of this form shall be set out in the Implementing Regulation. - -L 78/11 -====Article 40==== - -Observations by third parties -1. Following the publication of the Community trade mark application, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Office written observations, explaining on which grounds under Article 7, in particular, the trade mark shall not be registered ex officio. They shall not be parties to the proceedings before the Office. - - -5. An amount shall be paid by the Office to each central industrial property office for each search report provided by that office in accordance with paragraph 3. The amount, which shall be the same for each office, shall be fixed by the Budget Committee by means of a decision adopted by a majority of three-quarters of the representatives of the Member States. +- Publication of the application (Article 39) Abolishing the search system will also make it possible to abolish the current one-month period between the Agency notifying the applicant of search reports and publication of the application. This will speed up the registration procedure. +- Observations by third parties (Article 40) To facilitate the submission of observations by third parties, Article 40 is amended by extending the period over which observations can be filed. The reference to the publication date is to be deleted, taking into account that European trade mark applications are already made available to the public in the Agency’s trade mark database ‘CTM online’ within a few days of filing. To streamline proceedings, third parties will be given the opportunity to file observations as soon as they become aware of an application. The deadline for filing observations will be at the end of the opposition period or once opposition proceedings have concluded, following current Agency practice. -2. The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them. +- Revision of decisions inter partes (Article 62) Article 62 has turned out to be of no practical relevance. Not a single inter partes decision has been revised under this provision to date. The main reason is that the other party has no interest in giving the approval required by Article 62(2). Given that there are sufficient remedies to correct an erroneous inter partes decision, Article 62 is deleted. +- Continuation of proceedings (Article 82) EN 6 EN The application of Article 82 has led to some problems in practice and gave rise to a Communication of the President of the Agency, No 06/058. Article 82 is amended to streamline its application and to incorporate the contents of that Communication. As both Article 25(3) and Article 62 are deleted, all mentions of them are also deleted from the list of excluded time limits. The mention of Article 42 is also deleted to enable all time limits in opposition proceedings to continue, with the exception of the opposition period laid down in Article 41(1) and the period for payment of the opposition fee set out in Article 41(3). -6. The Office shall transmit without delay to the applicant for the Community trade mark the Community search report and any requested national search reports received within the time limit laid down in paragraph 3. +- Opposition period for International Registrations (Article 156) As there is no need to maintain the six-month-long period currently provided for, Article 156 is amended to shorten the time between publication under Article 152(1) and the start of the opposition period for international registrations to one month. -Opposition -7. Upon publication of the Community trade mark application, which may not take place before the expiry of a period of one month as from the date on which the Office transmits the search reports to the applicant, the Office shall inform the proprietors of any earlier Community trade marks or Community trade mark applications cited in the Community search report of the publication of the Community trade mark application. +5.3. +Increasing legal certainty - Definition of a European trade mark (Article 4) Article 4 is amended to remove the requirement of ‘graphic representability’. The prerequisite that it should be possible to produce a graphic representation of the sign applied for is out of date. It creates a great deal of legal uncertainty with regard to certain non-traditional marks, such as mere sounds. In the latter cases, representation by other than graphical means (e.g. by a sound file) may even be preferable to graphic representation, if it permits a more precise identification of the mark and thereby serves the aim of enhanced legal certainty. The proposed new definition leaves the door open to registering matter that can be represented by technological means offering satisfactory guarantees. The idea is not to go for a boundless extension of the admissible ways to represent a sign but to provide for more flexibility in that respect while ensuring greater legal certainty. -====Article 41==== +- Protection of geographical indications and traditional terms (Article 7) Article 7(1)(j) and (k) do not offer the same degree of protection to geographical indications as provided in the following: 9 10 11 EN Articles 118l and 118m of Regulation (EC) No 1234/2007 of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products, as amended by Regulation (EC) No 491/2009 of 25 May 200910; 8 Articles 13 and 14 of Regulation (EU) No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs9; Article 16 of Regulation (EC) No 110/2008 of 15 January 2008 on the protection of geographical indications of spirit drinks11. +OJ OHIM 2005, p. 1402. -1. Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8: (a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5); (b) by the proprietors of trade marks referred to in Article 8(3); (c) by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights. +OJ L 343, 14.12.2012, p. 1. +OJ L 154, 17.6.2009, p. 1. -==SECTION 3== - -Publication of the application -====Article 39==== - -Publication of the application -1. If the conditions which the application for a Community trade mark must satisfy have been fulfilled and if the period -2. Notice of opposition to registration of the trade mark may also be given, subject to the conditions laid down in paragraph 1, in the event of the publication of an amended application in accordance with the second sentence of Article 43(2). - -L 78/12 Official Journal of the European Union EN -3. Opposition must be expressed in writing and must specify the grounds on which it is made. It shall not be treated as duly entered until the opposition fee has been paid. Within a period fixed by the Office, the opponent may submit in support of his case facts, evidence and arguments. - - -====Article 42==== - -Examination of opposition -1. In the examination of the opposition the Office shall invite the parties, as often as necessary, to file observations, within a period set them by the Office, on communications from the other parties or issued by itself. - -24.3.2009 contained therein. Where the application has already been published, the withdrawal or restriction shall also be published. - - -2. In other respects, a Community trade mark application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trade mark or extend the list of goods or services. Where the amendments affect the representation of the trade mark or the list of goods or services and are made after publication of the application, the trade mark application shall be published as amended. +OJ L 39, 13.2.2008, p. 16. +7 EN To ensure that EU law protecting geographical indications is given full effect in proceedings relating to the registration of European trade marks, the relevant absolute grounds for refusal are fully aligned with the EU law on geographical indications and streamlined in the Regulation. Moreover, for reasons of coherence, grounds for refusal are extended to cover protected traditional terms for wine and traditional specialities guaranteed. -====Article 44==== +- Rights conferred by a European trade mark (Articles 9 and 9a) 1. +Rights conferred without prejudice to prior rights Neither the Regulation nor the Directive contains a clear rule stating that the trade mark proprietor cannot successfully invoke his rights against the use of an identical or similar sign which is already the subject of an earlier right. In line with Article 16(1) of the TRIPS Agreement12, Article 9 of the Regulation is amended to clarify that infringement claims are without prejudice to earlier rights. -2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. +2. -Division of the application -1. The applicant may divide the application by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications. The goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications. +Cases of double identity The recognition of additional trade mark functions under Article 5(1)(a) of the Directive (Article 9(1)(a) of the Regulation) has created legal uncertainty. In particular, the relationship between double identity cases and the extended protection afforded by Article 5(2) of the Directive (Article 9(1)(c) of the Regulation) to trade marks having a reputation has become unclear13. In the interest of legal certainty and consistency, it is clarified that in cases of both double identity under Article 9(1)(a) and similarity under Article 9(1)(b) it is only the origin function which matters. +3. -2. The declaration of division shall not be admissible: (a) if, where an opposition has been entered against the original application, such a divisional application has the effect of introducing a division amongst the goods or services against which the opposition has been directed, until the decision of the Opposition Division has become final or the opposition proceedings are finally terminated otherwise; -4. The Office may, if it thinks fit, invite the parties to make a friendly settlement. +Use as a trade or company name According to the Court of Justice14, Article 5(1) of the Directive is applicable where the public considers the use of a company name as (also) relating to the goods or services offered by the company. It is therefore appropriate to treat trade name use of a protected trade mark as an infringing act, if the requirements of use for goods or services are met. -(b) during the periods laid down in the Implementing Regulation. +4. +Use in comparative advertising Directive 2006/114/EC of 12 December 2006 concerning misleading and comparative advertising15 regulates the conditions under which advertising, which explicitly or by implication identifies a competitor or goods or services offered by a competitor, is permissible. The relationship of this instrument to the legislation on trade marks has given rise to doubts. It is therefore appropriate to clarify that the trade mark owner may prevent the use of his trade mark in comparative advertising where such comparative advertising does not satisfy the requirements of Article 4 of Directive 2006/114/EC. -5. If examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the Community trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected. +5. +Consignments from commercial suppliers 12 Agreement on Trade-Related Aspects of Intellectual Property Rights, OJ L 336, 23.12.1994, p. 213. -3. The declaration of division must comply with the provisions set out in the Implementing Regulation. +Opinion of AG Jääskinen in Case C-323/09, Interflora, para. 9. +Judgment of 11 September 2007, Case C-17/06, Céline, ECR I-07041. -3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. +OJ L 376, 27.12.2006, p. 21. +13 14 15 EN 8 EN Amendments are proposed to clarify that goods may not be imported into the EU even if only the consignor is acting for commercial purposes. This is to ensure that a trade mark owner has the right to prevent businesses (whether located in the EU or not) from importing goods located outside the EU that have been sold, offered, advertised or shipped to private consumers, and to discourage the ordering and sale of counterfeit goods over the internet. -6. The decision refusing the application shall be published upon becoming final. +6. +Goods brought into the customs territory According to the Court of Justice in the Philips/Nokia judgment16, the entry, presence and movement of non-EU goods in the customs territory of the EU under a suspensive procedure does, under the existing acquis, not infringe intellectual property rights as conferred by substantive law of the Union and its Member States. Such goods can only be classified as counterfeit once there is proof that they are subject of a commercial act directed at EU consumers, such as sale, offer for sale or advertising. The implications of the Philips/Nokia judgment have met with strong criticism from stakeholders as placing an inappropriately high burden of proof on rights holders, and hindering the fight against counterfeiting. It is evident that there is an urgent need to have in place a European legal framework enabling a more effective fight against the counterfeiting of goods as a fast-growing activity. It is therefore proposed to fill the existing gap by entitling right holders to prevent third parties from bringing goods, from third countries, bearing without authorization a trade mark which is essentially identical to the trade mark registered in respect of those goods, into the customs territory of the Union, regardless of whether they are released for free circulation. -4. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid. +7. +Preparatory acts Neither the Regulation nor the Directive contains any provisions allowing proceedings against the distribution and sale of labels and packaging or similar items which may subsequently be combined with illicit products. Some national laws have explicit rules covering this activity. -5. The division shall take effect on the date on which it is recorded in the files kept by the Office concerning the original application. +Including a rule on this in the Regulation and the Directive is appropriate to provide another practical, relevant and efficient contribution to the combat against counterfeiting. +- Limitation of the effects of a European trade mark (Article 12) The limitation in Article 12(1)(a) is restricted to cover the use of personal names only in accordance with the Joint Statement of the Council and the Commission17. For reasons of consistency, the limitation in Article 12(1)(b) is extended to cover the use of non-distinctive signs or indications. It is also considered appropriate to provide in Article 12(1)(c) an explicit limitation covering referential use in general. Finally, a separate paragraph clarifies the conditions under which use of a trade mark is not considered as complying with honest business practices. -==SECTION 5== +- Designation and classification of goods and services (Article 28) Article 28 is amended to provide essential rules concerning the designation and classification of goods and services in the Regulation. These rules are introduced into the Directive. They 16 17 EN Judgment of 1 December 2011, Cases C-446/09 Philips and C-495/09 Nokia. -Withdrawal, restriction, amendment and division of the application -====Article 43==== +Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting, on the first Council Directive approximating the laws of the Member States on trade marks adopted on 21 December 1988. -Withdrawal, restriction and amendment of the application -1. The applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services -6. All requests and applications submitted and all fees paid with regard to the original application prior to the date on which the Office receives the declaration of division are deemed also to have been submitted or paid with regard to the divisional application or applications. The fees for the original application which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. +9 EN follow the principles established by the Court of Justice18 according to which goods and services for which protection is sought need to be identified by the applicant with sufficient clarity and precision to enable the relevant authorities and businesses to determine the extent of protection the trade mark confers. The general indications of the class heading of the Nice Classification may be used to identify goods or services provided that such identifications are sufficiently clear and precise. The amendment clarifies that the use of general terms has to be interpreted as including all goods or services clearly covered by the literal meaning of the term. Finally, the amendment allows proprietors of European trade marks which were filed before the date of publication of the Agency’s new classification practice19 to adapt their specifications of goods and services in accordance with the case law of the Court of Justice in order to ensure that the content of the register meets the requisite standard of clarity and precision. +- European certification marks (Articles 74b - 74k) While various national systems offer protection for certification marks, the European trade mark system currently provides only for the registration of individual and collective marks. -7. The divisional application shall preserve the filing date and any priority date and seniority date of the original application. +Some public and private bodies that do not meet the conditions to be eligible to obtain collective trade mark protection also need a system for protection of certification marks at EU level. Such a system would also remedy the current imbalance between national systems and the European trade mark system. It is proposed to add to the Regulation a specific set of rules covering the registration of European certification marks. -24.3.2009 Official Journal of the European Union EN L 78/13 -==SECTION 6== +- Tasks of the Agency (Article 123b) To ensure comprehensive cover, legal certainty and greater transparency, all the Agency’s tasks are defined in the new Article 123b, including those which stem from other legal acts and are not related to the EU trade mark system. +5.4. -====Article 48==== +Framework for cooperation (Article 123c) Article 123c provides a clear framework for mandatory cooperation between the Agency and Member State intellectual property offices with the aim of promoting convergence of practices and the development of common tools. It states that the Agency and Member State offices are obliged to cooperate, and stipulates the main areas for cooperation and specific common projects of Union interest the Agency will coordinate. It further sets up a funding mechanism enabling the Agency to finance those common projects by means of grants. This funding scheme represents a legally and financially feasible alternative to the approach suggested by the Council in its May 2010 Conclusions. -Registration Alteration -====Article 45==== +5.5. +Alignment to Article 290 TFEU The Regulation confers powers on the Commission in order to adopt certain rules. Those rules are currently provided in the Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark20, Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the 18 19 20 EN Judgment of 19 June 2012, Case C-307/10, ‘IP Translator’. -1. The Community trade mark shall not be altered in the Register during the period of registration or on renewal thereof. +Communication No 2/12 of the President of the Office, OJ OHIM 7/2012. -Registration Where an application meets the requirements of this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where opposition has been rejected by a definitive decision, the trade mark shall be registered as a Community trade mark, provided that the registration fee has been paid within the period prescribed. If the fee is not paid within this period the application shall be deemed to be withdrawn. +OJ L 303, 15.12.1995, p. 1. +10 EN Office for Harmonisation in the Internal Market21, and Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market22. The entry into force of the Lisbon Treaty makes it necessary to align the powers conferred upon the Commission under the Regulation to Article 290 of the Treaty (new Articles 24a, 35a, 45a, 49a, 57a, 65a, 74a, 74k, 93a, 114a, 144a and 161a). -2. Nevertheless, where the Community trade mark includes the name and address of the proprietor, any alteration thereof not substantially affecting the identity of the trade mark as originally registered may be registered at the request of the proprietor. +21 22 EN OJ L 303, 15.12.1995, p. 33. +OJ L 28, 6.2.1996, p. 11. -3. The publication of the registration of the alteration shall contain a representation of the Community trade mark as altered. Third parties whose rights may be affected by the alteration may challenge the registration thereof within a period of three months following publication. +11 EN 2013/0088 (COD) Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL amending Council Regulation (EC) No 207/2009 on the Community trade mark (Text with EEA relevance) THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION, Having regard to the Treaty on the Functioning of the European Union, and in particular Article 118(1) thereof, Having regard to the proposal from the European Commission, After transmission of the draft legislative act to the national Parliaments, Acting in accordance with the ordinary legislative procedure, Whereas: (1) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark1, in 2009 codified as Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark2, created a system of trade mark protection specific for the European Union which provided for the protection of trade marks at the level of the European Union, in parallel to the protection of trade marks available at the level of the Member States according to the national trade mark systems harmonized by Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks3, codified as Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks4. +(2) As a consequence of the entry into force of the Lisbon Treaty, the terminology of Regulation (EC) No 207/2009 should be updated. This implies the replacement of 'Community trade mark' by 'European trade mark'. In line with the Common approach on decentralised Agencies, agreed in July 2012 by the European Parliament, the Council and the Commission, the name 'Office for Harmonisation in the Internal 1 OJ C 146 E, 12.6.2008, p. 79. -===TITLE V=== +OJ L 78, 24.3.2009, p. 1. +OJ L 40, 11.2.1989, p. 1. -====Article 49==== +OJ L 299, 8.11.2008, p. 25. -DURATION, RENEWAL, ALTERATION AND DIVISION OF COMMUNITY TRADE MARKS Division of the registration -====Article 46==== +2 3 4 EN 1 EN Market (trade marks and designs) ' should be replaced by 'European Union Trade Marks and Designs Agency' (hereinafter 'the Agency'). -Duration of registration Community trade marks shall be registered for a period of 10 years from the date of filing of the application. Registration may be renewed in accordance with Article 47 for further periods of 10 years. +(3) Further to the Commission’s Communication of 16 July 2008 on an Industrial Property Rights Strategy for Europe5, the Commission carried out a comprehensive evaluation of the overall functioning of the trade mark system in Europe as a whole, covering Union and national levels and the interrelation between each other. +(4) In its conclusions of 25 May 2010 on the future revision of the Trade Mark system in the European Union6, the Council called on the Commission to present proposals for the revision of Regulation (EC) No 207/2009 and Directive 2008/95/EC. -====Article 47==== +(5) The experience acquired since the establishment of the Community trade mark system has shown that undertakings from within the Union and from third countries have accepted the system, which has become a successful and viable alternative to the protection of trade marks at the level of the Member States. +(6) National trade marks continue nevertheless to be necessary for those undertakings which do not want protection of their trade marks at Union level or which are unable to obtain Union-wide protection while national protection does not face any obstacles. -1. The proprietor of the Community trade mark may divide the registration by declaring that some of the goods or services included in the original registration will be the subject of one or more divisional registrations. The goods or services in the divisional registration shall not overlap with the goods or services which remain in the original registration or those which are included in other divisional registrations. +It should be left to the decision of each person seeking trade mark protection whether the protection is sought only as a national mark in one or more Member States, or only as a European trade mark, or both. +(7) While the evaluation of the overall functioning of the Community trade mark system confirmed that many aspects of that system, including the fundamental principles on which it is based, have stood the test of time and continue meeting business needs and expectations, the Commission concluded in its Communication ‘A Single Market for Intellectual Property Rights’ of 24 May 20117 that there is a necessity to modernise the trade mark system in the Union by making it more effective, efficient and consistent as a whole and adapting it to the Internet era. -2. The declaration of division shall not be admissible: (a) if, where an application for revocation of rights or for a declaration of invalidity has been entered at the Office against the original registration, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the application for revocation of rights or for a declaration of invalidity is directed, until the decision of the Cancellation Division has become final or the proceedings are finally terminated otherwise; (b) if, where a counterclaim for revocation or for a declaration of invalidity has been entered in a case before a Community trade mark court, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the counterclaim is directed, until the mention of the Community trade mark court's judgment is recorded in the Register pursuant to Article 100(6). +(8) In parallel to the improvements and amendments of the Community trade mark system, national trade mark laws and practices should be further harmonised and brought in line with the Union trade mark system to the extent appropriate in order to create as far as possible equal conditions for the registration and protection of trade marks throughout the Union. -Renewal -1. Registration of the Community trade mark shall be renewed at the request of the proprietor of the trade mark or any person expressly authorised by him, provided that the fees have been paid. +(9) In order to allow for more flexibility while ensuring greater legal certainty with regard to the means of representation of trade marks, the requirement of graphic representability should be deleted from the definition of a European trade mark. A sign should be permitted to be represented in any appropriate form, and thus not necessarily by graphic means, as long as the representation enables the competent authorities and the public to determine with precision and clarity the precise subject matter of protection. +5 COM(2008) 465. -2. The Office shall inform the proprietor of the Community trade mark, and any person having a registered right in respect of the Community trade mark, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the Office. +OJ C 140, 29.5.2010, p. 22. +COM(2011) 287. -3. The request for renewal shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fees shall also be paid within this period. +6 7 EN 2 EN (10) (11) Trade marks applied for in a script or language not intelligible in the Union should not deserve protection if their registration would have to be refused on absolute grounds when translated or transcribed in any official language of the Member States. -Failing this, the request may be submitted and the fees paid within a further period of six months following the day referred to in the first sentence, provided that an additional fee is paid within this further period. +(12) It is appropriate to make the dishonest appropriation of trade marks more difficult by extending the possibilities to oppose European trade mark applications filed in bad faith. +(13) With the aim of maintaining strong protection of rights in designations of origin and geographical indications protected at Union level, it is necessary to clarify that those rights entitle to bring an opposition against the registration of a later European trade mark, regardless of whether or not they are also grounds for refusal to be taken into account ex officio by the examiner. -4. Where the request is submitted or the fees paid in respect of only some of the goods or services for which the Community trade mark is registered, registration shall be renewed for those goods or services only. +(14) In order to ensure legal certainty and full consistency with the principle of priority, under which an earlier registered trade mark takes precedence over later registered trade marks, it is necessary to lay down that the enforcement of rights conferred by a European trade mark should be without prejudice to the rights of proprietors acquired prior to the filing or priority date of the European trade mark. This is in conformity with Article 16(1) of the Agreement on trade related aspects of intellectual property rights of 15 April 19948. +(15) In order to ensure legal certainty and clarity, it is necessary to clarify that not only in the case of similarity but also in case of an identical sign being used for identical goods or services, protection should be granted to a European trade mark only if and to the extent that the main function of the European trade mark, which is to guarantee the commercial origin of the goods or services, is adversely affected. -5. