- 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
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- 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
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