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+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.
+
+CONTEXT OF THE PROPOSAL
+
+1.1.
+
+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.
+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.
+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.
+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.
+
+1
+
+EN
+
+Competitiveness Council Conclusions of 21 and 22 May 2007, Council document 9427/07.
+
+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.
+1.2.
+
+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.
+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).
+
+Communication from the Commission: "Think Small First", A "Small Business Act" for Europe COM(2008) 394 final of 25 June 2008.
+COM(2008) 465 final of 16 July 2008.
+COM(2010)546 final of 6 October 2010.
+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.
+
+2
+
+EN
+
+2.
+
+RESULTS OF CONSULTATIONS WITH INTERESTED PARTIES AND
+IMPACT ASSESSMENT
+
+2.1.
+
+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.
+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.
+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.
+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.
+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.
+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.
+
+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.
+
+3
+
+EN
+
+2.2.
+
+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.
+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.
+
+The following options were considered to solve these problems and to achieve three
+corresponding objectives.
+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.
+
+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.
+
+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.
+
+4
+
+EN
+
+The impact assessment concluded that option 3 would in all cases be proportionate and best
+suited to achieving the objectives pursued.
+3.
+
+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.
+Only the EU legislator has the competence to make the amendments needed.
+4.
+
+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).
+5.
+
+DETAILED EXPLANATION OF THE PROPOSAL
+
+The proposed amendments to the Regulation are presented according to the objectives set out
+in section 1.2 above.
+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’.
+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.
+
+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.
+- 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.
+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.
+- 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.
+- 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).
+- 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.
+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.
+- 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.
+OJ L 343, 14.12.2012, p. 1.
+OJ L 154, 17.6.2009, p. 1.
+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.
+- 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.
+
+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.
+
+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.
+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.
+
+Consignments from commercial suppliers
+
+12
+
+Agreement on Trade-Related Aspects of Intellectual Property Rights, OJ L 336, 23.12.1994, p. 213.
+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.
+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.
+
+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.
+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.
+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.
+- 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.
+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.
+
+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.
+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.
+- 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.
+
+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.
+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’.
+Communication No 2/12 of the President of the Office, OJ OHIM 7/2012.
+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).
+
+21
+22
+
+EN
+
+OJ L 303, 15.12.1995, p. 33.
+OJ L 28, 6.2.1996, p. 11.
+
+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.
+OJ L 78, 24.3.2009, p. 1.
+OJ L 40, 11.2.1989, p. 1.
+OJ L 299, 8.11.2008, p. 25.
+
+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').
+(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.
+
+(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.
+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.
+
+(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.
+
+(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.
+OJ C 140, 29.5.2010, p. 22.
+COM(2011) 287.
+
+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.
+
+(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.
+
+(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.
+
+(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.
+
+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.
+(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.
+
+(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.
+
+(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)
+
+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.
+
+OJ L 376, 27.12.2006, p. 21.
+
+4
+
+EN
+
+207/2009 need to be aligned to Article 290 of the Treaty on the Functioning of the
+European Union.
+(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.
+
+(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.
+
+(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.
+
+(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.
+
+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.
+
+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.
+
+(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.
+
+(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.
+
+(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.
+
+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.
+(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.
+
+(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.
+
+(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.
+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.
+
+(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.
+
+(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.
+
+(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.
+
+(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.
+
+HAVE ADOPTED THIS REGULATION:
+Article 1
+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.
+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. 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. 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.
+
+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.
+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.
+
+Article 9b
+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.
+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.
+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.
+
+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.
+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. 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].
+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.
+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 24a
+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').
+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.
+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.
+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.
+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.
+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.
+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.
+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).
+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.
+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
+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.
+They shall not be parties to the proceedings before the Agency.
+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.
+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.
+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.
+2. The Agency shall issue a certificate of registration. The certificate may be issued
+by electronic means.
+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.
+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
+
+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
+Article 57a
+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.
+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
+
+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.
+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.
+
+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.
+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.
+Article 74c
+Regulations governing use of the mark
+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.
+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 74d
+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.
+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.
+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 74f
+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.
+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.
+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.
+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).
+Article 74h
+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.
+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.
+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.
+
+Article 74j
+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.
+Article 74k
+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.
+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.
+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.
+3. Notification may be effected by electronic means, the details of which shall be
+determined by the Executive Director.
+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 79b
+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 79c
+Time limits
+1. The calculation and duration of time limits shall be subject to the rules adopted in
+accordance with Article 93a(f).
+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 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.
+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.
+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.
+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.
+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.
+
+The publications referred to in points (a) and (b) may be effected by electronic
+means.
+2. The European Trade Marks Bulletin shall be published in the manner and
+frequency determined by the Executive Director.
+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.
+
+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
+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 'Article 9b(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.
+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 Management Board shall adopt the detailed rules for applying Regulation
+(EC) No 1049/2001.
+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.
+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.
+(**) 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.
+(*) 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
+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 (**).
+
+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.
+3. The Agency may provide voluntary mediation services for the purpose of assisting
+parties in reaching an amicable settlement.
+Article 123c
+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.
+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).
+
+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.
+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 (****).
+(*) OJ L 3, 5.1.2002, p. 1.
+(**) OJ L 129, 16.5.2012, p. 1.
+(***) 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 124
+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.
+
+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.
+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
+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.
+2. The members of the Management Board may, subject to its rules of procedure, be
+assisted by advisers or experts.
+3. The duration of the term of office shall be four years. The term of office shall be
+extendable.
+Article 126
+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.
+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.
+Article 127
+Meetings
+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.
+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.
+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.
+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
+Executive Board
+
+EN
+
+41
+
+EN
+
+Article 127a
+Establishment
+The Management Board may establish an Executive Board.
+Article 127b
+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.
+
+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.
+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.
+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.
+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.
+7. The Executive Board shall comply with the rules of procedure laid down by the
+Management Board.
+SECTION 3
+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.
+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.
+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.
+
+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 129
+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.
+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.
+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.
+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.
+
+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.
+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.
+2. It shall also be responsible for keeping the list of professional representatives
+referred to in Article 93(2).
+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.
+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.
+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.
+
+The President of the Boards of Appeal shall chair the enlarged Board.
+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.
+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.
+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.
+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.
+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.
+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.
+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.
+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.
+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.
+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.
+
+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.
+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.
+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.
+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 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.
+
+EN
+
+50
+
+EN
+
+5. The international application shall fulfil the formal conditions established in
+accordance with Article 161a(a).
+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.
+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 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 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 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.
+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.
+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.
+4. As soon as it adopts a delegated act, the Commission shall notify it simultaneously
+to the European Parliament and to the Council.
+
+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.
+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.
+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.
+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 2
+
+This Regulation shall enter into force on [specify date 90 days after its publication in the
+Official Journal of the European Union].
+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].
+This Regulation shall be binding in its entirety and directly applicable in all Member States.
+
+EN
+
+54
+
+EN
+
+Done at Brussels,
+
+For the European Parliament
+The President
+
+EN
+
+For the Council
+The President
+
+55
+
+EN
+