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered. +(16) Confusion as to the commercial source from which the goods or services emanate may occur when a company uses the same or a similar sign as a trade name in a way that a link is established between the company bearing the name and the goods or services coming from that company. Infringement of a European trade mark should therefore also comprise the use of the sign as a trade name or similar designation as long as the use is made for the purposes of distinguishing goods or services as to their commercial origin. +(17) In order to ensure legal certainty and full consistency with specific Union legislation, it is appropriate to provide that the proprietor of a European trade mark should be 8 EN The current provisions of Regulation (EC) No 207/2009 fall short of offering the same degree of protection to designations of origin and geographical indications as other instruments of Union law. It is therefore necessary to clarify the absolute grounds for refusal concerning designations of origin and geographical indications and to ensure full consistency with relevant Union legislation providing for protection of those intellectual property titles. For reasons of coherence with other Union legislation, the scope of those absolute grounds should be extended to cover also protected traditional terms for wine and traditional specialities guaranteed. -3. The declaration of division must comply with the provisions set out in the Implementing Regulation. +OJ L 336, 23.12.1994, p. 214. +3 EN entitled to prohibit a third party from using a sign in a comparative advertising where such comparative advertising is contrary to Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising9. -4. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid. +(18) (19) In order to more effectively prevent the entry of infringing goods, particularly in the context of sales over the Internet, the proprietor should be entitled to prohibit the importing of such goods into the Union, where it is only the consignor of the goods who acts for commercial purposes. +(20) In order to enable proprietors of European trade marks to fight counterfeiting more effectively, they should be entitled to prohibit the affixing of an infringing mark to goods and preparatory acts prior to the affixing. -5. The division shall take effect on the date on which it is entered in the Register. +(21) The exclusive rights conferred by a European trade mark should not entitle the proprietor to prohibit the use of signs or indications which are used fairly and in accordance with honest practices in industrial and commercial matters. In order to create equal conditions for trade names and trade marks in case of conflicts against the background that trade names are regularly granted unrestricted protection against later trade marks, such use should be considered to include the use of one’s own personal name only. It should further include the use of descriptive or non-distinctive signs or indications in general. Moreover, the proprietor should not be entitled to prevent the general fair and honest use of the European trade mark for identifying or referring to the goods or services as those of the proprietor. +(22) In order to ensure legal certainty and safeguard trade mark rights legitimately acquired, it is appropriate and necessary to lay down, without affecting the principle that the later trade mark cannot be enforced against the earlier trade mark, that proprietors of European trade marks should not be entitled to oppose the use of a later trade mark when the later trade mark was acquired at a time when the earlier trade mark could not be enforced against the later trade mark. -6. All requests and applications submitted and all fees paid with regard to the original registration prior to the date on which the Office receives the declaration of division shall be deemed L 78/14 Official Journal of the European Union EN also to have been submitted or paid with regard to the divisional registration or registrations. The fees for the original registration which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. +(23) For reasons of equity and legal certainty the use of a European trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it is registered should be sufficient to preserve the rights conferred regardless of whether the trade mark in the form as used is also registered. -24.3.2009 and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed; -7. The divisional registration shall preserve the filing date and any priority date and seniority date of the original registration. +(24) Regulation (EC) No 207/2009 confers powers on the Commission in order to adopt rules implementing that Regulation. As a consequence of the entry into force of the Lisbon Treaty, the powers conferred upon the Commission under Regulation (EC) No 9 EN With the aim of strengthening trade mark protection and combatting counterfeiting more effectively, the proprietor of a European trade mark should be entitled to prevent third parties from bringing goods into the customs territory of the Union without being released for free circulation there, where such goods come from third countries and bear without authorization a trade mark which is essentially identical to the European trade mark registered in respect of such goods. -(b) if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered; (c) -===TITLE VI=== +OJ L 376, 27.12.2006, p. 21. -if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. +4 EN 207/2009 need to be aligned to Article 290 of the Treaty on the Functioning of the European Union. -SURRENDER, REVOCATION AND INVALIDITY -==SECTION 1== +(25) (26) In order to ensure the efficient registration of legal acts concerning the European trade mark as object of property and ensure full transparency of the register of European trade marks, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying certain obligations of the applicant regarding specific trade marks, the details on the procedures for entering the transfer of European trade marks, the creation and transfer of a right in rem, the levy of execution, the involvement in an insolvency procedure and the grant or transfer of a licence in the Register and for cancelling or modifying relevant entries. -Surrender -====Article 50==== +(27) In view of the gradual decline and insignificant number of Community trade mark applications filed at the central intellectual property offices of the Member States ('the offices of the Member States'), it should be only allowed to file a European trade mark application at the Agency. -Surrender -2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only. - - -1. A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. - - -2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. - - -3. Surrender shall be entered only with the agreement of the proprietor of a right entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the trade mark proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of the period prescribed by the Implementing Regulation. - - -==SECTION 3== +(28) European trade mark protection is granted in relation to specific goods or services whose nature and number determine the extent of protection afforded to the trade mark owner. It is therefore essential to establish rules for the designation and classification of goods and services in Regulation (EC) No 207/2009 and to ensure legal certainty and sound administration by requiring that the goods and services for which trade mark protection is sought are identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on the basis of the application alone, to determine the extent of the protection applied for. The use of general terms should be interpreted as including only all goods and services clearly covered by the literal meaning of the term. Proprietors of European trade marks, which because of the previous practice of the Agency are registered in respect of the entire heading of a class of the Nice Classification, should be given the possibility to adapt their specifications of goods and services in order to ensure that the content of the register meets the requisite standard of clarity and precision in accordance with the case law of the Court of Justice of the European Union. -Grounds for invalidity -====Article 52==== +(29) EN It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level. The Commission, when preparing and drawing-up delegated acts, should ensure a simultaneous, timely and appropriate transmission of relevant documents to the European Parliament and Council. -Absolute grounds for invalidity -1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: -==SECTION 2== +In order to provide for an effective and efficient regime for the filing of European trade mark applications including priority and seniority claims, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the means and modalities of filing a European trade mark application, the details regarding the formal conditions of a European trade mark application, the content of that application, the type of application fee, as well as the details on the procedures for ascertaining reciprocity, claiming the priority of a previous application, an exhibition priority and the seniority of a national trade mark. -Grounds for revocation -====Article 51==== +5 EN (30) (31) In order to ensure an effective, efficient and expeditious examination and registration of European trade mark applications by the Agency using procedures which are transparent, thorough, fair and equitable, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the details on the procedures related to the examination of compliance with the requirements on the filing date and with the formal conditions of an application, the procedures for verifying payment of class fees and the examination of absolute grounds for refusal, the details concerning the publication of the application, the procedures for correcting mistakes and errors in publications of applications, the details on the procedures related to third party observations, the details on the opposition procedure, the details on the procedures for filing and examining an opposition and those governing the amendment and division of the application, the particulars to be recorded in the Register when registering a European trade mark, the modalities of publication of the registration and the content and modalities of issue of a certificate of registration. -(a) where the Community trade mark has been registered contrary to the provisions of Article 7; (b) where the applicant was acting in bad faith when he filed the application for the trade mark. +(32) In order to allow European trade marks to be renewed in an effective and efficient manner and to safely apply the provisions on the alteration and the division of a European trade mark in practice without compromising legal certainty, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the modalities for the renewal of a European trade mark and procedures governing the alteration and division of a European trade mark. -Grounds for revocation -1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor's rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period -2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. +(33) In order to permit the proprietor of a European trade mark to easily surrender a European trade mark, while respecting the rights of third parties entered in the register in relation to that mark, and to ensure that a European trade mark can be revoked or declared invalid in an effective and efficient way by means of transparent, thorough, fair and equitable procedures, and to take into account the principles laid down in this Regulation, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the procedure governing the surrender of a European trade mark as well as the procedures for revocation and invalidity. +(34) In order to allow for an effective, efficient and complete review of decisions of the Agency by the Boards of Appeal by means of a transparent, thorough, fair and equitable procedure which takes into account the principles laid down in Regulation (EC) No 207/2009, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the details on the content of the notice of appeal, the procedure for the filing and examination of an appeal, the content and form of the Board of Appeal's decisions and the reimbursement of the appeal fees. -3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. +(35) EN The current regime of European trade mark and national searches is neither reliable nor efficient. It should therefore be replaced by the making available of allencompassing, fast and powerful search engines for the free use of the public within the context of cooperation between the Agency and the offices of the Member States. -24.3.2009 Official Journal of the European Union EN -====Article 53==== +As a complement to the existing provisions on Community collective marks and to remedy the current imbalance between national systems and the European trade mark 6 EN system, it is necessary to add a set of specific provisions for the purpose of providing protection to European certification marks which allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with the certification requirements. -Relative grounds for invalidity -1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled; (b) where there is a trade mark as referred to in Article 8(3) and the conditions set out in that paragraph are fulfilled; (c) where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled. +(36) (37) The experience gained in the application of the current system of Community trade marks revealed the potential for improvement of certain aspects of procedure. +Consequently, certain measures should be taken to simplify and speed up procedures where appropriate and to enhance legal certainty and predictability where required. -2. A Community trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular: L 78/15 mark has been used, unless registration of the later Community trade mark was applied for in bad faith. +(38) In order to ensure a smooth, effective and efficient operation of the European trade mark system, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the requirements as to the form of decisions, the details on oral proceedings and the modalities of taking of evidence, the modalities of notification, the procedure for the noting of loss of rights, the means of communication and the forms to be used by the parties to proceedings, the rules governing the calculation and duration of time limits, the procedures for the revocation of a decision or for cancellation of an entry in the Register and for the correction of obvious errors in decisions and errors attributable to the Agency, the modalities of the interruption of proceedings and the procedures concerning the apportionment and fixing of costs, the particulars to be entered in the Register, the details concerning the inspection and keeping of files, the modalities of publications in the European Trade Marks Bulletin and in the Official Journal of the Agency, the modalities of administrative cooperation between the Agency and the authorities of Member States, and the details on representation before the Agency. +(39) For reasons of legal certainty and greater transparency, it is appropriate to clearly define all the tasks of the Agency including those which are not related to the management of the Union trade mark system. -2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith. +(40) EN In order to allow for an effective and efficient use of European collective and certification marks, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the periods for submitting the regulations governing the use of those marks and the content thereof. +With the aim of promoting convergence of practices and of developing common tools, it is necessary to establish an appropriate framework for cooperation between the Agency and the offices of the Member States, clearly defining the areas of cooperation and enabling the Agency to coordinate relevant common projects of Union interest and to finance, up to a maximum amount, those common projects by means of grants. -3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later Community trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later Community trade mark. +Those cooperation activities should be beneficial for undertakings using trade mark systems in Europe. For users of the Union regime laid down in this Regulation, the common projects, particularly the databases for search and consultation purposes, should provide additional, inclusive, efficient and free of charge tools to comply with the specific requirements flowing from the unitary character of the European trade mark. +7 EN (41) Certain principles regarding the governance of the Agency should be adapted to the Common Approach on EU decentralised agencies adopted by the European Parliament, the Council and the Commission in July 2012. -==SECTION 4== +(42) In the interest of greater legal certainty and transparency, it is necessary to update some provisions concerning the organization and functioning of the Agency. -(a) a right to a name; (b) a right of personal portrayal; (c) a copyright; Consequences of revocation and invalidity -====Article 55==== +(43) In the interest of sound financial management, the accumulation of significant budgetary surpluses should be avoided. This should be without prejudice to the Agency maintaining a financial reserve covering one year of its operational expenditure to ensure the continuity of its operations and the execution of its tasks. -Consequences of revocation and invalidity (d) an industrial property right. +(44) In order to allow for an effective and efficient conversion of an application or registration of a European trade mark into a national trade mark application while ensuring a thorough examination of the relevant requirements, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the formal conditions with which a request for conversion must comply and the details of its examination and publication. +(45) In order to ensure an effective and efficient method to resolve disputes, to ensure consistency with the language regime laid down in Regulation (EC) No 207/2009, the expeditious delivery of decisions on a simple subject matter, and the effective and efficient organisation of the Boards of Appeal, and to guarantee an appropriate and realistic level of fees to be charged by the Agency, while complying with the budgetary principles set out in Regulation (EC) No 207/2009, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the details on the languages to be used before the Agency, the cases where opposition and cancellation decisions should be taken by a single member, the details on the organisation of the Boards of Appeal, the amounts of the fees to be paid to the Agency and details related to their payment. -3. A Community trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of the Community trade mark before submission of the application for a declaration of invalidity or the counterclaim. +(46) In order to ensure the effective and efficient registration of international trade marks in full consistency with the rules of the Protocol relating to the Madrid Agreement concerning the international registration of marks, the power to adopt delegated acts in accordance with Article 290 of the Treaty should be delegated to the Commission in respect of specifying the details on the procedures concerning the international registration of trade marks. +(47) Regulation (EC) No 207/2009 should therefore be amended accordingly. -4. Where the proprietor of one of the rights referred to in paragraphs 1 or 2 has previously applied for a declaration that a Community trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim. +HAVE ADOPTED THIS REGULATION: +====Article 1==== -5. Article 52(3) shall apply. -====Article 54==== - - -1. The Community trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties. - - -2. The Community trade mark shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that the trade mark has been declared invalid. - - -3. Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not affect: (a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the revocation or invalidity decision; (b) any contract concluded prior to the revocation or invalidity decision, in so far as it has been performed before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract, may be claimed on grounds of equity. - -Limitation in consequence of acquiescence -1. Where the proprietor of a Community trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Community while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade L 78/16 Official Journal of the European Union EN -==SECTION 5== - -Proceedings in the Office in relation to revocation or invalidity -====Article 56==== - -24.3.2009 at that date. In the absence of proof to this effect the application for a declaration of invalidity shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services. +Regulation (EC) No 207/2009 is amended as follows: (1) (2) EN In the title, 'Community trade mark' is replaced by 'European trade mark'; Throughout the Regulation, the words 'Community trade mark' are replaced by 'European trade mark' and any necessary grammatical changes are made; 8 EN (3) Throughout the Regulation, the words ‘Community trade mark court’ are replaced by 'European trade mark court' and any necessary grammatical changes are made; (4) Throughout the Regulation, the words 'Community collective mark' are replaced by 'European collective mark' and any necessary grammatical changes are made; (5) Throughout the Regulation, except in the cases referred to in points (2), (3) and (4), the words 'Community', 'European Community' and 'European Communities' are replaced by ‘Union’ and any necessary grammatical changes are made; (6) Throughout the Regulation, the word 'Office', insofar as it refers to the Office for Harmonisation in the Internal Market (trade marks and designs) provided for in Article 2 of the Regulation, is replaced by 'Agency' and any necessary grammatical changes are made; (7) Throughout the Regulation, the word 'President' is replaced by 'Executive Director' and any necessary grammatical changes are made; (8) Article 2 is replaced by the following: 'Article 2 Agency +1. A European Union Trade Marks and Designs Agency, hereinafter referred to as ‘the Agency’, is hereby established. -Application for revocation or for a declaration of invalidity -1. An application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted to the Office: (a) where Articles 51 and 52 apply, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued; (b) where Article 53(1) applies, by the persons referred to in Article 41(1); (c) where Article 53(2) applies, by the owners of the earlier rights referred to in that provision or by the persons who are entitled under the law of the Member State concerned to exercise the rights in question. +2. All references in Union law to the Office for Harmonisation in the Internal Market (trade marks and designs) shall be read as references to the Agency.'; (9) Article 4 is replaced by the following: 'Article 4 Signs of which a European trade mark may consist A European trade mark may consist of any signs, in particular words, including personal names, designs, letters, numerals, colours as such, the shape of goods or of their packaging, or sounds, provided that such signs are capable of (a) distinguishing the goods or services of one undertaking from those of other undertakings; (b) being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor.'; (10) Article 7 is amended as follows: (a) In paragraph 1, points (j) and (k) are replaced by the following: '(j) trade marks which are excluded from registration and shall not continue to be used pursuant to Union legislation or international agreements to which the Union is party, providing for protection of designations of origin and geographical indications; EN 9 EN (k) trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine and traditional specialities guaranteed; (l) trade marks which contain or consist of an earlier variety denomination registered in accordance with Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights with respect to the same type of product.'; (b) paragraph 2 is replaced by the following: '2. Paragraph 1 shall apply notwithstanding that the grounds of nonregistrability obtain: (a) in only part of the Union; (b) only where a trade mark in a foreign language or script is translated or transcribed in any script or official language of a Member State.'; (11) Article 8 is amended as follows: (a) paragraph 3 is replaced by the following: '3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered: (a) where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's authorisation, unless the agent or representative justifies his action; (b) where the trade mark is liable to be confused with an earlier trade mark protected outside the Union, provided that, at the date of the application, the earlier trade mark was still in genuine use and the applicant was acting in bad faith.'; (b) in paragraph 4, the introductory phrase is replaced by the following: '4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to Union legislation providing for protection of designations of origin and geographical indications, or the law of the Member State governing that sign:' (c) paragraph 5 is replaced by the following: '5. Upon opposition by the proprietor of an earlier registered trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark irrespective of whether the goods or services for which it is applied are identical with, similar EN 10 EN to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.'; (12) Article 9 is replaced by the following: 'Article 9 Rights conferred by a European trade mark +1. The registration of a European trade mark shall confer on the proprietor exclusive rights. -2. The application shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee has been paid. +2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the European trade mark, the proprietor of a European trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign in relation to goods or services where: (a) the sign is identical with the European trade mark and is used in relation to goods or services which are identical with those for which the European trade mark is registered, and where such use affects or is liable to affect the function of the European trade mark to guarantee to consumers the origin of the goods or services; (b) the sign is identical, or similar to, the European trade mark and is used for goods or services which are identical with or similar to the goods or services for which the European trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) the sign is identical with, or similar to, the European trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the European trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the European trade mark. -3. An application for revocation or for a declaration of invalidity shall be inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a court in a Member State and has acquired the authority of a final decision. +3. The following, in particular, may be prohibited under paragraph 2: (a) (b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under that sign; (d) using the sign as a trade or company name or part of a trade or company name; (e) EN affixing the sign to the goods or to the packaging thereof; using the sign on business papers and in advertising; 11 EN (f) using the sign in comparative advertising in a way which is contrary to Directive 2006/114/EC. -====Article 57==== -Examination of the application -1. On the examination of the application for revocation of rights or for a declaration of invalidity, the Office shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Office, on communications from the other parties or issued by itself. +4. The proprietor of a European trade mark shall also be entitled to prevent the importing of goods referred to in paragraph 3(c) where only the consignor of the goods acts for commercial purposes. -2. If the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. If, at the date on which the Community trade mark application was published, the earlier Community trade mark had been registered for not less than five years, the proprietor of the earlier Community trade mark shall furnish proof that, in addition, the conditions contained in Article 42(2) were satisfied -3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. +5. The proprietor of a European trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the European trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.'; (13) The following Articles 9a and 9b are inserted: 'Article 9a Infringement of the rights of the proprietor by use of get-up, packaging or other means Where it is likely that the get-up, packaging or other means to which the mark is affixed will be used for goods or services and the use in relation to those goods or services would constitute an infringement of the rights of the proprietor under Article 9(2) and (3), the proprietor of a European trade mark shall have the right to prohibit the following: (a) affixing in the course of trade a sign identical with or similar to the European trade mark on get-up, packaging or other means on which the mark may be affixed; (b) offering or placing on the market, or stocking for those purposes, or importing or exporting get-up, packaging or other means on which the mark is affixed. -4. The Office may, if it thinks fit, invite the parties to make a friendly settlement. +====Article 9b==== -5. If the examination of the application for revocation of rights or for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the rights of the proprietor of the Community trade mark shall be revoked or it shall be declared invalid in respect of those goods or services. +Date of prevailing of rights against third parties +1. The rights conferred by a European trade mark shall prevail against third parties from the date of publication of the registration of the trade mark. -Otherwise the application for revocation of rights or for a declaration of invalidity shall be rejected. +2. Reasonable compensation may be claimed in respect of acts occurring after the date of publication of a European trade mark application, where those acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. -6. A record of the Office's decision on the application for revocation of rights or for a declaration of invalidity shall be entered in the Register once it has become final. +3. The court seized of a case may not decide upon the merits of the case until the registration has been published.'; (14) EN Article 12 is replaced by the following: 12 EN 'Article 12 Limitation of the effects of a European trade mark +1. A European trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own personal name or address; (b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; (c) the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark, in particular, where the use of the trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. -===TITLE VII=== +The first subparagraph shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters. -APPEALS -====Article 58==== -Decisions subject to appeal -1. An appeal shall lie from decisions of the examiners, Opposition Divisions, Administration of Trade Marks and Legal Divisions and Cancellation Divisions. It shall have suspensive effect. +2. The use by a third party shall be considered not to be in accordance with honest practices, in particular in any of the following cases: (a) it gives the impression that there is a commercial connection between the third party and the proprietor of the trade mark; (b) it takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark without due cause.'; (15) In Article 13(1), the words 'in the Community' are replaced by 'in the European Economic Area'.; (16) The following Article 13a is inserted: 'Article 13a Intervening right of the proprietor of a later registered trade mark as defence in infringement proceedings +1. In infringement proceedings, the proprietor of a European trade mark shall not be entitled to prohibit the use of a later registered European trade mark where that later trade mark shall not be declared invalid pursuant to Articles 53(3) and (4), 54(1) and (2) and 57(2). -2. A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows separate appeal. +2. In infringement proceedings, the proprietor of a European trade mark shall not be entitled to prohibit the use of a later registered national trade mark where that later registered national trade mark shall not be declared invalid pursuant to Articles 8, 9(1) and (2) and 48(3) of Directive [xxx]. -====Article 59==== +3. Where the proprietor of a European trade mark shall not be entitled to prohibit the use of a later registered trade mark pursuant to paragraphs 1 or 2, the proprietor of EN 13 EN that later registered trade mark shall not be entitled to prohibit the use of that earlier European trade mark in infringement proceedings.'; (17) In Article 15(1), the second subparagraph is replaced by the following: 'The following shall also constitute use within the meaning of the first paragraph: (a) (b) (18) use of the European trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered; affixing of the European trade mark to goods or to the packaging thereof in the Union solely for export purposes.'; In Article 16(1), the introductory phrase is replaced by the following: '1. Unless Articles 17 to 24 provide otherwise, a European trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the Union, as a national trade mark registered in the Member State in which, according to the Register of European trade marks (hereinafter 'the Register'):'; (19) In Article 17, paragraph 4 is deleted; (20) Article 18 is replaced by the following: 'Article 18 Transfer of a trade mark registered in the name of an agent +1. Where a European trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to demand the assignment of the European trade mark in his favour, unless such agent or representative justifies his action. -Persons entitled to appeal and to be parties to appeal proceedings Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right. +2. The proprietor may submit a request for assignment pursuant to paragraph 1 to the following: (a) (b) (21) the Agency, instead of an application for a declaration of invalidity based on Article 53(1)(b); a European trade mark court as referred to in Article 95, instead of a counterclaim for a declaration of invalidity based on Article 100(1).'; Article 19 is amended as follows: (a) paragraph 2 is replaced by the following: '2. On request of one of the parties, the rights referred to in paragraph 1 or the transfer of those rights shall be entered in the Register and published.'; (b) EN the following paragraph 3 is added: 14 EN '3. An entry in the Register effected pursuant to paragraph 2 shall be cancelled or modified on request of one of the parties.'; (22) In Article 20, the following paragraph 4 is added: '4. An entry in the Register effected pursuant to paragraph 3 shall be cancelled or modified on request of one of the parties.'; (23) In Article 22, the following paragraph 6 is added: '6. An entry in the Register effected pursuant to paragraph 5 shall be cancelled or modified on request of one of the parties.'; (24) In Title II, the following Section 5 is inserted: 'SECTION 5 Delegation of powers -====Article 60==== +====Article 24a==== -Time limit and form of appeal Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision appealed 24.3.2009 Official Journal of the European Union EN from. The notice shall be deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: (a) (b) the procedure for entering a transfer as referred to in Article 17(5) in the Register; (c) the procedure for entering the creation or transfer of a right in rem as referred to in Article 19(2) in the Register; (d) the procedure for entering levy of execution as referred to in Article 20(3) in the Register; (e) the procedure for entering the involvement in an insolvency procedure as referred to in Article 21(3) in the Register; (f) the procedure for entering the grant or transfer of a license as referred to in Article 22(5) in the Register; (g) (25) the obligation of the applicant to provide a translation or transcription as referred to in Article 7(2)(b) in the language of the application; the procedure for cancelling or modifying the entry in the Register of a right in rem, levy of execution or a license, as referred to in Articles 19(3), 20(4) and 22(6) respectively.'; Article 25 is replaced by the following: 'Article 25 Filing of applications An application for a European trade mark shall be filed at the Agency.'; EN 15 EN (26) Article 26 is amended as follows: (a) in paragraph 1, point (d) is replaced by the following: '(d) a representation of the mark which satisfies the requirements set out in Article 4(b).'; (b) paragraph 3 is replaced by the following: '3. In addition to the requirements referred to in paragraphs 1 and 2, an application for a European trade mark shall comply with the formal conditions established in accordance with Article 35a(b). If those conditions provide for the trade mark to be represented electronically, the Executive Director of the Agency may determine the formats and maximum size of such an electronic file.'; (27) Article 27 is replaced by the following: 'Article 27 Date of filing The date of filing of a European trade mark application shall be the date on which documents containing the information specified in Article 26(1) are filed with the Agency by the applicant, subject to payment of the application fee for which the order for payment shall have been given at the latest on that date.'; (28) Article 28 is replaced by the following: 'Article 28 Designation and classification of goods and services +1. Goods and services in respect of which registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (hereinafter referred to as the 'Nice Classification'). -L 78/17 -====Article 64==== -Decisions in respect of appeals Revision of decisions in ex parte cases -1. Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. +2. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. The list of goods and services shall allow each item to be classified in only one class of the Nice Classification. -1. If the party which has lodged the appeal is the sole party to the procedure, and if the department whose decision is contested considers the appeal to be admissible and well founded, the department shall rectify its decision. +3. For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision. -2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. +4. The Agency shall reject the application in respect of indications or terms which are unclear or imprecise, if the applicant does not suggest an acceptable wording within a period set by the Agency to that effect. +EN 16 EN +5. The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood. -2. If the decision is not rectified within one month after receipt of the statement of grounds, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit. +6. Where the applicant requests registration for more than one class, the goods and services shall be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class to which that group of goods or services belongs and presented in the order of the classes. -3. The decisions of the Boards of Appeal shall take effect only as from the date of expiration of the period referred to in Article 65(5) or, if an action has been brought before the Court of Justice within that period, as from the date of dismissal of such action. +7. The classification of goods and services shall serve exclusively administrative purposes. Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification. -====Article 62==== +8. Proprietors of European trade marks applied for before 22 June 2012 which are registered solely in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class of the edition of the Nice classification in force at the date of filing. -====Article 65==== +The declaration shall be filed at the Agency within 4 months from the entry into force of this Regulation, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Agency shall take appropriate measures to amend the Register accordingly. This possibility is without prejudice to the application of Articles 15, 42(2), 51(1)(a) and 57(2). -Revision of decisions in inter partes cases Actions before the Court of Justice -====Article 61==== +European trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.'; (29) In Article 29(5), the following sentence is added: 'If necessary, the Executive Director of the Agency shall request the Commission to consider enquiring whether a State within the meaning of the first sentence accords that reciprocal treatment.'; (30) Article 30 is replaced by the following: 'Article 30 Claiming priority +1. Priority claims shall be filed together with the European trade mark application and shall include the date, number and country of the previous application. +EN 17 EN +2. The Executive Director of the Agency may determine that additional information and documentation to be provided by the applicant in support of the priority claim may consist of less than is required under the rules adopted in accordance with Article 35a(d), provided that the information required is available to the Agency from other sources.'; (31) Article 33 is amended as follows: (a) in paragraph 1, the following sentence is added: 'The priority claim shall be filed together with the European trade mark application.'; (b) paragraph 2 is replaced by the following: '2. An applicant who wishes to claim priority pursuant to paragraph 1 shall file evidence of the display of goods or services under the mark applied for.'; (32) In Article 34, paragraph 3 is replaced by the following: '3. The seniority claimed for the European trade mark shall lapse where the earlier trade mark the seniority of which is claimed is declared to be invalid or revoked. -1. Where the party which has lodged the appeal is opposed by another party and if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. +Where the earlier trade mark is revoked, the seniority shall lapse provided that the revocation takes effect prior to the filing date or priority date of the European trade mark.'; (33) In Title III, the following Section 5 is inserted: 'SECTION 5 Delegation of powers +====Article 35a==== -2. The decision may be rectified only if the department whose decision is contested notifies the other party of its intention to rectify it, and that party accepts it within two months of the date on which it received the notification. +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: (a) (b) the details regarding the content of the application for a European trade mark referred to in Article 26(1), the type of fees payable for the application referred to in Article 26(2), including the number of classes of goods and services covered by those fees, and the formal conditions of the application referred to in Article 26(3); (c) the procedures for ascertaining reciprocity in accordance with Article 29(5); (d) EN the means and modalities of filing an application for a European trade mark with the Agency in accordance with Article 25; the procedure and the rules on information and documentation for claiming the priority of a previous application in accordance with Article 30; 18 EN (e) (f) (34) the procedure and the rules on evidence for claiming an exhibition priority in accordance with Article 33(1); the procedure for claiming the seniority of a national trade mark in accordance with Article 34(1) and Article 35(1).'; In Article 36(1), point (b) is replaced by the following: '(b) the European trade mark application complies with the conditions laid down in this Regulation and with the formal conditions referred to in Article 26(3).'; (35) In Article 37, paragraph 2 is deleted; (36) In Title IV, Section 2 is deleted; (37) Article 39 is amended as follows: (a) paragraph 1 is replaced by the following: '1. If the conditions which the application for a European trade mark must satisfy have been fulfilled, the application shall be published for the purposes of Article 42 to the extent that it has not been refused pursuant to Article 37. +The publication of the application shall be without prejudice to information already made available to the public otherwise in accordance with this Regulation or with delegated acts adopted pursuant to this Regulation.'; (b) the following paragraph 3 is added: '3. The Agency shall correct any mistakes or errors in the publication of the application.'; (38) Article 40 is replaced by the following: 'Article 40 Observations by third parties +1. Any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Agency written observations, explaining on which grounds under Articles 5 and 7, the trade mark shall not be registered ex officio. -3. If, within two months of receiving the notification referred to in paragraph 2, the other party does not accept that the contested decision is to be rectified and makes a declaration to that effect or does not make any declaration within the period laid down, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit. +They shall not be parties to the proceedings before the Agency. -4. However, if the department whose decision is contested does not consider the appeal to be admissible and well founded within one month after receipt of the statement of grounds, it shall, instead of taking the measures provided for in paragraphs 2 and 3, remit the appeal to the Board of Appeal without delay, and without comment as to its merit. +2. Third party observations shall be submitted before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken. -1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals. +3. The submission referred to in paragraph 1 shall be without prejudice to the right of the Agency to re-open the examination of absolute grounds of its own initiative any time before registration, where appropriate. +EN 19 EN +4. The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them.'; (39) In Article 41, paragraph 3 is replaced by the following: '3. Opposition shall be expressed in writing, and shall specify the grounds on which it is made. It shall not be treated as duly entered until the opposition fee has been paid. -2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power. +4. Within a period fixed by the Agency, the opponent may submit facts, evidence and arguments in support of his case.'; (40) In Article 42(2), first sentence, the phrase 'during the period of five years preceding the date of publication' is replaced by 'during the period of five years preceding the date of filing or the date of priority'; (41) Article 44 is amended as follows: (a) in paragraph 2, point (b) is replaced by the following: '(b) before the date of filing referred to in Article 27 has been accorded by the Agency and during the opposition period provided for in Article 41(1).'; (b) (42) paragraph 3 is deleted; Article 45 is replaced by the following: 'Article 45 Registration +1. Where an application meets the requirements of this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where opposition has been rejected by a final decision, the trade mark shall be registered as a European trade mark. The registration shall be published. -3. The Court of Justice has jurisdiction to annul or to alter the contested decision. +2. The Agency shall issue a certificate of registration. The certificate may be issued by electronic means. -4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision. +3. The proprietor of a registered European trade mark shall have the right to use in connection with the goods and services covered by the registration a symbol right next to the trade mark attesting that the trade mark is registered in the Union only as long as the registration remains in force. The exact configuration of that symbol shall be decided by the Executive Director of the Agency. -5. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal. +4. The registered trade mark symbol shall not be used by any person other than the proprietor of the mark, or without the proprietor's consent. The proprietor of the trade mark shall not use the trade mark symbol before the mark is registered or after the revocation, declaration of invalidity, expiry or surrender of the trade mark.'; (43) In Title IV, the following Section 7 is inserted: 'SECTION 7 Delegation of powers EN 20 EN -6. The Office shall be required to take the necessary measures to comply with the judgment of the Court of Justice. +====Article 45a==== +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: (a) the procedure for the examination of compliance with the requirements for a filing date referred to in Article 36(1)(a) and with the formal conditions referred to in Article 26(3) and the procedure for verifying payment of the class fees referred to in Article 36(1)(c); (b) the procedure for the examination of the absolute grounds for refusal as referred to in Article 37; (c) the details which the publication of the application referred to in Article 39(1) shall contain; (d) the procedure for correcting mistakes and errors in publications of European trade mark applications referred to in Article 39(3); (e) the procedure for the submission of observations by third parties referred to in Article 40; (f) the details on the procedure for filing and examining an opposition set out in Articles 41 and 42; (g) the procedures governing the amendment of the application pursuant to Article 43(2) and the division of the application pursuant to Article 44; (h) the particulars to be recorded in the Register when registering a European trade mark and the modalities of the publication of the registration referred to in Article 45(1), the content and the modalities of issue of the certificate of registration referred to in Article 45(2).'; (44) In Article 49, paragraph 3 is deleted; (45) The following Article 49a is inserted: 'Article 49a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: (a) (b) the procedure governing the alteration of the registration of a European trade mark provided for in Article 48(2); (c) EN the procedural modalities for the renewal of the European trade mark pursuant to Article 47, including the type of fees to be paid; the procedure governing the division of a European trade mark provided for in Article 49.'; 21 EN (46) In Article 50, paragraphs 2 and 3 are replaced by the following: '2. The surrender shall be declared to the Agency in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. The validity of the surrender of a European trade mark which is declared to the Agency subsequent to the submission of an application for revocation of that trade mark pursuant to Article 56(1) shall be conditional upon the final rejection or withdrawal of the application for revocation.'; '3. Surrender shall be entered only with the agreement of the proprietor of a right entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the trade mark proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of a period established in accordance with Article 57a(a).'; (47) In Article 53(1), the following subparagraph is added: 'The conditions referred to in points (a), (b) and (c) of the first subparagraph shall be fulfilled at the filing date or the priority date of the European trade mark.'; (48) In Article 54(1) and (2), the words 'either' and 'or to oppose the use of the later trade mark' are deleted; (49) Article 56 is amended as follows: (a) in paragraph 1, point (c), 'under the law of the Member State concerned' is replaced by 'under Union law or the law of the Member State concerned'; (b) paragraph 3 is replaced by the following: '3. An application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Agency or by a European trade mark court as referred to in Article 95 and the decision of the Agency or that court on that application has acquired the authority of a final decision.'; (50) In Article 57(2), second sentence, 'was published' is replaced by 'was filed or at the priority date of the European trade mark application'; (51) In Title VI, the following Section 6 is inserted: 'SECTION 6 Delegation of powers -===TITLE VIII=== +====Article 57a==== -COMMUNITY COLLECTIVE MARKS -====Article 63==== +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: EN 22 EN (a) (b) (52) the procedure governing the surrender of a European trade mark set out in Article 50, including the period referred to in paragraph 3 of that Article; the procedures governing the revocation and invalidity of a European trade mark referred to in Articles 56 and 57.'; Article 58(1) is replaced by the following: '1. An appeal shall lie from decisions of any of the decision-making instances of the Agency listed in Article 130 points (a) to (d). Both the appeal period provided for in Article 60 and the filing of the appeal shall have suspensive effect.'; (53) Article 62 is deleted; (54) Article 64(3) is replaced by the following: '3. The decisions of the Boards of Appeal shall take effect only as from the date of expiry of the period referred to in Article 65(5) or, if an action has been brought before the General Court within that period, as from the date of dismissal of such action or of any appeal filed with the Court of Justice against the decision of the General Court.'; (55) Article 65 is amended as follows: (a) paragraph 1 is replaced by the following: '1. Actions may be brought before the General Court against decisions of the Boards of Appeal on appeals.'; (b) paragraph 3 is replaced by the following: '3. The General Court shall have jurisdiction to annul or to alter the contested decision.'; (c) paragraphs 5 and 6 are replaced by the following: '5. The action shall be brought before the General Court within two months of the date of notification of the decision of the Board of Appeal. -====Article 66==== +6. The Agency shall take the necessary measures to comply with the judgment of the General Court or, in case of appeal against that judgment, the Court of Justice.'; (56) The following Article 65a is inserted: 'Article 65a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: EN 23 EN (a) (b) the content and form of the Board of Appeal's decisions referred to in Article 64; (c) (57) the content of the notice of appeal referred to in Article 60 and the procedure for the filing and the examination of an appeal; the reimbursement of the appeal fees referred to in Article 60.''; The title of Title VIII is replaced by the following: 'SPECIFIC PROVISIONS ON EUROPEAN COLLECTIVE MARKS AND CERTIFICATION MARKS'; (58) Between the title of Title VIII and Article 66, the following heading is inserted: 'SECTION 1 European collective marks'; (59) In Article 66, paragraph 3 is replaced by the following: '3. Titles I to VII and IX to XIV shall apply to European collective marks to the extent that this section does not provide otherwise.'; (60) In Article 67(1), the words 'within the period prescribed' are replaced by 'within the period prescribed in accordance with Article 74a'; (61) Article 69 is replaced by the following: 'Article 69 Observations by third parties Where written observations on a European collective mark are submitted to the Agency pursuant to Article 40, those observations may also be based on the particular grounds on which the application for a European collective mark shall be refused pursuant to Article 68.'; (62) The following Article 74a is inserted: 'Article 74a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying the period referred to in Article 67(1) for submitting the regulations governing use of the European collective mark to the Agency and the content of those regulations as set out in Article 67(2).'; (63) In Title VIII, the following Section 2 is added: 'SECTION 2 European Certification Marks EN 24 EN -Examination of appeals Community collective marks -1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable. +====Article 74b==== +European certification marks +1. A European certification mark shall be a European trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of geographical origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristic from goods and services which are not so certified. -1. A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make -2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself. -L 78/18 Official Journal of the European Union EN -====Article 70==== +2. Any legal person, including institutions, authorities and bodies governed by public law, may apply for European certification marks provided that: (a) the legal person does not carry on a business involving the supply of goods or services of the kind certified; (b) the legal person is competent to certify the goods or services for which the mark is to be registered. -contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks. +3. By way of derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute European certification marks within the meaning of paragraph 1. A certification mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided the third party uses them in accordance with honest practices in industrial or commercial matters. A certification mark may not be invoked against a third party who is entitled to use a geographical name. -2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. +4. Titles I to VII and IX to XIV shall apply to European certification marks to the extent that this Section does not provide otherwise. -3. The provisions of this Regulation shall apply to Community collective marks, unless Articles 67 to 74 provide otherwise. -====Article 67==== +====Article 74c==== Regulations governing use of the mark -1. An applicant for a Community collective mark must submit regulations governing its use within the period prescribed. - - -2. The regulations governing use shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including sanctions. The regulations governing use of a mark referred to in Article 66(2) must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark. - - -====Article 68==== - -Refusal of the application -1. In addition to the grounds for refusal of a Community trade mark application provided for in Articles 36 and 37, an application for a Community collective mark shall be refused where the provisions of Articles 66 or 67 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality. - - -2. An application for a Community collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark. - -24.3.2009 Use of marks Use of a Community collective mark by any person who has authority to use it shall satisfy the requirements of this Regulation, provided that the other conditions which this Regulation imposes with regard to the use of Community trade marks are fulfilled. - - -====Article 71==== - -Amendment of the regulations governing use of the mark -1. The proprietor of a Community collective mark must submit to the Office any amended regulations governing use. - - -2. The amendment shall not be mentioned in the Register if the amended regulations do not satisfy the requirements of Article 67 or involve one of the grounds for refusal referred to in Article 68. - - -3. Article 69 shall apply to amended regulations governing use. -4. For the purposes of applying this Regulation, amendments to the regulations governing use shall take effect only from the date of entry of the mention of the amendment in the Register. - - -====Article 72==== - -Persons who are entitled to bring an action for infringement -1. The provisions of Article 22(3) and (4) concerning the rights of licensees shall apply to every person who has authority to use a Community collective mark. - - -2. The proprietor of a Community collective mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage in consequence of unauthorised use of the mark. - - -====Article 73==== - -Grounds for revocation Apart from the grounds for revocation provided for in Article 51, the rights of the proprietor of a Community collective mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, if: (a) the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register; (b) the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 68(2); (c) an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of the provisions of Article 71(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of those provisions. - - -3. An application shall not be refused if the applicant, as a result of amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2. - - -====Article 69==== - -Observations by third parties Apart from the cases mentioned in Article 40, any person, group or body referred to in that Article may submit to the Office written observations based on the particular grounds on which the application for a Community collective mark should be refused under the terms of Article 68. - -24.3.2009 Official Journal of the European Union EN L 78/19 -====Article 74==== - - -====Article 78==== - -Grounds for invalidity Taking of evidence Apart from the grounds for invalidity provided for in Articles 52 and 53, a Community collective mark which is registered in breach of the provisions of Article 68 shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of those provisions. - - -1. In any proceedings before the Office, the means of giving or obtaining evidence shall include the following: (a) hearing the parties; (b) requests for information; (c) the production of documents and items of evidence; (d) hearing witnesses; (e) opinions by experts; (f) statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up. - - -===TITLE IX=== - -PROCEDURE -==SECTION 1== - -General provisions -====Article 75==== - -Statement of reasons on which decisions are based -2. The relevant department may commission one of its members to examine the evidence adduced. - -Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments. - +1. An applicant for a European certification mark shall submit regulations governing the use of the certification mark within the period prescribed in accordance with Article 74k. -3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it shall issue a summons to the person concerned to appear before it. +2. The regulations governing use shall specify the persons authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark as well as the conditions of use of the mark, including sanctions. -====Article 76==== -4. The parties shall be informed of the hearing of a witness or expert before the Office. They shall have the right to be present and to put questions to the witness or expert. +====Article 74d==== -Examination of the facts by the Office of its own motion -1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. - - -2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned. - - -====Article 79==== - -Notification The Office shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those concerned must be notified under other provisions of this Regulation or of the Implementing Regulation, or of which notification has been ordered by the President of the Office. - - -====Article 77==== - -Oral proceedings -====Article 80==== - - -1. If the Office considers that oral proceedings would be expedient they shall be held either at the instance of the Office or at the request of any party to the proceedings. - -Revocation of decisions -2. Oral proceedings before the examiners, the Opposition Division and the Administration of Trade Marks and Legal Division shall not be public. - - -3. Oral proceedings, including delivery of the decision, shall be public before the Cancellation Division and the Boards of Appeal, in so far as the department before which the proceedings are taking place does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings. - - -1. Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party. - - -2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. Cancellation or revocation shall be determined L 78/20 Official Journal of the European Union EN within six months from the date on which the entry was made in the Register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the Community trade mark in question that are entered in the Register. - - -3. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility, under the procedures and conditions laid down by the Implementing Regulation, of correcting any linguistic errors or errors of transcription and obvious errors in the Office's decisions or errors attributable to the Office in registering the trade mark or in publishing its registration. - - -====Article 81==== - -Restitutio in integrum -1. The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress. - - -2. The application must be filed in writing within two months from the removal of the obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47(3), third sentence, shall be deducted from the period of one year. - - -3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid. - - -4. The department competent to decide on the omitted act shall decide upon the application. - - -5. This Article shall not be applicable to the time limits referred to in paragraph 2 of this Article, Article 41(1) and (3) and Article 82. - - -6. Where the applicant for or proprietor of a Community trade mark has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with, or similar to, the Community trade mark in the course of the period between the loss of rights in the application or in the Community trade mark and publication of the mention of reestablishment of those rights. - - -7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of a Community trade mark within a period of two 24.3.2009 months as from the date of publication of the mention of reestablishment of those rights. - - -8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum in respect of time limits provided for in this Regulation and to be observed vis-à-vis the authorities of such State. - - -====Article 82==== - -Continuation of proceedings -1. An applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who has omitted to observe a time limit vis-à-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. - -The request for continuation of proceedings shall be admissible only if it is presented within two months following the expiry of the unobserved time limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid. - - -2. This Article shall not be applicable to the time limits laid down in Article 25(3), Article 27, Article 29(1), Article 33(1), Article 36(2), Article 41, Article 42, Article 47(3), Article 60, Article 62, Article 65(5), Article 81, Article 112, or to the time limits laid down in this Article or the time limits laid down by the Implementing Regulation for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34. - - -3. The department competent to decide on the omitted act shall decide upon the application. - - -4. If the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. - - -5. If the Office rejects the application, the fee shall be refunded. -====Article 83==== - -Reference to general principles In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States. - - -====Article 84==== - -Termination of financial obligations -1. Rights of the Office to the payment of a fee shall be extinguished after four years from the end of the calendar year in which the fee fell due. - - -2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose. - -24.3.2009 Official Journal of the European Union EN -3. The period laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee, and in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless, in the meantime, judicial proceedings to enforce the right have begun; in this case the period shall end at the earliest one year after the judgment has acquired the authority of a final decision. - - -==SECTION 2== - -Costs -====Article 85==== - -Costs -1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs, without prejudice to Article 119(6), incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation. - -L 78/21 -====Article 86==== - -Enforcement of decisions fixing the amount of costs -1. Any final decision of the Office fixing the amount of costs shall be enforceable. - - -2. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the Government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice. - - -3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority. - - -4. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the country concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner. - - -==SECTION 3== - - -2. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs. - -Information which may be made available to the public and of the authorities of the Member States -3. The party who terminates the proceedings by withdrawing the Community trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the Community trade mark or by surrendering the Community trade mark, shall bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2. - -Register of Community trade marks -4. Where a case does not proceed to judgment the costs shall be at the discretion of the Opposition Division, Cancellation Division or Board of Appeal. - - -5. Where the parties conclude before the Opposition Division, Cancellation Division or Board of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, the department concerned shall take note of that agreement. - - -6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to the preceding paragraphs when the costs to be paid are limited to the fees paid to the Office and the representation costs. In all other cases, the registry of the Board of Appeal or a member of the staff of the Opposition Division or Cancellation Division shall fix the amount of the costs to be reimbursed on request. - -The request is admissible only within two months of the date on which the decision for which an application was made for the costs to be fixed became final. The amount so determined may be reviewed by a decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within the prescribed period. - - -====Article 87==== - -The Office shall keep a register to be known as the Register of Community trade marks, which shall contain those particulars the registration or inclusion of which is provided for by this Regulation or by the Implementing Regulation. The Register shall be open to public inspection. - - -====Article 88==== - -Inspection of files -1. The files relating to Community trade mark applications which have not yet been published shall not be made available for inspection without the consent of the applicant. - - -2. Any person who can prove that the applicant for a Community trade mark has stated that after the trade mark has been registered he will invoke the rights under it against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant. - - -3. Subsequent to the publication of the Community trade mark application, the files relating to such application and the resulting trade mark may be inspected on request. - - -4. However, where the files are inspected pursuant to paragraphs 2 or 3, certain documents in the file may be withheld from inspection in accordance with the provisions of the Implementing Regulation. - -L 78/22 Official Journal of the European Union EN -====Article 89==== - -Periodical publications The Office shall periodically publish: (a) (b) a Community Trade Marks Bulletin containing entries made in the Register of Community trade marks as well as other particulars the publication of which is prescribed by this Regulation or by the Implementing Regulation; Office by an employee. An employee of a legal person to which this paragraph applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the Community. - - -4. The Implementing Regulation shall specify whether and under what conditions an employee must file with the Office a signed authorisation for insertion on the file. - -an Official Journal containing notices and information of a general character issued by the President of the Office, as well as any other information relevant to this Regulation or its implementation. - - -====Article 90==== - -24.3.2009 -====Article 93==== - -Professional representatives -1. Representation of natural or legal persons before the Office may only be undertaken by: Administrative cooperation Unless otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member States shall on request give assistance to each other by communicating information or opening files for inspection. Where the Office lays files open to inspection by courts, Public Prosecutors' Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 88. - -(a) any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; (b) professional representatives whose names appear on the list maintained for this purpose by the Office. The Implementing Regulation shall specify whether and under what conditions the representatives before the Office must file with the Office a signed authorisation for insertion on the file. - - -====Article 91==== - -Exchange of publications -1. The Office and the central industrial property offices of the Member States shall despatch to each other on request and for their own use one or more copies of their respective publications free of charge. - - -2. The Office may conclude agreements relating to the exchange or supply of publications. - -Representatives acting before the Office must file with it a signed authorisation for insertion on the files, the details of which are set out in the Implementing Regulation. - - -2. Any natural person who fulfils the following conditions may be entered on the list of professional representatives: (a) he must be a national of one of the Member States; (b) he must have his place of business or employment in the Community; (c) he must be entitled to represent natural or legal persons in trade mark matters before the central industrial property office of a Member State. Where, in that State, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the central industrial property office of the said State must have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid down by such State shall not be subject to the condition of having exercised the profession. - - -==SECTION 4== - -Representation -====Article 92==== - -General principles of representation -1. Subject to the provisions of paragraph 2, no person shall be compelled to be represented before the Office. - - -2. Without prejudice to paragraph 3, second sentence, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 93(1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark; the Implementing Regulation may permit other exceptions. - - -3. Natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the Community may be represented before the -3. Entry shall be effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in paragraph 2 are fulfilled. - -24.3.2009 Official Journal of the European Union EN -4. The President of the Office may grant exemption from: (a) (b) the requirement of paragraph 2(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way; the requirement of paragraph 2(a) in special circumstances. - - -5. The conditions under which a person may be removed from the list of professional representatives shall be laid down in the Implementing Regulation. - -L 78/23 first and second instance, hereinafter referred to as ‘Community trade mark courts’, which shall perform the functions assigned to them by this Regulation. - - -2. Each Member State shall communicate to the Commission within three years of the entry into force of Regulation (EC) No 40/94 a list of Community trade mark courts indicating their names and their territorial jurisdiction. - - -3. Any change made after communication of the list referred to in paragraph 2 in the number, names or territorial jurisdiction of the courts shall be notified without delay by the Member State concerned to the Commission. - - -===TITLE X=== - -JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS -==SECTION 1== - -Application of Regulation (EC) No 44/2001 -====Article 94==== - -Application of Regulation (EC) No 44/2001 -1. Unless otherwise specified in this Regulation, Regulation (EC) No 44/2001 shall apply to proceedings relating to Community trade marks and applications for Community trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of Community trade marks and national trade marks. - - -2. In the case of proceedings in respect of the actions and claims referred to in Article 96: -4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Union. - - -5. As long as a Member State has not communicated the list as stipulated in paragraph 2, jurisdiction for any proceedings resulting from an action or application covered by Article 96, and for which the courts of that State have jurisdiction under Article 97, shall lie with that court of the State in question which would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national trade mark registered in that State. - - -====Article 96==== - -Jurisdiction over infringement and validity The Community trade mark courts shall have exclusive jurisdiction: Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97(4) of this Regulation; (c) the provisions of Chapter II of Regulation (EC) No 44/2001 which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein. - -(b) for actions for declaration of non-infringement, if they are permitted under national law; for all actions brought as a result of acts referred to in Article 9(3), second sentence; (d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 100. - -Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply; (b) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to Community trade marks; (c) (a) (a) -==SECTION 2== - -Disputes concerning the infringement and validity of Community trade marks -====Article 95==== - -Community trade mark courts -1. The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of -====Article 97==== - -International jurisdiction -1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. - -L 78/24 Official Journal of the European Union EN 24.3.2009 -2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. - -admissible in so far as the defendant claims that the rights of the proprietor of the Community trade mark could be revoked for lack of use or that the Community trade mark could be declared invalid on account of an earlier right of the defendant. - - -3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat. - - -====Article 100==== - - -4. Notwithstanding the provisions of paragraphs 1, 2 and 3: (a) (b) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction; Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court. - - -5. Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed. - - -====Article 98==== - -Extent of jurisdiction -1. A Community trade mark court whose jurisdiction is based on Article 97(1) to (4) shall have jurisdiction in respect of: (a) acts of infringement committed or threatened within the territory of any of the Member States; (b) acts within the meaning of Article 9(3), second sentence, committed within the territory of any of the Member States. - - -2. A Community trade mark court whose jurisdiction is based on Article 97(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated. - - -====Article 99==== - -Presumption of validity — Defence as to the merits Counterclaims -1. A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation. - - -2. A Community trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office relating to the same subject matter and cause of action and involving the same parties has already become final. - - -3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law. - - -4. The Community trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the Community trade mark has been filed shall inform the Office of the date on which the counterclaim was filed. The latter shall record this fact in the Register of Community trade marks. - - -5. Article 57(2) to (5) shall apply. -6. Where a Community trade mark court has given a judgment which has become final on a counterclaim for revocation or for invalidity of a Community trade mark, a copy of the judgment shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgment in the Register of Community trade marks in accordance with the provisions of the Implementing Regulation. - - -7. The Community trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the Community trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 104(3) shall apply. - - -1. The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. - -Applicable law -2. The validity of a Community trade mark may not be put in issue in an action for a declaration of non-infringement. - - -1. The Community trade mark courts shall apply the provisions of this Regulation. - - -3. In the actions referred to in Article 96(a) and (c) a plea relating to revocation or invalidity of the Community trade mark submitted otherwise than by way of a counterclaim shall be -2. On all matters not covered by this Regulation a Community trade mark court shall apply its national law, including its private international law. - - -====Article 101==== - -24.3.2009 Official Journal of the European Union EN -3. Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located. - - -====Article 102==== - -Sanctions -1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. - - -2. In all other respects the Community trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law. - - -====Article 103==== - -Provisional and protective measures -1. Application may be made to the courts of a Member State, including Community trade mark courts, for such provisional, including protective, measures in respect of a Community trade mark or Community trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter. - - -2. A Community trade mark court whose jurisdiction is based on Article 97(1), (2), (3) or (4) shall have jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the territory of any Member State. No other court shall have such jurisdiction. - - -====Article 104==== - -Specific rules on related actions -1. A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of noninfringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office. - - -2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after L 78/25 hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it. - - -3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay. - - -====Article 105==== - -Jurisdiction of Community trade mark courts of second instance — Further appeal -1. An appeal to the Community trade mark courts of second instance shall lie from judgments of the Community trade mark courts of first instance in respect of proceedings arising from the actions and claims referred to in Article 96. - - -2. The conditions under which an appeal may be lodged with a Community trade mark court of second instance shall be determined by the national law of the Member State in which that court is located. - - -3. The national rules concerning further appeal shall be applicable in respect of judgments of Community trade mark courts of second instance. - - -==SECTION 3== - -Other disputes concerning Community trade marks -====Article 106==== - -Supplementary provisions on the jurisdiction of national courts other than Community trade mark courts -1. Within the Member State whose courts have jurisdiction under Article 94(1) those courts shall have jurisdiction for actions other than those referred to in Article 96, which would have jurisdiction ratione loci and ratione materiae in the case of actions relating to a national trade mark registered in that State. - - -2. Actions relating to a Community trade mark, other than those referred to in Article 96, for which no court has jurisdiction under Article 94(1) and paragraph 1 of this Article may be heard before the courts of the Member State in which the Office has its seat. - - -====Article 107==== - -Obligation of the national court A national court which is dealing with an action relating to a Community trade mark, other than the action referred to in Article 96, shall treat the trade mark as valid. - -L 78/26 Official Journal of the European Union EN 24.3.2009 -==SECTION 4== - - -==SECTION 2== - -Transitional provision Application of national laws for the purpose of prohibiting the use of Community trade marks -====Article 108==== - -Transitional provision relating to the application of the Convention on Jurisdiction and Enforcement The provisions of Regulation (EC) No 44/2001 which are rendered applicable by the preceding Articles shall have effect in respect of any Member State solely in the text of the Regulation which is in force in respect of that State at any given time. - - -===TITLE XI=== - -EFFECTS ON THE LAWS OF THE MEMBER STATES -==SECTION 1== - -Civil actions on the basis of more than one trade mark -====Article 109==== - -Simultaneous and successive civil actions on the basis of Community trade marks and national trade marks -1. Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of a Community trade mark and the other seized on the basis of a national trade mark: (a) (b) the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested; the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services. +Refusal of the application +1. In addition to the grounds for refusal of a European trade mark application provided for in Articles 36 and 37, an application for a European certification mark shall be refused where Articles 74b and 74c are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality. +EN 25 EN +2. An application for a European certification mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. -2. The court hearing an action for infringement on the basis of a Community trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services. +3. An application shall not be refused if the applicant, as a result of an amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2. -3. The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical Community trade mark valid for identical goods or services. -4. Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including protective, measures. +====Article 74e==== +Observations by third parties Where written observations on a European certification mark are submitted to the Agency pursuant to Article 40, those observations may also be based on the particular grounds on which the application for a European certification mark shall be refused pursuant to Article 74d. -====Article 110==== -Prohibition of use of Community trade marks -1. This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 or Article 53(2) in relation to the use of a later Community trade mark. Claims for infringement of earlier rights within the meaning of Article 8(2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the Community trade mark is invalid in accordance with Article 54(2). +====Article 74f==== -2. This Regulation shall, unless otherwise provided for, not affect the right to bring proceedings under the civil, administrative or criminal law of a Member Sate or under provisions of Community law for the purpose of prohibiting the use of a Community trade mark to the extent that the use of a national trade mark may be prohibited under the law of that Member State or under Community law. +Amendment of the regulations governing use of the mark +1. The proprietor of a European certification mark shall submit to the Agency any amended regulations governing use. -====Article 111==== +2. The amendment shall not be mentioned in the Register where the amended regulations do not satisfy the requirements of Article 74c or involve one of the grounds for refusal referred to in Article 74d. -Prior rights applicable to particular localities -1. The proprietor of an earlier right which only applies to a particular locality may oppose the use of the Community trade mark in the territory where his right is protected in so far as the law of the Member State concerned so permits. +3. Article 74e shall apply to amended regulations governing use. +4. For the purposes of this Regulation, amendments to the regulations governing use shall take effect only from the date of entry of the mention of the amendment in the Register. -2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the Community trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the Community trade mark was applied for in bad faith. -3. The proprietor of the Community trade mark shall not be entitled to oppose use of the right referred to in paragraph 1 even though that right may no longer be invoked against the Community trade mark. +====Article 74g==== +Transfer By way of derogation from Article 17(1), a European certification mark may only be transferred to a legal person which meets the requirements of Article 74b(2). -==SECTION 3== -Conversion into a national trade mark application -====Article 112==== -Request for the application of national procedure -1. The applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application: 24.3.2009 Official Journal of the European Union EN (a) to the extent that the Community trade mark application is refused, withdrawn, or deemed to be withdrawn; (b) to the extent that the Community trade mark ceases to have effect. +====Article 74h==== - -2. Conversion shall not take place: (a) (b) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State; for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark. +Persons who are entitled to bring an action for infringement +1. Only the proprietor of a European certification mark or any person specifically authorised by him to that effect shall be entitled to bring an action for infringement. -3. The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 34 or 35. +2. The proprietor of a European certification mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage in consequence of unauthorised use of the mark. -4. In cases where a Community trade mark application is deemed to be withdrawn, the Office shall send to the applicant a communication fixing a period of three months from the date of that communication in which a request for conversion may be filed. -L 78/27 -2. If the Community trade mark application has been published, receipt of any such request shall be recorded in the Register of Community trade marks and the request for conversion shall be published. +====Article 74i==== +Grounds for revocation EN 26 EN In addition to the grounds for revocation provided for in Article 51, the rights of the proprietor of a European certification mark shall be revoked on application to the Agency or on the basis of a counterclaim in infringement proceedings, where any of the following conditions is fulfilled: (a) the proprietor no longer meets the requirements of Article 74b(2); (b) the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register; (c) the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 74d(2); (d) an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of Article 74f(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article. -3. The Office shall check whether the conversion requested fulfils the conditions set out in this Regulation, in particular Article 112(1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with the formal conditions laid down in the Implementing Regulation. If these conditions are fulfilled, the Office shall transmit the request for conversion to the industrial property offices of the Member States specified therein. -====Article 114==== +====Article 74j==== -Formal requirements for conversion -1. Any central industrial property office to which the request for conversion is transmitted may obtain from the Office any additional information concerning the request enabling that office to make a decision regarding the national trade mark resulting from the conversion. +Grounds for invalidity In addition to the grounds for invalidity provided for in Articles 52 and 53, a European certification mark which is registered in breach of Article 74d shall be declared invalid on application to the Agency or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of Article 74d. -2. A Community trade mark application or a Community trade mark transmitted in accordance with Article 113 shall not be subjected to formal requirements of national law which are different from or additional to those provided for in this Regulation or in the Implementing Regulation. +====Article 74k==== -3. Any central industrial property office to which the request is transmitted may require that the applicant shall, within not less than two months: (a) -5. Where the Community trade mark application is withdrawn or the Community trade mark ceases to have effect as a result of a surrender being recorded or of failure to renew the registration, the request for conversion shall be filed within three months after the date on which the Community trade mark application has been withdrawn or on which the Community trade mark ceases to have effect. +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying the period referred to in Article 74c(1) for submitting the regulations governing use of the European certification mark to the Agency and the content of those regulations as set out in Article 74c(2).'; (64) Article 75 is replaced by the following: 'Article 75 Form of decisions and communications of the Agency +1. Decisions of the Agency shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. -6. Where the Community trade mark application is refused by decision of the Office or where the Community trade mark ceases to have effect as a result of a decision of the Office or of a Community trade mark court, the request for conversion shall be filed within three months after the date on which that decision acquired the authority of a final decision. +2. Any decision, communication or notice from the Agency shall indicate the department or division of the Agency as well as the name or the names of the official or officials responsible. They shall be signed by the official or officials, or, instead of a signature, carry a printed or stamped seal of the Agency. The Executive Director may determine that other means of identifying the department or division of the EN 27 EN Agency and the name of the official or officials responsible or an identification other than a seal may be used where decisions, communications or notices from the Agency are transmitted by telecopier or any other technical means of communication.'; (65) In Article 76(1), the following sentence is added: 'In invalidity proceedings pursuant to Article 52, the Agency shall limit its examination to the grounds and arguments provided by the parties.'; (66) In Article 78, the following paragraph 5 is added: '5. The Executive Director of the Agency shall determine the amounts of expenses, to be paid, including advances, as regards the costs of taking of evidence referred to in Article 93a(b).'; (67) Article 79 is replaced by the following: 'Article 79 Notification +1. The Agency shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those concerned must be notified under other provisions of this Regulation or of delegated acts adopted pursuant to this Regulation, or of which notification has been ordered by the Executive Director of the Agency. -7. The effect referred to in Article 32 shall lapse if the request is not filed in due time. +2. The Executive Director may determine which documents other than decisions subject to a time limit for appeal and summonses shall be notified by registered letter with advice of delivery. -pay the national application fee; (b) file a translation in one of the official languages of the State in question of the request and of the documents accompanying it; (c) indicate an address for service in the State in question; (d) supply a representation of the trade mark in the number of copies specified by the State in question. +3. Notification may be effected by electronic means, the details of which shall be determined by the Executive Director. -===TITLE XII=== -THE OFFICE -==SECTION 1== +4. Where notification shall be effected by public notice, the Executive Director shall determine how the public notice is to be given and shall fix the beginning of the one month period on the expiry of which the document shall be deemed to have been notified.'; (68) The following Articles 79a, 79b, 79c and 79d are inserted: 'Article 79a Noting of loss of rights Where the Agency finds that the loss of any rights results from this Regulation or delegated acts adopted pursuant to this Regulation without any decision having been taken, it shall communicate this to the person concerned in accordance with Article +79. The latter may apply for a decision on the matter. The Agency shall adopt such a decision where it disagrees with the person requesting it; otherwise the Agency shall amend its finding and inform the person requesting the decision. +EN 28 EN -====Article 113==== +====Article 79b==== -General provisions Submission, publication and transmission of the request for conversion -1. A request for conversion shall be filed with the Office and shall specify the Member States in which application of the procedure for registration of a national trade mark is desired. The request shall not be deemed to be filed until the conversion fee has been paid. +Communications to the Agency Communications addressed to the Agency may be effected by electronic means. The Executive Director shall determine the extent and the technical conditions under which those communications may be submitted electronically. -====Article 115==== -Legal status -1. The Office shall be a body of the Community. It shall have legal personality. +====Article 79c==== -L 78/28 Official Journal of the European Union EN 24.3.2009 -2. In each of the Member States the Office shall enjoy the most extensive legal capacity accorded to legal persons under their laws; it may, in particular, acquire or dispose of movable and immovable property and may be a party to legal proceedings. +Time limits +1. The calculation and duration of time limits shall be subject to the rules adopted in accordance with Article 93a(f). -3. The applicant must indicate a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings. +2. The Executive Director of the Agency shall determine before the commencement of each calendar year the days on which the Agency is not open for receipt of documents or on which ordinary mail is not delivered in the locality in which the Agency is located. -3. The Office shall be represented by its President. If the application was filed in a language which is not one of the languages of the Office, the Office shall arrange to have the application, as described in Article 26(1), translated into the language indicated by the applicant. +3. The Executive Director shall determine the duration of the period of interruption in case of a general interruption in the delivery of mail in the Member State where the Agency is located or in case of an actual interruption of the Agency’s connection to admitted electronic means of communication. -====Article 116==== +4. If an exceptional occurrence such as a natural disaster or strike interrupts or dislocates proper communication from the parties to the proceedings to the Agency or vice-versa, the Executive Director may determine that for parties of the proceedings having their residence or registered office in the State concerned or who have appointed a representative with a place of business in the State concerned, all time limits that otherwise would expire on or after the date of commencement of such occurrence, as determined by him, shall extend until a date to be determined by him. When determining that date, he shall assess when the exceptional occurrence comes to an end. If the occurrence affects the seat of the Agency, such determination of the Executive Director shall specify that it applies in respect of all parties to the proceedings. -Staff -1. The Staff Regulations of officials of the European Communities, hereinafter referred to as ‘the Staff Regulations’, the Conditions of Employment of other servants of the European Communities, and the rules adopted by agreement between the Institutions of the European Communities for giving effect to those Staff Regulations and Conditions of Employment shall apply to the staff of the Office, without prejudice to the application of Article 136 to the members of the Boards of Appeal. -2. Without prejudice to Article 125, the powers conferred on each Institution by the Staff Regulations and by the Conditions of Employment of other servants shall be exercised by the Office in respect of its staff. +====Article 79d==== +Correction of errors and manifest oversights The Agency shall correct any linguistic errors or errors of transcription and manifest oversights in the Agency's decisions or technical errors attributable to the Agency in registering the trade mark or in publishing its registration.'; (69) Article 80 is amended as follows: (a) in paragraph 1, first sentence, the phrase 'decision which contains an obvious procedural error' is replaced by 'decision which contains an obvious error'; (b) in paragraph 2, the second sentence is replaced by the following: 'The cancellation of the entry in the Register or the revocation of the decision shall be effected within one year from the date on which the entry was made in EN 29 EN the Register or that decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the European trade mark in question that are entered in the Register.'; (c) paragraph 3 is replaced by the following: '3. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility of correcting errors and manifest oversights under Article 79d. Where an appeal has been filed against an Agency's decision containing an error, the appeal proceedings shall become devoid of purpose upon revocation by the Agency of its decision pursuant to paragraph 1 of this Article.'; (70) Article 82 is amended as follows: (a) paragraph 2 is replaced by the following: '2. This Article shall not apply to the time limits laid down in Article 29(1), Article 33(1), Article 36(2), Article 41(1) and (3), Article 47(3), Article 60, Article 65(5), Article 81, Article 112, or to the time limits laid down in paragraph 1 of this Article or the time limit for claiming seniority pursuant to Article 34 after the application has been filed.'; (b) paragraph 4 is replaced by the following: '4. If the Agency accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. If a decision has been taken between the expiry of the unobserved time limit and the request for continuation of proceedings, the department competent to decide on the omitted act shall review the decision and, where completion of the omitted act itself is sufficient, take a different decision. If the original decision is not to be altered, it shall be confirmed in writing.'; (71) The following Article 82a is inserted: 'Article 82a Interruption of proceedings When interrupting or resuming proceedings, the Agency shall comply with the modalities set out in accordance with Article 93a(i).'; (72) Article 83 is replaced by the following: 'Article 83 Reference to general principles In the absence of procedural provisions in this Regulation or in delegated acts adopted pursuant to this Regulation, the Agency shall take into account the principles of procedural law generally recognised in the Member States.'; EN 30 EN (73) In Article 85(1), the words 'under the conditions laid down in the Implementing Regulation' are replaced by 'under the conditions laid down in accordance with Article 93a(j).'; (74) In Article 86(2), the second sentence is replaced by the following: 'Each Member State shall designate a single authority responsible for verifying the authenticity of the decision and shall communicate its contact details to the Agency, the Court of Justice and the Commission. The order for the enforcement of the decision shall be appended to the decision by that authority, without other formality than verification of the authenticity of the decision.'; (75) Article 87 is replaced by the following: 'Article 87 Register of European trade marks +1. The Agency shall keep a Register, which shall contain those particulars the registration or inclusion of which is provided for by this Regulation or by a delegated act adopted pursuant to this Regulation. The Agency shall keep the Register up to date. -====Article 117==== -Privileges and immunities The Protocol on the Privileges and Immunities of the European Communities shall apply to the Office. +2. The Register shall be open to public inspection. It may be kept electronically. +3. The Agency shall maintain an electronic database containing the particulars of applications for registration of European trade marks and the entries made in the Register. The contents of that database may be made available to the public. The Executive Director shall determine the conditions of access to the database and the manner in which the contents of this database may be made available in machinereadable form, including the corresponding charges.'; (76) Article 88 is amended as follows: (a) the title 'Inspection of files' is replaced by 'Inspection and keeping of files'; (b) paragraph 4 is replaced by the following: '4. Where the files are inspected pursuant to paragraphs 2 or 3, certain documents in the file may be withheld from inspection. The Executive Director shall determine the means of inspection. -====Article 118==== +5. The Agency shall keep the files of any procedure relating to a European trade mark application or European trade mark registration. The Executive Director shall determine the form in which those files shall be kept. Where the files are kept in electronic format, the original documents forming the basis of such electronic files shall be disposed of after a period following their reception by the Agency, which shall be determined by the Executive Director.'; (77) EN Article 89 is replaced by the following: 31 EN 'Article 89 Periodical publications +1. The Agency shall periodically publish: (a) a European Trade Marks Bulletin containing entries made in the Register as well as other particulars the publication of which is prescribed by this Regulation or by delegated acts adopted in accordance with this Regulation; (b) an Official Journal containing notices and information of a general character issued by the Executive Director of the Agency, as well as any other information relevant to this Regulation or its implementation. -Liability -1. The contractual liability of the Office shall be governed by the law applicable to the contract in question. +The publications referred to in points (a) and (b) may be effected by electronic means. -2. The Court of Justice shall be competent to give judgment pursuant to any arbitration clause contained in a contract concluded by the Office. +2. The European Trade Marks Bulletin shall be published in the manner and frequency determined by the Executive Director. -3. In the case of non-contractual liability, the Office shall, in accordance with the general principles common to the laws of the Member States, make good any damage caused by its departments or by its servants in the performance of their duties. +3. The Executive Director may determine that certain items shall be published in the Official Journal in all the official languages of the Union.'; (78) Article 92 is amended as follows: (a) paragraph 2 is replaced by the following: '2. Without prejudice to paragraph 3, second sentence, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Union shall be represented before the Agency in accordance with Article 93(1) in all proceedings provided for by this Regulation, other than in filing an application for a European trade mark. +By way of derogation from the first subparagraph, the natural or legal persons referred to in that subparagraph need not be represented before the Agency in the cases provided for in accordance with Article 93a(p).'; (b) paragraph 4 is replaced by the following: '4. Where the conditions established in accordance with Article 93a(p) are fulfilled, a common representative shall be appointed.'; (79) Article 93 is amended as follows: (a) paragraph 1 is replaced by the following: '1. Representation of natural or legal persons before the Agency may only be undertaken by: (a) EN any legal practitioner qualified in a Member State and having his place of business within the Union, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; 32 EN (b) professional representatives whose names appear on the list maintained for this purpose by the Agency. -4. The Court of Justice shall have jurisdiction in disputes relating to compensation for the damage referred to in paragraph 3. +Representatives acting before the Agency shall, on request by the Agency, file with it a signed authorisation for insertion on the files.'; (b) paragraph 4 is replaced by the following: '4. The Executive Director of the Agency may grant exemption from: (a) (b) (c) the requirement of paragraph 2(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way; the requirement of paragraph 2(a) in case of highly qualified professionals, provided that the requirements of paragraphs 2(b) and (c) are fulfilled.'; paragraph 5 is replaced by the following: '5. A person may be removed from the list of professional representatives under the conditions established in accordance with Article 93a(p).'; (80) In Title IX, the following Section 5 is inserted: 'SECTION 5 Conferral of powers +====Article 93a==== -5. The personal liability of its servants towards the Office shall be governed by the provisions laid down in their Staff Regulations or in the Conditions of Employment applicable to them. +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: (a) (b) the modalities of oral proceedings and of the taking of evidence referred to in Articles 77 and 78; (c) the modalities of the notification referred to in Article 79; (d) the procedure for the noting of loss of rights referred to in Article 79a; (e) the rules on the means of communication, including the electronic means of communication referred to in Article 79b, to be used by the parties to proceedings before the Agency and the forms to be made available by the Agency; (f) EN the requirements concerning the form of the decisions referred to in Article 75; the rules governing the calculation and duration of the time limits referred to in Article 79c(1); 33 EN (g) the procedure for the correction of linguistic errors or errors of transcription and manifest oversights in the Agency's decisions and technical errors attributable to the Agency in registering the trade mark or in publishing its registration as referred to in Article 79d; (h) the procedure for the revocation of a decision or for the cancellation of an entry in the Register as referred to in Article 80(1); (i) the modalities of the interruption and resumption of proceedings before the Agency as referred to in Article 82a; (j) the procedures concerning the apportionment and fixing of costs, as referred to in Article 85(1); (k) the particulars referred to in Article 87(1); (l) the procedure for the inspection of files provided for in Article 88, including the parts of the file excluded from inspection, and the modalities of the keeping of files of the Agency provided for in Article 88(5); (m) the modalities of publication of the particulars and entries referred to in Article 89(1)(a) in the European Trade Marks Bulletin, including the type of information, and the languages in which those particulars and entries are to be published; (n) (o) the modalities of the exchange of information and communications between the Agency and the authorities of the Member States and of the inspection of files by or via courts or authorities of the Member States pursuant to Article 90; (p) (81) the frequency, form and languages in which publications of the Official Journal of the Agency referred to in Article 89(1)(b) shall be made; derogations from the obligation to be represented before the Agency pursuant to Article 92(2), the conditions under which a common representative shall be appointed pursuant to Article 92(4), the conditions under which employees referred to in Article 92(3) and professional representatives referred to in Article 93(1) must file with the Agency a signed authorisation in order to be able to undertake representation, the content of that authorisation, and the conditions under which a person may be removed from the list of professional representatives referred to in Article 93(5).'; In Title X, the title of Section 1 is replaced by the following: 'Application of the Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters'; (82) Article 94 is amended as follows: (a) EN the title is replaced by the following: 34 EN 'Application of the Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters'; (b) in paragraph 1, 'Regulation (EC) No 44/2001' is replaced by 'the Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters'; (c) the following paragraph 3 is added: '3. References in this Regulation to Regulation (EC) No 44/2001 shall include, where appropriate, the Agreement between the European Community and the Kingdom of Denmark on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters done on 19 October 2005.'; (83) In Article 96(c), 'Article 9(3), second sentence' is replaced by +====(2)';==== -====Article 119==== +(2)'; (84) In Article 99, paragraph 3 is replaced by the following: '3. In the actions referred to in Article 96(a) and (c), a plea relating to revocation or invalidity of the European trade mark submitted otherwise than by way of a counterclaim shall be admissible in so far as the defendant claims that the rights of the proprietor of the European trade mark could be revoked for lack of genuine use at the time the infringement action was brought.'; (85) Article 100 is amended as follows: (a) paragraph 4 is replaced by the following: '4. The European trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the European trade mark has been filed shall not proceed with the examination of the counterclaim, until either the interested party or the court have informed the Agency of the date on which the counterclaim was filed. The Agency shall record that information in the Register. If an application for revocation or for a declaration of invalidity of the European trade mark is pending before the Agency, the court shall be informed thereof by the Agency and stay the proceedings until the decision on the application is final or the application is withdrawn.'; (b) paragraph 6 is replaced by the following: '6. Where a European trade mark court has given a judgment which has become final on a counterclaim for revocation or for invalidity of a European trade mark, a copy of the judgment shall be sent to the Agency without delay, either by the court or by any of the parties to the national proceedings. The Agency or any other interested party may request information about such transmission. -Languages -1. The application for a Community trade mark shall be filed in one of the official languages of the European Community. +The Agency shall mention the judgment in the Register and shall take the necessary measures to comply with its operative part.'; (86) EN In Article 102, paragraph 2 is replaced by the following: 35 EN '2. The European trade mark court may also apply measures or orders available under the applicable law which it deems appropriate under the circumstances of the case.'; (87) Article 108 is deleted; (88) In Article 113(3), the phrase 'together with the formal conditions laid down in the Implementing Regulation' is replaced by 'together with the formal conditions laid down in accordance with Article 114a'; (89) In Article 114(2), the words 'the Implementing Regulation' are replaced by 'delegated acts adopted in accordance with this Regulation'; (90) The following Article 114a is inserted: 'Article 114a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying the formal conditions with which a request for conversion of a European trade mark application must comply, the details of its examination, and those concerning its publication.'; (91) In Article 116, paragraph 2 is replaced by the following: '2. Without prejudice to paragraph 1, the Agency may make use of seconded national experts or other staff not employed by the Agency. The Management Board shall adopt a decision laying down rules on the secondment to the Agency of national experts.'; (92) In Article 117, the words 'to the Office' are replaced by 'to the Agency and its staff'; (93) Article 119 is amended as follows: (a) in paragraph 6, second subparagraph, the second sentence is replaced by the following: 'The translation shall be produced within the period prescribed in accordance with Article 144a(b).'; (b) the following paragraph 8 is added: '8. The Executive Director shall determine the manner in which translations shall be certified.'; (94) (95) Article 122 is deleted; (96) EN In Article 120(1), the words 'the Implementing Regulation' are replaced by 'a delegated act adopted pursuant to this Regulation'; Article 123 is replaced by the following: 36 EN 'Article 123 Transparency +1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council (*) shall apply to documents held by the Agency. -2. The languages of the Office shall be English, French, German, Italian and Spanish. +2. The Management Board shall adopt the detailed rules for applying Regulation (EC) No 1049/2001. -4. Where the applicant for a Community trade mark is the sole party to proceedings before the Office, the language of proceedings shall be the language used for filing the application for a Community trade mark. If the application was made in a language other than the languages of the Office, the Office may send written communications to the applicant in the second language indicated by the applicant in his application. +3. Decisions taken by the Agency under Article 8 of Regulation (EC) No 1049/2001 may form the subject of a complaint to the Ombudsman or of an action before the Court of Justice of the European Union, under the conditions laid down in Articles 228 and 263 of the Treaty respectively. -5. The notice of opposition and an application for revocation or invalidity shall be filed in one of the languages of the Office. +4. The processing of personal data by the Agency shall be subject to Regulation (EC) No 45/2001 of the European Parliament and of the Council (**). +(*) OJ L 145, 31.5.2001, p. 43. -6. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is the language of the application for a trade mark or the second language indicated when the application was filed, that language shall be the language of the proceedings. +(**) OJ L 8, 12.1.2001, p. 1.'; (97) The following Article 123a is inserted: 'Article 123a Security rules on the protection of classified and sensitive non-classified information The Agency shall apply the security principles contained in the Commission's security rules for protecting European Union Classified Information (EUCI) and sensitive non-classified information, as set out in the annex to Commission Decision 2001/844/EC, ECSC, Euratom (*). Applying the security principles shall cover, inter alia, provisions for the exchange, processing and storage of such information. -If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is neither the language of the application for a trade mark nor the second language indicated when the application was filed, the opposing party or the party seeking revocation or invalidity shall be required to produce, at his own expense, a translation of his application either into the language of the application for a trade mark, provided that it is a language of the Office, or into the second language indicated when the application was filed. The translation shall be produced within the period prescribed in the Implementing Regulation. The language into which the application has been translated shall then become the language of the proceedings. +(*) OJ L 317, 3.12.2001, p. 1.'; (98) In Title XII, the following Section 1a is inserted: 'SECTION 1a Tasks of the Agency and cooperation to promote convergence +====Article 123b==== -7. Parties to opposition, revocation, invalidity or appeal proceedings may agree that a different official language of the European Community is to be the language of the proceedings. +Tasks of the Agency +1. The Agency shall have the following tasks: (a) (b) EN administration and promotion of the European trade mark system established in this Regulation; administration and promotion of the European design system established in Council Regulation (EC) No 6/2002 (*); 37 EN (c) promoting convergence of practices and tools in the fields of trade marks and designs in cooperation with the central industrial property offices in the Member States, including the Benelux Intellectual Property Office; (d) the tasks referred to in Regulation (EU) No 386/2012 of the European Parliament and of the Council (**). -====Article 120==== +2. The Agency shall cooperate with institutions, authorities, bodies, industrial property offices, international and non-governmental organisations in relation to the tasks laid down in paragraph 1. -Publication and entries in the Register -1. An application for a Community trade mark, as described in Article 26(1), and all other information the publication of which is prescribed by this Regulation or the Implementing Regulation, shall be published in all the official languages of the European Community. +3. The Agency may provide voluntary mediation services for the purpose of assisting parties in reaching an amicable settlement. -2. All entries in the Register of Community trade marks shall be made in all the official languages of the European Community. -3. In cases of doubt, the text in the language of the Office in which the application for the Community trade mark was filed shall be authentic. If the application was filed in an official language of the European Community other than one of the languages of the Office, the text in the second language indicated by the applicant shall be authentic. +====Article 123c==== -24.3.2009 Official Journal of the European Union EN -====Article 121==== +Cooperation to promote convergence of practices and tools +1. The Agency and the industrial property offices of the Member States and the Benelux Office for Intellectual Property shall cooperate with each other to promote convergence of practices and tools in the field of trade marks and designs. -The translation services required for the functioning of the Office shall be provided by the Translation Centre for the Bodies of the European Union. +This cooperation shall cover the following areas of activity: (a) the development of common examination standards; (b) the creation of common or connected databases and portals for Union-wide consultation, search and classification purposes; (c) the continuous provision and exchange of data and information, including the feeding of the databases and portals referred to in point (b); (d) the establishment of common standards and practices, with a view to ensuring interoperability between procedures and systems throughout the Union and enhancing their consistency, efficiency and effectiveness; (e) the sharing of information on industrial property rights and procedures, including mutual support to helpdesks and information centres; (f) the exchange of technical expertise and assistance in relation to the areas laid down in points (a) to (e). -L 78/29 -2. To this end the President shall have in particular the following functions and powers: (a) he shall take all necessary steps, including the adoption of internal administrative instructions and the publication of notices, to ensure the functioning of the Office; (b) he may place before the Commission any proposal to amend this Regulation, the Implementing Regulation, the rules of procedure of the Boards of Appeal, the fees regulations and any other rules applying to Community trade marks after consulting the Administrative Board and, in the case of the fees regulations and the budgetary provisions of this Regulation, the Budget Committee; (c) he shall draw up the estimates of the revenue and expenditure of the Office and shall implement the budget; (d) he shall submit a management report to the Commission, the European Parliament and the Administrative Board each year; (e) he shall exercise in respect of the staff the powers laid down in Article 116(2); (f) he may delegate his powers. +2. The Agency shall define, elaborate and coordinate common projects of Union interest with regard to the areas referred to in paragraph 1. The project definition shall contain the specific obligations and responsibilities of each participating industrial property office of the Member States and the Benelux Office for Intellectual Property. -====Article 122==== -Control of legality -1. The Commission shall check the legality of those acts of the President of the Office in respect of which Community law does not provide for any check on legality by another body and of acts of the Budget Committee attached to the Office pursuant to Article 138. +3. The industrial property offices of the Member States and the Benelux Office for Intellectual Property shall participate effectively in the common projects referred to in paragraph 2 with a view to ensuring their development, functioning, interoperability, and keeping up to date. +EN 38 EN +4. The Agency shall provide financial support to the common projects of Union interest referred to in paragraph 2 to the extent this is necessary to ensure the effective participation of the industrial property offices of the Member States and the Benelux Office for Intellectual Property in the projects within the meaning of paragraph 3. That financial support may take the form of grants. The total amount of funding shall not exceed 10% of the yearly income of the Agency. The beneficiaries of grants shall be the industrial property offices of the Member States and the Benelux Office for Intellectual Property. Grants may be awarded without calls for proposals in accordance with the financial rules applicable to the Agency and with the principles of grant procedures contained in the Financial Regulation (EU) No 966/2012 of the European Parliament and of the Council (***) and in the Commission delegated Regulation (EU) No 1268/2012 (****). -2. It shall require that any unlawful acts as referred to in paragraph 1 be altered or annulled. +(*) OJ L 3, 5.1.2002, p. 1. +(**) OJ L 129, 16.5.2012, p. 1. -3. Member States and any person directly and individually concerned may refer to the Commission any act as referred to in paragraph 1, whether express or implied, for the Commission to examine the legality of that act. Referral shall be made to the Commission within one month of the day on which the party concerned first became aware of the act in question. The Commission shall take a decision within three months. If no decision has been taken within this period, the case shall be deemed to have been dismissed. +(***) OJ L 298, 26.10.2012, p. 1. +(****) OJ L 362, 31.12.2012, p. 1.'; (99) In Title XII, sections 2 and 3 are replaced by the following: 'SECTION 2 Management Board -====Article 123==== +====Article 124==== -Access to documents -1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding public access to European Parliament, Council and Commission documents (1) shall apply to documents held by the Office. +Functions of the Management Board +1. Without prejudice to the functions attributed to the Budget Committee in Section 5, the Management Board shall have the following functions: (a) (b) on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(d) and taking into account the opinion of the Commission, the Management Board shall adopt a multi-annual strategic programme for the Agency, including the Agency's strategy for international cooperation, following an exchange of views between the Executive Director and the relevant committee in the European Parliament, and shall forward the adopted multi-annual strategic programme to the European Parliament, the Council and the Commission; (c) EN on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(c), the Management Board shall adopt the annual work programme of the Agency for the coming year, taking into account the opinion of the Commission , and shall forward the adopted annual work programme to the European Parliament, the Council and the Commission; on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(f), the Management Board shall adopt the annual report and shall forward the adopted annual report to the European Parliament, the Council, the Commission and the Court of Auditors; 39 EN (d) on the basis of a draft submitted by the Executive Director in accordance with Article 128(4)(g), the Management Board shall adopt the multiannual staff policy plan; (e) the Management Board shall adopt rules on the prevention and management of conflicts of interest in the Agency; (f) in accordance with paragraph 2, it shall exercise, with respect to the staff of the Agency, the powers conferred by the Staff Regulations on the Appointing Authority and by the Conditions of Employment of Other Servants on the Authority Empowered to Conclude Contract of Employment ("the appointing authority powers"); (g) the Management Board shall adopt appropriate implementing rules to the Staff Regulations and the Conditions of Employment of Other Servants in accordance with Article 110 of the Staff Regulations; (h) the Management Board shall appoint and may remove the Executive Director and the Deputy Executive Director or Deputy Executive Directors from office pursuant to Article 129, and shall appoint the President, the chairpersons and the members of the Boards of Appeal pursuant to Article 136; (i) the Management Board shall ensure adequate follow-up to the findings and recommendations stemming from the internal or external audit reports and evaluations referred to in Article 165a, as well as from investigations of the European Anti-fraud Office (OLAF); (j) the Management Board shall be consulted before adoption of the guidelines for examination in the Agency and in the other cases provided for in this Regulation; (k) the Management Board may deliver opinions and requests for information to the Executive Director and to the Commission where it considers that this is necessary. -3. The President shall be assisted by one or more VicePresidents. If the President is absent or indisposed, the VicePresident or one of the Vice-Presidents shall take his place in accordance with the procedure laid down by the Administrative Board. +2. The Management Board shall adopt, in accordance with Article 110 of the Staff Regulations and 142 of the Conditions of Employment of Other Servants, a decision based on Article 2(1) of the Staff Regulations and on Article 6 of the Conditions of Employment of Other Servants, delegating the relevant appointing authority powers to the Executive Director and defining the conditions under which this delegation of powers can be suspended. +The Executive Director shall be authorised to sub-delegate those powers. -2. The Administrative Board shall adopt the practical arrangements for Implementing Regulation (EC) No 1049/2001 with regard to this Regulation. +Where exceptional circumstances so require, the Management Board may by way of a decision temporarily suspend the delegation of the appointing authority powers to the Executive Director and those sub-delegated by the latter and exercise them itself or delegate them to one of its members or to a staff member other than the Executive Director. +EN 40 EN ====Article 125==== - -3. Decisions taken by the Office pursuant to Article 8 of Regulation (EC) No 1049/2001 may give rise to the lodging of a complaint to the Ombudsman or form the subject of an action before the Court of Justice, under the conditions laid down in Articles 195 and 230 of the Treaty respectively. - - -==SECTION 2== - -Management of the Office -====Article 124==== - -Powers of the President Appointment of senior officials -1. The President of the Office shall be appointed by the Council from a list of at most three candidates, which shall be prepared by the Administrative Board. Power to dismiss the President shall lie with the Council, acting on a proposal from the Administrative Board. - - -2. The term of office of the President shall not exceed five years. This term of office shall be renewable. +Composition of the Management Board +1. The Management Board shall be composed of one representative of each Member State and two representatives of the Commission and their alternates. -3. The Vice-President or Vice-Presidents of the Office shall be appointed or dismissed as in paragraph 1, after consultation of the President. +2. The members of the Management Board may, subject to its rules of procedure, be assisted by advisers or experts. -1. The Office shall be managed by the President. (1) OJ L 145, 31.5.2001, p. 43. +3. The duration of the term of office shall be four years. The term of office shall be extendable. -4. The Council shall exercise disciplinary authority over the officials referred to in paragraphs 1 and 3. -L 78/30 Official Journal of the European Union EN -==SECTION 3== - -Administrative Board 24.3.2009 chairman or at the request of the Commission or of one-third of the Member States. - - -4. The Administrative Board shall adopt rules of procedure. ====Article 126==== -Creation and powers -1. An Administrative Board is hereby set up, attached to the Office. Without prejudice to the powers attributed to the Budget Committee in Section 5 — budget and financial control — the Administrative Board shall have the powers defined below. - - -2. The Administrative Board shall draw up the lists of candidates provided for in Article 125. - - -3. It shall advise the President on matters for which the Office is responsible. - +Chairperson of the Management Board +1. The Management Board shall elect a chairperson and a deputy chairperson from among its members. The deputy chairperson shall ex officio replace the chairperson in the event of his being prevented from attending to his duties. -5. The Administrative Board shall take its decisions by a simple majority of the representatives of the Member States. However, a majority of three-quarters of the representatives of the Member States shall be required for the decisions which the Administrative Board is empowered to take under Article 125(1) and (3). -In both cases each Member State shall have one vote. +2. The duration of the terms of office of the chairperson and the deputy chairperson shall be four years. The terms of office shall be renewable once. If, however, their membership of the Management Board ends at any time during their term of office, their term of office shall automatically expire on that date also. -6. The Administrative Board may invite observers to attend its meetings. - - -7. The Secretariat for the Administrative Board shall be provided by the Office. - - -4. It shall be consulted before adoption of the guidelines for examination in the Office and in the other cases provided for in this Regulation. - - -==SECTION 4== - -Implementation of procedures -5. It may deliver opinions and requests for information to the President and to the Commission where it considers that this is necessary. - ====Article 127==== -Composition -1. The Administrative Board shall be composed of one representative of each Member State and one representative of the Commission and their alternates. - - -2. The members of the Administrative Board may, subject to the provisions of its rules of procedure, be assisted by advisers or experts. - - -====Article 128==== - -Chairmanship -1. The Administrative Board shall elect a chairman and a deputy chairman from among its members. The deputy chairman shall ex officio replace the chairman in the event of his being prevented from attending to his duties. - - -2. The duration of the terms of office of the chairman and the deputy chairman shall be three years. The terms of office shall be renewable. - - -====Article 129==== - Meetings -1. Meetings of the Administrative Board shall be convened by its chairman. - - -2. The President of the Office shall take part in the deliberations, unless the Administrative Board decides otherwise. - - -3. The Administrative Board shall hold an ordinary meeting once a year; in addition, it shall meet on the initiative of its -====Article 130==== - -Competence For taking decisions in connection with the procedures laid down in this Regulation, the following shall be competent: (a) examiners; (b) Opposition Divisions; (c) an Administration of Trade Marks and Legal Division; (d) Cancellation Divisions; (e) Boards of Appeal. - - -====Article 131==== +1. Meetings of the Management Board shall be convened by its chairperson. +2. The Executive Director shall take part in the deliberations, unless the Management Board decides otherwise. -Examiners An examiner shall be responsible for taking decisions on behalf of the Office in relation to an application for registration of a Community trade mark, including the matters referred to in Articles 36, 37 and 68, except in so far as an Opposition Division is responsible. +3. The Management Board shall hold an ordinary meeting once a year. In addition, it shall meet on the initiative of its chairperson or at the request of the Commission or of one-third of the Member States. -====Article 132==== -Opposition Divisions -1. An Opposition Division shall be responsible for taking decisions on an opposition to an application to register a Community trade mark. +4. The Management Board shall adopt rules of procedure. +5. The Management Board shall take its decisions by an absolute majority of its members. However, a majority of two-thirds of its members shall be required for the decisions which the Management Board is empowered to take under Article 124(1)(a) and (b), Article 126(1) and Article 129(2) and (4). In both cases each member shall have one vote. -2. The decisions of the Opposition Divisions shall be taken by three-member groups. At least one member shall be legally qualified. In certain specific cases provided for in the Implementing Regulation, the decisions shall be taken by a single member. +6. The Management Board may invite observers to attend its meetings. +7. The Secretariat for the Management Board shall be provided by the Agency. +==SECTION 2a== -24.3.2009 Official Journal of the European Union EN -====Article 133==== +Executive Board EN 41 EN -Administration of Trade Marks and Legal Division -1. The Administration of Trade Marks and Legal Division shall be responsible for those decisions required by this Regulation which do not fall within the competence of an examiner, an Opposition Division or a Cancellation Division. It shall in particular be responsible for decisions in respect of entries in the Register of Community trade marks. +====Article 127a==== +Establishment The Management Board may establish an Executive Board. -2. It shall also be responsible for keeping the list of professional representatives which is referred to in Article 93. -L 78/31 -4. The composition of the enlarged Board and the rules on referrals to it shall be laid down pursuant to the rules of procedure of the Boards referred to in Article 162(3). +====Article 127b==== -5. To determine which specific cases fall under the authority of a single member, account should be taken of the lack of difficulty of the legal or factual matters raised, the limited importance of the individual case or the absence of other specific circumstances. +Functions and organisation +1. The Executive Board shall assist the Management Board. +2. The Executive Board shall have the following functions: (a) preparing decisions to be adopted by the Management Board; (b) ensuring, together with the Management Board, adequate follow-up to the findings and recommendations stemming from the internal or external audit reports and evaluations, as well as from investigations of the European Antifraud Office (OLAF); (c) without prejudice to the functions of the Executive Director, as set out in Article 128, assisting and advising the Executive Director in the implementation of the decisions of the Management Board, with a view to reinforcing supervision of administrative management. -The decision to confer a case on one member in the cases referred to shall be adopted by the Board handling the case. -Further details shall be laid down in the rules of procedure of the Boards referred to in Article 162(3). +3. When necessary, because of urgency, the Executive Board may take certain provisional decisions on behalf of the Management Board, in particular on administrative management matters, including the suspension of the delegation of the appointing authority powers. -====Article 136==== - - -3. A decision of the Division shall be taken by one member. Independence of the members of the Boards of Appeal -====Article 134==== - -Cancellation Divisions -1. A Cancellation Division shall be responsible for taking decisions in relation to an application for the revocation or declaration of invalidity of a Community trade mark. - - -2. The decisions of the Cancellation Divisions shall be taken by three-member groups. At least one member shall be legally qualified. In certain specific cases provided for in the Implementing Regulation, the decisions shall be taken by a single member. - - -1. The President of the Boards of Appeal and the chairmen of the Boards shall be appointed, in accordance with the procedure laid down in Article 125 for the appointment of the President of the Office, for a term of five years. They may not be removed from office during this term, unless there are serious grounds for such removal and the Court of Justice, on application by the institution which appointed them, takes a decision to this effect. - -The term of office of the President of the Boards of Appeal and the chairmen of the Boards may be renewed for additional fiveyear periods, or until retirement age if this age is reached during the new term of office. - -The President of the Boards of Appeal shall, inter alia, have managerial and organisational powers, principally to: (a) chair the authority of the Boards of Appeal responsible for laying down the rules and organising the work of the Boards, which authority is provided for in the rules of procedure of the Boards referred to in Article 162(3); (b) ensure the implementation of the authority's decisions; (c) -====Article 135==== - -allocate cases to a Board on the basis of objective criteria determined by the authority of the Boards of Appeal; (d) forward to the President of the Office the Boards' expenditure requirements, with a view to drawing up the expenditure estimates. - -Boards of Appeal -1. The Boards of Appeal shall be responsible for deciding on appeals from decisions of the examiners, Opposition Divisions, Administration of Trade Marks and Legal Division and Cancellation Divisions. - - -2. The decisions of the Boards of Appeal shall be taken by three members, at least two of whom are legally qualified. In certain specific cases, decisions shall be taken by an enlarged Board chaired by the President of the Boards of Appeal or by a single member, who must be legally qualified. - - -3. In order to determine the special cases which fall under the jurisdiction of the enlarged Board, account should be taken of the legal difficulty or the importance of the case or of special circumstances which justify it. Such cases may be referred to the enlarged Board: (a) (b) by the authority of the Boards of Appeal set up in accordance with the rules of procedure of the Boards referred to in Article 162(3); or by the Board handling the case. - -The President of the Boards of Appeal shall chair the enlarged Board. - -Further details shall be laid down in the rules of procedure of the Boards referred to in Article 162(3). +4. The Executive Board shall be composed of the Chairperson of the Management Board, one representative of the Commission to the Management Board and three other members appointed by the Management Board from among its members. The Chairperson of the Management Board shall also be the Chairperson of the Executive Board. The Executive Director shall take part in the meetings of the Executive Board, but shall not have the right to vote. -2. The members of the Boards of Appeal shall be appointed by the Administrative Board for a term of five years. Their term of office may be renewed for additional five-year periods, or until retirement age if that age is reached during the new term of office. +5. The term of office of members of the Executive Board shall be four years. The term of office of members of the Executive Board shall end when their membership of the Management Board ends. -L 78/32 Official Journal of the European Union EN -3. The members of the Boards of Appeal may not be removed from office unless there are serious grounds for such removal and the Court of Justice, after the case has been referred to it by the Administrative Board on the recommendation of the President of the Boards of Appeal, after consulting the chairman of the Board to which the member concerned belongs, takes a decision to this effect. -24.3.2009 -==SECTION 5== +6. The Executive Board shall hold at least one ordinary meeting every three months. In addition, it shall meet on the initiative of its Chairperson or at the request of its members. -Budget and financial control -====Article 138==== -Budget Committee -4. The President of the Boards of Appeal and the chairmen and members of the Boards of Appeal shall be independent. In their decisions they shall not be bound by any instructions. - - -5. The President of the Boards of Appeal and the chairmen and members of the Boards of Appeal may not be examiners or members of the Opposition Divisions, Administration of Trade Marks and Legal Division or Cancellation Divisions. - - -1. A Budget Committee is hereby set up, attached to the Office. The Budget Committee shall have the powers assigned to it in this Section and in Article 38(4). - - -2. Articles 126(6), 127, 128 and 129(1) to (4), (6) and (7) shall apply to the Budget Committee mutatis mutandis. - - -3. The Budget Committee shall take its decisions by a simple majority of the representatives of the Member States. However, a majority of three-quarters of the representatives of the Member States shall be required for the decisions which the Budget Committee is empowered to take under Articles 38(4), 140(3) and 143. In both cases each Member State shall have one vote. - - -====Article 137==== - -Exclusion and objection -====Article 139==== - -Budget -1. Examiners and members of the Divisions set up within the Office or of the Boards of Appeal may not take part in any proceedings if they have any personal interest therein, or if they have previously been involved as representatives of one of the parties. Two of the three members of an Opposition Division shall not have taken part in examining the application. Members of the Cancellation Divisions may not take part in any proceedings if they have participated in the final decision on the case in the proceedings for registration or opposition proceedings. Members of the Boards of Appeal may not take part in appeal proceedings if they participated in the decision under appeal. - - -2. If, for one of the reasons mentioned in paragraph 1 or for any other reason, a member of a Division or of a Board of Appeal considers that he should not take part in any proceedings, he shall inform the Division or Board accordingly. - - -3. Examiners and members of the Divisions or of a Board of Appeal may be objected to by any party for one of the reasons mentioned in paragraph 1, or if suspected of partiality. An objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step. No objection may be based upon the nationality of examiners or members. - - -1. Estimates of all the Office's revenue and expenditure shall be prepared for each financial year and shall be shown in the Office's budget, and each financial year shall correspond with the calendar year. - - -2. The revenue and expenditure shown in the budget shall be in balance. - - -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 Community and other payments made to Contracting Parties to the Madrid Protocol, total fees payable under the Geneva Act referred to in Article 106c of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (1) for an international registration designating the European Community and other payments made to Contracting Parties 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. - - -====Article 140==== - -Preparation of the budget -4. The Divisions and the Boards of Appeal shall decide as to the action to be taken in the cases specified in paragraphs 2 and 3 without the participation of the member concerned. For the purposes of taking this decision the member who withdraws or has been objected to shall be replaced in the Division or Board of Appeal by his alternate. - - -1. The President shall draw up each year an estimate of the Office's revenue and expenditure for the following year and shall send it to the Budget Committee not later than 31 March in each year, together with a list of posts. - -(1) OJ L 3, 5.1.2002, p. 1. - -24.3.2009 Official Journal of the European Union EN -2. Should the budget estimates provide for a Community subsidy, the Budget Committee shall immediately forward the estimate to the Commission, which shall forward it to the budget authority of the Communities. The Commission may attach an opinion on the estimate along with an alternative estimate. - - -3. The Budget Committee shall adopt the budget, which shall include the Office's list of posts. Should the budget estimates contain a subsidy from the general budget of the Communities, the Office's budget shall, if necessary, be adjusted. - -L 78/33 -====Article 144==== - -Fees regulations -1. The fees regulations shall determine in particular the amounts of the fees and the ways in which they are to be paid. - - -2. The amounts of the fees shall be fixed at such a level as to ensure that the revenue in respect thereof is in principle sufficient for the budget of the Office to be balanced. - - -3. The fees regulations shall be adopted and amended in accordance with the procedure referred to in Article 163(2). - - -====Article 141==== - -Audit and control -===TITLE XIII=== - - -1. An internal audit function shall be set up within the Office, to be performed in compliance with the relevant international standards. The internal auditor, appointed by the President, shall be responsible to him for verifying the proper operation of budget implementation systems and procedures of the Office. - -INTERNATIONAL REGISTRATION OF MARKS -==SECTION I== - -General provisions -2. The internal auditor shall advise the President on dealing with risks, by issuing independent opinions on the quality of management and control systems and by issuing recommendations for improving the conditions of implementation of operations and promoting sound financial management. - - -3. The responsibility for putting in place internal control systems and procedures suitable for carrying out his tasks shall lie with the authorising officer. - - -====Article 142==== - -Auditing of accounts -1. Not later than 31 March in each year the President shall transmit to the Commission, the European Parliament, the Budget Committee and the Court of Auditors accounts of the Office's total revenue and expenditure for the preceding financial year. The Court of Auditors shall examine them in accordance with Article 248 of the Treaty. - - -2. The Budget Committee shall give a discharge to the President of the Office in respect of the implementation of the budget. - - -====Article 145==== - -Application of provisions Unless otherwise specified in this title, this Regulation and its Implementing Regulations shall apply to applications for international registrations under the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (hereafter referred to as ‘international applications’ and ‘the Madrid Protocol’ respectively), based on an application for a Community trade mark or on a Community trade mark and to registrations of marks in the international register maintained by the International Bureau of the World Intellectual Property Organisation (hereafter referred to as ‘international registrations’ and ‘the International Bureau’, respectively) designating the European Community. - - -==SECTION 2== - -International registration on the basis of applications for a Community trade mark and of Community trade marks -====Article 146==== - -Filing of an international application Financial provisions -1. International applications pursuant to Article 3 of the Madrid Protocol based on an application for a Community trade mark or on a Community trade mark shall be filed at the Office. - -The Budget Committee shall, after consulting the Court of Auditors of the European Communities and the Commission, adopt internal financial provisions specifying, in particular, the procedure for establishing and implementing the Office's budget. - -As far as is compatible with the particular nature of the Office, the financial provisions shall be based on the financial regulations adopted for other bodies set up by the Community. - - -2. Where an international application is filed before the mark on which the international registration is to be based has been registered as a Community trade mark, the applicant for the international registration must indicate whether the international registration is to be based on a Community trade mark application or registration. Where the international registration is to be based on a Community trade mark once it is registered, -====Article 143==== - -L 78/34 Official Journal of the European Union EN the international application shall be deemed to have been received at the Office on the date of registration of the Community trade mark. - - -====Article 147==== - -Form and contents of the international application -1. The international application shall be filed in one of the official languages of the European Community, using a form provided by the Office. Unless otherwise specified by the applicant on that form when he files the international application, the Office shall correspond with the applicant in the language of filing in a standard form. - - -2. If the international application is filed in a language which is not one of the languages allowed under the Madrid Protocol, the applicant must indicate a second language from among those languages. This shall be the language in which the Office submits the international application to the International Bureau. - - -3. Where the international application is filed in a language other than one of the languages allowed under the Madrid Protocol for the filing of international applications, the applicant may provide a translation of the list of goods or services in the language in which the international application is to be submitted to the International Bureau pursuant to paragraph 2. - - -4. The Office shall forward the international application to the International Bureau as soon as possible. - - -5. The filing of an international application shall be subject to the payment of a fee to the Office. In the cases referred to in the second sentence of Article 146(2), the fee shall be due on the date of registration of the Community trade mark. The application shall be deemed not to have been filed until the required fee has been paid. - - -6. The international application must fulfil the relevant conditions laid down in the Implementing Regulation. - - -====Article 148==== - -24.3.2009 -====Article 149==== - -Request for territorial extension subsequent to the international registration A request for territorial extension made subsequent to international registration pursuant to Article 3ter(2) of Madrid Protocol may be filed through the intermediary of Office. The request must be filed in the language in which international application was filed pursuant to Article 147. - -the the the the -====Article 150==== - -International fees Any fees payable to the International Bureau under the Madrid Protocol shall be paid direct to the International Bureau. +7. The Executive Board shall comply with the rules of procedure laid down by the Management Board. ==SECTION 3== -International registrations designating the European Community -====Article 151==== - -Effects of international registrations designating the European Community -1. An international registration designating the European Community shall, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent designation of the European Community pursuant to Article 3ter(2) of the Madrid Protocol, have the same effect as an application for a Community trade mark. - - -2. If no refusal has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the international registration of a mark designating the European Community shall, from the date referred to in paragraph 1, have the same effect as the registration of a mark as a Community trade mark. - - -3. For the purposes of applying Article 9(3), publication of the particulars of the international registration designating the European Community pursuant to Article 152(1) shall take the place of publication of a Community trade mark application, and publication pursuant to Article 152(2) shall take the place of publication of the registration of a Community trade mark. - -Recordal in the files and in the Register -1. The date and number of an international registration based on a Community trade mark application, shall be recorded in the files of that application. When the application results in a Community trade mark, the date and number of the international registration shall be entered in the Register. - - -2. The date and number of an international registration based on a Community trade mark shall be entered in the Register. - - -====Article 152==== - -Publication -1. The Office shall publish the date of registration of a mark designating the European Community pursuant to Article 3(4) of the Madrid Protocol or the date of the subsequent designation of the European Community pursuant to Article 3ter(2) of the Madrid Protocol, the language of filing of the international application and the second language indicated by the applicant, 24.3.2009 Official Journal of the European Union EN the number of the international registration and the date of publication of such registration in the Gazette published by the International Bureau, a reproduction of the mark and the numbers of the classes of the goods or services in respect of which protection is claimed. - - -2. If no refusal of protection of an international registration designating the European Community has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the Office shall publish this fact, together with the number of the international registration and, where applicable, the date of publication of such registration in the Gazette published by the International Bureau. - -L 78/35 -====Article 155==== - -Search -1. Once the Office has received a notification of an international registration designating the European Community, it shall draw up a Community search report as provided for in Article 38(1). - - -2. As soon as the Office has received a notification of an international registration designating the European Community, the Office shall transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks as provided for in Article 38(2). - - -====Article 153==== - -Seniority -3. Article 38(3) to (6) shall apply mutatis mutandis. -1. The applicant for an international registration designating the European Community may claim, in the international application, the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 34. - - -4. The Office shall inform the proprietors of any earlier Community trade marks or Community trade mark applications cited in the Community search report of the publication of the international registration designating the European Community as provided for in Article 152(1). - - -2. The holder of an international registration designating the European Community may, as from the date of publication of the effects of such registration pursuant to Article 152(2), claim at the Office the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 35. The Office shall notify the International Bureau accordingly. - - -====Article 156==== - - -====Article 154==== - -Examination as to absolute grounds for refusal -1. International registrations designating the European Community shall be subject to examination as to absolute grounds for refusal in the same way as applications for Community trade marks. - - -2. Protection of an international registration shall not be refused before the holder of the international registration has been allowed the opportunity to renounce or limit the protection in respect of the European Community or of submitting his observations. - - -3. Refusal of protection shall take the place of refusal of a Community trade mark application. - - -4. Where protection of an international registration is refused by a decision under this Article which has become final or where the holder of the international registration has renounced the protection in respect of the European Community pursuant to paragraph 2, the Office shall refund the holder of the international registration a part of the individual fee to be laid down in the Implementing Regulation. - -Opposition -1. International registration designating the European Community shall be subject to opposition in the same way as published Community trade mark applications. - - -2. Notice of opposition shall be filed within a period of three months which shall begin six months following the date of the publication pursuant to Article 152(1). The opposition shall not be treated as duly entered until the opposition fee has been paid. - - -3. Refusal of protection shall take the place of refusal of a Community trade mark application. - - -4. Where protection of an international registration is refused by a decision under this Article which has become final or where the holder of the international registration has renounced the protection in respect of the European Community prior to a decision under this Article which has become final, the Office shall refund the holder of the international registration a part of the individual fee to be laid down in the Implementing Regulation. - - -====Article 157==== - -Replacement of a Community trade mark by an international registration The Office shall, upon request, enter a notice in the Register that a Community trade mark is deemed to have been replaced by an international registration in accordance with Article 4bis of the Madrid Protocol. - -L 78/36 Official Journal of the European Union EN -====Article 158==== - -Invalidation of the effects of an international registration 24.3.2009 registration designating the European Community must be put to genuine use in the Community. - - -====Article 161==== - - -1. The effects of an international registration designating the European Community may be declared invalid. - -Transformation -2. The application for invalidation of the effects of an international registration designating the European Community shall take the place of an application for a declaration of revocation as provided for in Article 51 or for a declaration of invalidity as provided for in Article 52 or Article 53. - - -1. Subject to paragraph 2, the provisions applicable to Community trade mark applications shall apply mutatis mutandis to applications for transformation of an international registration into a Community trade mark application pursuant to Article 9quinquies of the Madrid Protocol. - - -====Article 159==== - - -2. When the application for transformation relates to an international registration designating the European Community the particulars of which have been published pursuant to Article 152(2), Articles 37 to 42 shall not apply. - -Conversion of a designation of the European Community through an international registration into a national trade mark application or into a designation of Member States -===TITLE XIV=== - - -1. Where a designation of the European Community through an international registration has been refused or ceases to have effect, the holder of the international registration may request the conversion of the designation of the European Community: FINAL PROVISIONS -====Article 162==== - -(a) into a national trade mark application pursuant to Articles 112, 113 and 114; (b) into a designation of a Member State party to the Madrid Protocol or the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 14 April 1891, as revised and amended (hereafter referred to as the ‘Madrid Agreement’), provided that on the date when conversion was requested it was possible to have designated that Member State directly under the Madrid Protocol or the Madrid Agreement. Articles 112, 113 and 114 shall apply. - -Community implementing provisions -1. The rules implementing this Regulation shall be adopted in an Implementing Regulation. - - -2. In addition to the fees provided for in the preceding Articles, fees shall be charged, in accordance with the detailed rules of application laid down in the Implementing Regulation, in the cases listed below: late payment of the registration fee; (b) issue of a copy of the certificate of registration; (c) registration of a licence or another right in respect of a Community trade mark; (d) registration of a licence or another right in respect of an application for a Community trade mark; (e) cancellation of the registration of a licence or another right; (f) alteration of a registered Community trade mark; (g) issue of an extract from the Register; (h) -2. The national trade mark application or the designation of a Member State party to the Madrid Protocol or the Madrid Agreement resulting from the conversion of the designation of the European Community through an international registration shall enjoy, in respect of the Member State concerned, the date of the international registration pursuant to Article 3(4) of the Madrid Protocol or the date of the extension to the European Community pursuant to Article 3ter(2) of the Madrid Protocol if the latter was made subsequently to the international registration, or the date of priority of that registration and, where appropriate, the seniority of a trade mark of that State claimed under Article 153. - -(a) inspection of the files; (i) issue of copies of file documents; (j) issue of certified copies of the application; (k) communication of information in a file; (l) review of the determination of the procedural costs to be refunded. - - -3. The request for conversion shall be published. -====Article 160==== - -Use of a mark subject of an international registration For the purposes of applying Article 15(1), Article 42(2), Article 51(1)(a) and Article 57(2), the date of publication pursuant to Article 152(2) shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international 24.3.2009 Official Journal of the European Union EN -3. The Implementing Regulation and the rules of procedure of the Boards of Appeal shall be adopted and amended in accordance with the procedure referred to in Article 163(2). - - -====Article 163==== - -Establishment of a committee and procedure for the adoption of implementing regulations -1. The Commission shall be assisted by a committee referred to as the ‘Committee on Fees, Implementation Rules and the Procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (trade marks and designs)’. - - -2. Where reference is made to this paragraph, Articles 5 and 7 of Decision 1999/468/EC shall apply. - -The period laid down in Article 5(6) of Decision 1999/468/EC shall be set at three months. - - -====Article 164==== - -Compatibility with other Community legal provisions This Regulation shall not affect Council Regulation (EC) No 510/ 2006, and in particular Article 14 thereof. - - -====Article 165==== - -L 78/37 within the meaning of Article 8 was acquired in a new Member State prior to accession, provided that it was acquired in good faith and that the filing date or, where applicable, the priority date or the date of acquisition in the new Member State of the earlier trade mark or other earlier right precedes the filing date or, where applicable, the priority date of the Community trade mark applied for. - - -4. A Community trade mark as referred to in paragraph 1 may not be declared invalid: (a) pursuant to Article 52 if the grounds for invalidity became applicable merely because of the accession of a new Member State; (b) pursuant to Article 53(1) and (2) if the earlier national right was registered, applied for or acquired in a new Member State prior to the date of accession. - - -5. The use of a Community trade mark as referred to in paragraph 1 may be prohibited pursuant to Articles 110 and 111, if the earlier trade mark or other earlier right was registered, applied for or acquired in good faith in the new Member State prior to the date of accession of that State; or, where applicable, has a priority date prior to the date of accession of that State. - - -====Article 166==== - -Provisions relating to the enlargement of the Community -1. As from the date of accession of Bulgaria, the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Romania, Slovenia and Slovakia (hereinafter referred to as ‘new Member State(s)’), a Community trade mark registered or applied for pursuant to this Regulation before the respective dates of accession shall be extended to the territory of those Member States in order to have equal effect throughout the Community. - - -2. The registration of a Community trade mark which is under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1), if these grounds became applicable merely because of the accession of a new Member State. - - -3. Where an application for the registration of a Community trade mark has been filed during the six months prior to the date of accession, notice of opposition may be given pursuant to Article 41 where an earlier trade mark or another earlier right Repeal Regulation (EC) No 40/94, as amended by the instruments set out in Annex I, is repealed. - -References to the repealed Regulation shall be construed as references to this Regulation and shall be read in accordance with the correlation table in Annex II. - - -====Article 167==== - -Entry into force -1. This Regulation shall enter into force on the 20th day following its publication in the Official Journal of the European Union. - - -2. The Member States shall within three years following entry into force of Regulation (EC) No 40/94 take the necessary measures for the purpose of implementing Articles 95 and 114. - -This Regulation shall be binding in its entirety and directly applicable in all Member States. - -Done at Brussels, 26 February 2009. - -For the Council The President I. LANGER L 78/38 Official Journal of the European Union EN -===ANNEX I=== - -Repealed Regulation with list of its successive amendments (referred to in Article 166) Council Regulation (EC) No 40/94 (OJ L 11, 14.1.1994, p. 1) Council Regulation (EC) No 3288/94 (OJ L 349, 31.12.1994, p. 83) Council Regulation (EC) No 807/2003 (OJ L 122, 16.5.2003, p. 36) Only point 48 of Annex III Council Regulation (EC) No 1653/2003 (OJ L 245, 29.9.2003, p. 36) Council Regulation (EC) No 1992/2003 (OJ L 296, 14.11.2003, p. 1) Council Regulation (EC) No 422/2004 (OJ L 70, 9.3.2004, p. 1) Council Regulation (EC) No 1891/2006 (OJ L 386, 29.12.2006, p. 14) Annex II, Part 4 (C)(I) of the 2003 Act of Accession (OJ L 236, 23.9.2003, p. 342) Annex III, Point 1.I of the 2005 Act of Accession (OJ L 157, 21.6.2005, p. 231) Only Article 1 24.3.2009 24.3.2009 Official Journal of the European Union EN L 78/39 -===ANNEX II=== - -Correlation Table Regulation (EC) No 40/94 Articles 1 to 14 This Regulation Articles 1 to 14 Article 15(1) Article 15(1), first subparagraph Article 15(2), introductory words Article 15(1), second subparagraph, introductory words Article 15(2), point a Article 15(1), second subparagraph, point a Article 15(2), point b Article 15(1), second subparagraph, point b Article 15(3) Article 15(2) Articles 16 to 36 Articles 16 to 36 -====Article 37==== - -— -====Article 38==== - - -====Article 37==== - - -====Article 39==== - - -====Article 38==== - - -====Article 40==== - - -====Article 39==== - - -====Article 41==== - - -====Article 40==== - - -====Article 42==== - - -====Article 41==== - - -====Article 43==== - - -====Article 42==== - - -====Article 44==== - - -====Article 43==== - - -====Article 44a==== - - -====Article 44==== - -Articles 45 to 48 Articles 45 to 48 -====Article 48a==== - - -====Article 49==== - - -====Article 49==== - - -====Article 50==== - - -====Article 50==== - - -====Article 51==== - - -====Article 51==== - - -====Article 52==== - - -====Article 52==== - - -====Article 53==== - - -====Article 53==== - - -====Article 54==== - - -====Article 54==== - - -====Article 55==== - - -====Article 55==== - - -====Article 56==== - - -====Article 56==== - - -====Article 57==== - - -====Article 57==== - - -====Article 58==== - - -====Article 58==== - - -====Article 59==== - - -====Article 59==== - - -====Article 60==== - - -====Article 60==== - - -====Article 61==== - - -====Article 60a==== - - -====Article 62==== - - -====Article 61==== - - -====Article 63==== - - -====Article 62==== - - -====Article 64==== - - -====Article 63==== - - -====Article 65==== - - -====Article 64==== - - -====Article 66==== - - -====Article 65==== - - -====Article 67==== - - -====Article 66==== - - -====Article 68==== - - -====Article 67==== - - -====Article 69==== - - -====Article 68==== - - -====Article 70==== - - -====Article 69==== - - -====Article 71==== - - -====Article 70==== - - -====Article 72==== - - -====Article 71==== - - -====Article 73==== - - -====Article 72==== - - -====Article 74==== - -L 78/40 Official Journal of the European Union EN Regulation (EC) No 40/94 24.3.2009 This Regulation -====Article 73==== - - -====Article 75==== - - -====Article 74==== - - -====Article 76==== - - -====Article 75==== - - -====Article 77==== - - -====Article 76==== - - -====Article 78==== - - -====Article 77==== - - -====Article 79==== - - -====Article 77a==== - - -====Article 80==== - - -====Article 78==== - - -====Article 81==== - - -====Article 78a==== - - -====Article 82==== - - -====Article 79==== - - -====Article 83==== - - -====Article 80==== - - -====Article 84==== - - -====Article 81==== - - -====Article 85==== - - -====Article 82==== - - -====Article 86==== - - -====Article 83==== - - -====Article 87==== - - -====Article 84==== - - -====Article 88==== - - -====Article 85==== - - -====Article 89==== - - -====Article 86==== - - -====Article 90==== - - -====Article 87==== - - -====Article 91==== - - -====Article 88==== - - -====Article 92==== - - -====Article 89==== - - -====Article 93==== - - -====Article 90==== - - -====Article 94==== - - -====Article 91==== - - -====Article 95==== - - -====Article 92==== - - -====Article 96==== - - -====Article 93==== - - -====Article 97==== - -Article 94(1), introductory wording Article 98(1), introductory wording Article 94(1), first indent Article 98(1)(a) Article 94(1), second indent Article 98(1)(b) Article 94(2) Article 98(2) -====Article 95==== - - -====Article 99==== - - -====Article 96==== - - -====Article 100==== - - -====Article 97==== - - -====Article 101==== - - -====Article 98==== - - -====Article 102==== - - -====Article 99==== - - -====Article 103==== - - -====Article 100==== - - -====Article 104==== - - -====Article 101==== - - -====Article 105==== - - -====Article 102==== - - -====Article 106==== - - -====Article 103==== - - -====Article 107==== - - -====Article 104==== - - -====Article 108==== - - -====Article 105==== - - -====Article 109==== - - -====Article 106==== - - -====Article 110==== - - -====Article 107==== - - -====Article 111==== - - -====Article 108==== - - -====Article 112==== - - -====Article 109==== - - -====Article 113==== - - -====Article 110==== - - -====Article 114==== - - -====Article 111==== - - -====Article 115==== - - -====Article 112==== - - -====Article 116==== - - -====Article 113==== - - -====Article 117==== - - -====Article 114==== - - -====Article 118==== - -24.3.2009 Official Journal of the European Union EN Regulation (EC) No 40/94 L 78/41 This Regulation -====Article 115==== - - -====Article 119==== - - -====Article 116==== - - -====Article 120==== - - -====Article 117==== - - -====Article 121==== - - -====Article 118==== - - -====Article 122==== - - -====Article 118a==== - - -====Article 123==== - - -====Article 119==== - - -====Article 124==== - - -====Article 120==== - - -====Article 125==== - -Article 121(1) and (2) Article 126(1) and (2) Article 121(3) — Article 121(4) Article 126(3) Article 121(5) Article 126(4) Article 121(6) Article 126(5) -====Article 122==== - - -====Article 127==== - - -====Article 123==== - +Executive Director EN 42 EN ====Article 128==== +Functions of the Executive Director +1. The Agency shall be managed by the Executive Director. The Executive Director shall be accountable to the Management Board. -====Article 124==== - - -====Article 129==== - - -====Article 125==== - - -====Article 130==== - - -====Article 126==== +2. Without prejudice to the powers of the Commission, the Management Board, and the Budget Committee, the Executive Director shall be independent in the performance of the duties and shall neither seek nor take instructions from any government or from any other body. -====Article 131==== +3. The Executive Director shall be the legal representative of the Agency. +4. The Executive Director shall have in particular the following functions: (a) (b) he shall implement the decisions adopted by the Management Board; (c) he shall prepare a draft annual work programme indicating estimated human and financial resources for each activity, and submit it to the Management Board after consultation of the Commission; (d) he shall prepare a draft multiannual strategic programme, including the Agency's strategy for international cooperation, and submit it to the Management Board after consultation of the Commission and following an exchange of views with the relevant committee in the European Parliament; (e) he shall implement the annual work programme and the multiannual strategic programme and report to the Management Board on their implementation; (f) he shall prepare the annual report on the Agency’s activities and present it to the Management Board for approval; (g) he shall prepare a draft multiannual staff policy plan and submit it to the Management Board after consultation of the Commission; (h) he shall prepare an action plan following-up on the conclusions of the internal or external audit reports and evaluations, as well as from investigations of the European Anti-fraud Office (OLAF), and shall report on progress twice a year to the Commission and to the Management Board; (i) EN he shall take all necessary steps, including the adoption of internal administrative instructions and the publication of notices, to ensure the functioning of the Agency; he shall protect the financial interests of the Union by the application of preventive measures against fraud, corruption and any other illegal activities, by effective checks and, if irregularities are detected, by the recovery of the amounts wrongly paid and, where appropriate, by imposing effective, proportionate and dissuasive administrative and financial penalties; 43 EN (j) he shall prepare an anti-fraud strategy of the Agency and shall present it to the Budget Committee for approval; (k) in order to ensure uniform application of the Regulation, he may refer to the enlarged Board of Appeal questions on a point of law, in particular if the Boards of Appeal have issued diverging decisions on that point; (l) he shall draw up estimates of the revenue and expenditure of the Agency and shall implement the budget; (m) he shall exercise the powers entrusted to him in respect of the staff by the Management Board under Article 124(1)(f); (n) he shall exercise the powers conferred to him by Articles 26(3), 29(5), 30(2), 45(3), 75(2), 78(5), 79, 79b, 79c, 87(3), 88, 89, 93(4), 119(8) and 144 in accordance with the criteria set out in this Regulation and in the delegated acts adopted pursuant to this Regulation; (o) he may delegate his functions. -====Article 127==== - - -====Article 132==== - -====Article 128==== +5. The Executive Director shall be assisted by one or more Deputy Executive Directors. If the Executive Director is absent or indisposed, the Deputy Executive Director or one of the Deputy Executive Directors shall replace him in accordance with the procedure laid down by the Management Board. -====Article 133==== - ====Article 129==== - -====Article 134==== - - -====Article 130==== +Appointment and removal of the Executive Director and extension of his term of office +1. The Executive Director shall be engaged as a temporary agent of the Agency under Article 2(a) of the Conditions of Employment of Other Servants. -====Article 135==== +2. The Executive Director shall be appointed by the Management Board, from a list of candidates proposed by the Commission, following an open and transparent selection procedure. Before being appointed, the candidate selected by the Management Board may be invited to make a statement before any competent European Parliament committee and to answer questions put by its members. For the purpose of concluding the contract with the Executive Director, the Agency shall be represented by the chairperson of the Management Board. +The Executive Director may be removed from office only upon a decision of the Management Board acting on a proposal from the European Commission. -====Article 131==== +3. The term of office of the Executive Director shall be five years. By the end of that period, the Commission shall undertake an assessment which takes into account an evaluation of the performance of the Executive Director and the Agency's future tasks and challenges. -====Article 136==== +4. The Management Board, acting on a proposal from the Commission which takes into account the assessment referred to in paragraph 3, may extend once the term of office of the Executive Director for no more than five years. -====Article 132==== +EN 44 EN +5. An Executive Director whose term of office has been extended may not participate in another selection procedure for the same post at the end of the overall period. -====Article 137==== +6. The Deputy Executive Director or Deputy Executive Directors shall be appointed or removed from office as provided for in paragraph 2, after consultation of the Executive Director and, where applicable, the Executive Director elect. The term of office of the Deputy Executive Director shall be five years. It may be extended once for no more than five years by the Management Board acting on a proposal from the Commission as provided for in paragraph 4, after consultation of the Executive Director.'; (100) Article 130 is amended as follows: (a) point (c) is replaced by the following: '(c) a department entrusted with the keeping of the Register;' (b) the following point (f) is added: '(f) any other unit or person appointed by the Executive Director to that effect.'; (101) In Article 132(2), the third sentence is replaced by the following: 'In specific cases laid down in accordance with Article 144a(c), the decisions shall be taken by a single member.'; (102) Article 133 is replaced by the following: 'Article 133 Department entrusted with the keeping of the Register +1. The Department entrusted with the keeping of the Register shall be responsible for taking decisions in respect of entries in the Register. -====Article 133==== +2. It shall also be responsible for keeping the list of professional representatives referred to in Article 93(2). -====Article 138==== +3. The decisions of the Department shall be taken by one member.'; (103) Article 134 is amended as follows: (a) paragraph 1 is replaced by the following: '1. A Cancellation Division shall be responsible for taking decisions in relation to: (a) (b) EN an application for the revocation or declaration of invalidity of a European trade mark, a request for the assignment of a European trade mark as provided for in Article 18.'; 45 EN (b) in paragraph 2, the third sentence is replaced by the following: 'In specific cases laid down in accordance with Article 144a(c), the decisions shall be taken by a single member.'; (104) The following Article 134a is inserted: 'Article 134a General Competence Decisions required by this Regulation which do not fall within the competence of an examiner, an Opposition Division, a Cancellation Division or the Department entrusted with the keeping of the Register, shall be taken by any official or unit appointed by the Executive Director for that purpose.'; (105) Article 135 is amended as follows: (a) paragraph 1 is replaced by the following: '1. The Boards of Appeal shall be responsible for deciding on appeals from decisions taken pursuant to Articles 131 to 134a.'; (b) in paragraph 3, point (a) is replaced by the following:: '(a) by the authority of the Boards of Appeal referred to in Article 136(4)(a); or'; (c) paragraph 4 is replaced by the following: '4. The enlarged Board shall also be responsible for giving reasoned opinions on questions of law referred to it by the Executive Director pursuant to Article 128(4)(k).'; (d) (106) in paragraph 5, the last sentence is deleted; Article 136 is replaced by the following: 'Article 136 Independence of the members of the Boards of Appeal +1. The President of the Boards of Appeal and the chairpersons of the Boards shall be appointed, in accordance with the procedure laid down in Article 129 for the appointment of the Executive Director, for a term of five years. They shall not be removed from office during this term, unless there are serious grounds for such removal and the Court of Justice, on application by the institution which appointed them, takes a decision to this effect. -====Article 134==== +2. The term of office of the President of the Boards of Appeal may be extended once for one additional five-year period, or until retirement age if this age is reached during the new term of office, after a prior positive evaluation of his performance by the Management Board. +EN 46 EN +3. The term of office of the chairpersons of the Boards may be extended for additional five-year periods, or until retirement age if this age is reached during the new term of office, after a prior positive evaluation of their performance by the Management Board, subject to a favourable opinion by the President of the Boards of Appeal. -====Article 139==== +4. The President of the Boards of Appeal shall have the following managerial and organisational functions: (a) chairing the authority of the Boards of Appeal responsible for laying down the rules and organising the work of the Boards; (b) ensuring the implementation of the authority's decisions; (c) allocating cases to a Board on the basis of objective criteria determined by the authority of the Boards of Appeal; (d) forwarding to the Executive Director the Boards' expenditure requirements, with a view to drawing up the expenditure estimates. -====Article 135==== - - -====Article 140==== - - -====Article 136==== - - -====Article 141==== - - -====Article 137==== - - -====Article 142==== - - -====Article 138==== - - -====Article 143==== - - -====Article 139==== - - -====Article 144==== - - -====Article 140==== - - -====Article 145==== - - -====Article 141==== - - -====Article 146==== - - -====Article 142==== - - -====Article 147==== - - -====Article 143==== - +The President of the Boards of Appeal shall chair the enlarged Board. -====Article 148==== +5. The members of the Boards of Appeal shall be appointed by the Management Board for a term of five years. Their term of office may be extended for additional five-year periods, or until retirement age if that age is reached during the new term of office after a prior positive evaluation of their performance by the Management Board, subject to a favourable opinion by the President of the Boards of Appeal. -====Article 144==== +6. The members of the Boards of Appeal shall not be removed from office unless there are serious grounds for such removal and the Court of Justice, after the case has been referred to it by the Management Board on the recommendation of the President of the Boards of Appeal, after consulting the chairperson of the Board to which the member concerned belongs, takes a decision to this effect. -====Article 149==== +7. The President of the Boards of Appeal and the chairpersons and members of the Boards of Appeal shall be independent. In their decisions they shall not be bound by any instructions. -====Article 145==== +8. Decisions taken by an enlarged Board on appeals or opinions on questions of law referred to it by the Executive Director pursuant to Article 135 shall be binding on the decision-making instances of the Agency referred to in Article 130. -====Article 150==== +9. The President of the Boards of Appeal and the chairpersons and members of the Boards of Appeal shall not be examiners or members of the Opposition Divisions, the Department entrusted with the keeping of the Register or Cancellation Divisions.'; (107) Article 138 is replaced by the following: 'Article 138 Budget Committee EN 47 EN +1. The Budget Committee shall have the functions assigned to it in this Section. +2. Articles 125, 126 and 127(1) to (4), (6) and (7) shall apply to the Budget Committee mutatis mutandis. -====Article 146==== +3. The Budget Committee shall take its decisions by an absolute majority of its members. However, a majority of two-thirds of its members shall be required for the decisions which the Budget Committee is empowered to take under Article 140(3) and Article 143. In both cases each member shall have one vote.'; (108) In Article 139 the following paragraph 4 is added: '4. The Agency shall prepare on a biannual basis a report to the Commission on its financial situation. On the basis of this report, the Commission shall review the financial situation of the Agency.'; (109) The following Article 141a is inserted: 'Article 141a Combating fraud +1. In order to facilitate combating fraud, corruption and other unlawful activities under Regulation (EC) No 1073/1999 the Agency shall accede to the Interinstitutional Agreement of 25 May 1999 concerning internal investigations by the European Anti-fraud Office (OLAF) and adopt the appropriate provisions applicable to all the employees of the Agency using the template set out in the Annex to that Agreement. -====Article 151==== +2. The European Court of Auditors shall have the power of audit, on the basis of documents and on the spot, over all grant beneficiaries, contractors and subcontractors who have received Union funds from the Agency. -====Article 147==== +3. OLAF may carry out investigations, including on-the-spot checks and inspections, in accordance with the provisions and procedures laid down in Regulation (EC) No 1073/1999 and Regulation (Euratom, EC) No 2185/96 with a view to establishing whether there has been fraud, corruption or any other illegal activity affecting the financial interests of the Union in connection with a grant or a contract funded by the Agency. -====Article 152==== +4. Without prejudice to paragraphs 1, 2 and 3, cooperation agreements with third countries and international organisations, contracts, grant agreements and grant decisions of the Agency shall contain provisions expressly empowering the European Court of Auditors and OLAF to conduct such audits and investigations, according to their respective competences. -====Article 148==== +5. The Budget Committee shall adopt an anti-fraud strategy, which is proportionate to the fraud risks having regard to the cost-benefit of the measures to be implemented.'; (110) EN Article 144 is replaced by the following: 48 EN 'Article 144 Fees +1. In addition to the fees provided for in Articles 26(2), 36(1)(c), 41(3), 44(4), 47(1) and (3), 49(4), 56(2), 60, 81(3), 82(1), 113(1) and 147(5), fees shall be charged in the following cases: (a) issue of a copy of the certificate of registration; (b) registration of a license or another right in respect of a European trade mark; (c) registration of a license or another right in respect of an application for a European trade mark; (d) cancellation of the registration of a license or another right; (e) alteration of a registered European trade mark; (f) issue of an extract from the Register; (g) inspection of the files; (h) issue of copies of file documents; (i) issue of certified copies of the application; (j) communication of information in a file; (k) review of the determination of the procedural costs to be refunded. -====Article 153==== +2. The amounts of the fees referred to in paragraph 1 shall be fixed at such level as to ensure that the revenue in respect thereof is in principle sufficient for the budget of the Agency to be balanced while avoiding the accumulation of significant surpluses. -====Article 149==== +Without prejudice to Article 139(4), the Commission shall review the level of fees should a significant surplus become recurrent. If this review does not lead to a reduction or modification in the level of fees which has the effect of preventing the further accumulation of a significant surplus, the surplus accumulated after the review shall be transferred to the budget of the Union. -====Article 154==== +3. The Executive Director shall lay down the amount to be charged for any services provided by the Agency other than those referred to in paragraph 1 and for publications issued by the Agency in accordance with the criteria set out in the delegated act adopted pursuant to Article 144a(d). The amount of the charge shall not exceed what is necessary to cover the costs of the specific service rendered by the Agency. -====Article 150==== +4. In accordance with the criteria set out in the delegated act adopted pursuant to Article 144a(d), the Executive Director may take the following measures: (a) EN he may establish which specific methods of payment other than those set out in accordance with Article 144a(d) may be used, in particular by means of deposits in current accounts held with the Agency; 49 EN (b) he may determine the amounts below which an excessive sum paid to cover a fee or a charge shall not be refunded; (c) he may waive action for the enforced recovery of any sum due where the sum to be recovered is minimal or where such recovery is too uncertain. +Where the methods of payment referred to in point (a) may be used, the Executive Director shall establish the date on which such payments are to be considered to have been made to the Agency.'; (111) The following Section 6 is inserted: 'SECTION 6 Delegation of powers -====Article 155==== +====Article 144a==== +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 in order to establish: (a) the specific criteria of use of the languages referred to in Article 119; (b) the cases in which opposition and cancellation decisions shall be taken by a single member under Article 132(2) and Article 134(2); (c) the details on the organisation of the Boards of Appeal, including the setting up and the role of the authority of the Boards of Appeal referred to in Article 135(3)(a), the composition of the enlarged Board and the rules on referrals to it as referred to in Article 135(4), and the conditions under which decisions shall be taken by a single member in accordance with Article 135(2) and (5); (d) the system of fees and charges payable to the Agency in accordance with Article 144, including the amount of fees, the methods of payment, the currencies, the due date for fees and charges, the deemed date of payment and the consequences of lack of or late payment, and under- and overpayment, the services which may be free of charge, and the criteria under which the Executive Director may exercise the powers set out in Article 144(3) and (4).'; (112) In Article 145, the words 'its Implementing Regulations' are replaced by 'the delegated acts adopted pursuant to this Regulation'; (113) In Article 147, paragraphs 4, 5 and 6 are replaced by the following: '4. The filing of an international application shall be subject to the payment of a fee to the Agency. Where the international registration is to be based on a European trade mark once it is registered, the fee shall be due on the date of registration of the European trade mark. The application shall be deemed not to have been filed until the required fee has been paid. -====Article 151==== +EN 50 EN +5. The international application shall fulfil the formal conditions established in accordance with Article 161a(a). -====Article 156==== +6. The Agency shall examine whether the international application meets the conditions laid down in Article 146 and in paragraphs 1, 3 and 5 of this Article. -====Article 152==== +7. The Agency shall forward the international application to the International Bureau as soon as possible.'; (114) The following Article 148a is inserted: 'Article 148a Notification of the invalidity of the basic application or registration Within a period of five years from the date of the international registration, the Agency shall notify the International Bureau of the facts and decisions affecting the validity of the European trade mark application or the European trade mark registration on which the international registration was based.'; (115) In Article 149, the following sentence is added: 'The request shall fulfil the formal conditions established in accordance with Article 161a(c).'; (116) Article 154(4) is deleted; (117) The following Article 154a is inserted: 'Article 154a Collective and certification marks Where an international registration is based on a basic application or basic registration relating to a collective mark, certification mark or guarantee mark, the Agency shall comply with the procedures provided for in accordance with Article 161a(f).'; (118) Article 155 is deleted; (119) Article 156 is amended as follows: (a) (b) (120) in paragraph 2, the words 'six months' are replaced by 'one month'; paragraph 4 is deleted; The following Articles 158a, 158b and 158c are inserted: 'Article 158a Legal effect of registration of transfers The recordal of a change in the ownership of the international registration on the International Register shall have the same effect as the entry of a transfer in the Register pursuant to Article 17. +EN 51 EN -====Article 157==== +====Article 158b==== +Legal effect of registration of licenses and other rights The recordal of a license or a restriction of the holder's right of disposal in respect of the international registration in the International Register shall have the same effect as the registration of a license, a right in rem, a levy of execution or insolvency proceedings in the Register pursuant to Articles 19, 20, 21 and 22 respectively. -====Article 153==== -====Article 158==== +====Article 158c==== +Examination of requests for registration of transfers, licenses or restrictions of the holder's right of disposal The Agency shall transmit requests to register a change in ownership, a license or a restriction of the holder's right of disposal, the amendment or cancellation of a license or the removal of a restriction of the holder's right of disposal which have been filed with it to the International Bureau in the cases specified in accordance with Article 161a(h).'; (121) Article 159 is amended as follows: (a) in paragraph 1, point (b) is replaced by the following: '(b) into a designation of a Member State party to the Madrid Protocol, provided that on the date when conversion was requested it was possible to have designated that Member State directly under the Madrid Protocol. Articles 112, 113 and 114 shall apply.'; (b) (122) in paragraph 2, the words 'or the Madrid Agreement' are deleted; In Title XIII the following Section 4 is inserted: 'SECTION 4 Conferral of powers -====Article 154==== +====Article 161a==== +Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163 specifying: (a) (b) the modalities of the notification provided for in Article 148a; (c) EN the formal conditions of an international application referred to in Article 147(5), the procedure for the examination of the international application pursuant to Article 147(6) and the modalities of forwarding the international application to the International Bureau pursuant to Article 147(4); the formal conditions of a request for territorial extension as referred to in Article 149(2), the procedure for the examination of those conditions and the modalities of forwarding the request for territorial extension to the International Bureau; 52 EN (d) the procedure for filing a seniority claim pursuant to Article 153; (e) the procedures for the examination of absolute grounds for refusal referred to in Article 154 and for the filing and examination of an opposition pursuant to Article 156, including the necessary communications to be made to the International Bureau; (f) the procedures with regard to the international registrations referred to in Article 154a; (g) the cases where the Agency shall notify the International Bureau of the invalidation of the effects of an international registration pursuant to Article 158 and the information that such notification shall contain; (h) the modalities of transmission of the requests referred to in Article 158c to the International Bureau; (i) the conditions with which a request for conversion pursuant to Article 159(1) shall comply; (j) the formal conditions of an application for transformation referred to in Article 161 and the procedures for such a transformation; (k) the modalities of communications between the Agency and the International Bureau, including the communications to be made pursuant to Articles 147(4), 148a, 153(2) and 158c.'; (123) Article 162 is deleted; (124) Article 163 is deleted; (125) The following Article 163a is inserted: 'Article 163a Exercise of the delegation +1. The power to adopt delegated acts is conferred on the Commission subject to the conditions laid down in this Article. -====Article 159==== +2. The delegation of power referred to in Articles 24a, 35a, 45a, 49a, 57a, 65a, 74a, 74k, 93a, 114a, 144a and 161a shall be conferred for an indeterminate period of time. -====Article 155==== +3. The delegation of power referred to in paragraph 2 may be revoked at any time by the European Parliament or by the Council. A decision of revocation shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force. -====Article 160==== +4. As soon as it adopts a delegated act, the Commission shall notify it simultaneously to the European Parliament and to the Council. -====Article 156==== +EN 53 EN +5. A delegated act adopted pursuant to Articles 24a, 35a, 45a, 49a, 57a, 65a, 74a, 74k, 93a, 114a, 144a and 161a shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or the Council.'; (126) Article 164 is deleted; (127) The following Article 165a is inserted: 'Article 165a Evaluation and review +1. By 2019, and every five years thereafter, the Commission shall commission an evaluation on the implementation of this Regulation. -====Article 161==== +2. The evaluation shall review the legal framework for cooperation between the Agency and the central industrial property offices of the Member States and the Benelux Office for Intellectual Property, with a particular attention to the financing mechanism. The evaluation shall further assess the impact, effectiveness and efficiency of the Agency and its working practices. The evaluation shall, in particular, address the possible need to modify the mandate of the Agency, and the financial implications of any such modification. -L 78/42 Official Journal of the European Union EN Regulation (EC) No 40/94 24.3.2009 This Regulation Article 157(1) Article 162(1) Article 157(2), introductory wording Article 162(2), introductory wording Article 157(2)(2) Article 162(2)(a) Article 157(2)(3) Article 162(2)(b) Article 157(2)(5) Article 162(2)(c) Article 157(2)(6) Article 162(2)(d) Article 157(2)(7) Article 162(2)(e) Article 157(2)(8) Article 162(2)(f) Article 157(2)(9) Article 162(2)(g) Article 157(2)(10) Article 162(2)(h) Article 157(2)(11) Article 162(2)(i) Article 157(2)(12) Article 162(2)(j) Article 157(2)(13) Article 162(2)(k) Article 157(2)(14) Article 162(2)(l) Article 157(3) Article 162(3) -====Article 158==== +3. The Commission shall forward the evaluation report together with its conclusions drawn on the report to the European Parliament, the Council and the Management Board. The findings of the evaluation shall be made public. -====Article 163==== +4. On the occasion of every second evaluation, there shall be an assessment of the results achieved by the Agency having regard to its objectives, mandate and tasks. If the Commission considers that the continuation of the Agency is no longer justified with regard to its assigned objectives, mandate and tasks, it may propose that this Regulation be repealed.' -====Article 159==== +====Article 2==== +This Regulation shall enter into force on [specify date 90 days after its publication in the Official Journal of the European Union]. -====Article 164==== +Article 1(9), (10)(b), (21), (22), (23), (25), (26), (27), (29), (30), (31), (34), (37), (38), (41), (44), (46), (57), (58), (59), (60), (61), (63), (64), (66), (67), (68), (69), (70), (71), (72), (73), (75), (76), (77), (78), (79), (88), (89), (93), (94), (99) insofar as it relates to Article 128(4)(n), (101), (103)(b), (105)(d), (112), (113), (114), (115), (117), (120), (123) and (124) shall apply from [specify the first day of the first month after 18 months following the date specified in the first paragraph]. -Article 159a(1), (2) and (3) Article 165(1), (2) and (3) Article 159a(4), initial wording Article 165(4), initial wording Article 159a(4), first indent Article 165(4)(a) Article 159a(4), second indent Article 165(4)(b) Article 159a(5) Article 165(5) — -====Article 166==== +This Regulation shall be binding in its entirety and directly applicable in all Member States. -Article 160(1) Article 167(1) Article 160(2) Article 167(2) Article 160(3) and (4) — — Annex I — Annex II
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