- 24.3.2009
- Official Journal of the European Union
- EN
- L 78/1
- I
- (Acts adopted under the EC Treaty/Euratom Treaty whose publication is obligatory)
- REGULATIONS
- COUNCIL REGULATION (EC) No 207/2009
- of 26 February 2009
- on the Community trade mark
- (codified version)
- (Text with EEA relevance)
- THE COUNCIL OF THE EUROPEAN UNION,
- Community arrangements for trade marks whereby undertakings can by means of one procedural system obtain
- Community trade marks to which uniform protection is
- given and which produce their effects throughout the entire
- area of the Community. The principle of the unitary
- character of the Community trade mark thus stated should
- apply unless otherwise provided for in this Regulation.
- Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof,
- Having regard to the proposal from the Commission,
- Having regard to the opinion of the European Parliament (1),
- Whereas:
- (1)
- It is desirable to promote throughout the Community a
- harmonious development of economic activities and a
- continuous and balanced expansion by completing an
- internal market which functions properly and offers
- conditions which are similar to those obtaining in a
- national market. In order to create a market of this kind and
- make it increasingly a single market, not only must barriers
- to free movement of goods and services be removed and
- arrangements be instituted which ensure that competition
- is not distorted, but, in addition, legal conditions must be
- created which enable undertakings to adapt their activities
- to the scale of the Community, whether in manufacturing
- and distributing goods or in providing services. For those
- purposes, trade marks enabling the products and services of
- undertakings to be distinguished by identical means
- throughout the entire Community, regardless of frontiers,
- should feature amongst the legal instruments which
- undertakings have at their disposal.
- The barrier of territoriality of the rights conferred on
- proprietors of trade marks by the laws of the Member
- States cannot be removed by approximation of laws. In
- order to open up unrestricted economic activity in the
- whole of the internal market for the benefit of undertakings, trade marks should be created which are governed
- by a uniform Community law directly applicable in all
- Member States.
- (5)
- Since the Treaty has not provided the specific powers to
- establish such a legal instrument, Article 308 of the Treaty
- should be applied.
- (6)
- The Community law relating to trade marks nevertheless
- does not replace the laws of the Member States on trade
- marks. It would not in fact appear to be justified to require
- undertakings to apply for registration of their trade marks
- as Community trade marks. National trade marks continue
- to be necessary for those undertakings which do not want
- protection of their trade marks at Community level.
- (7)
- The rights in a Community trade mark should not be
- obtained otherwise than by registration, and registration
- should be refused in particular if the trade mark is not
- distinctive, if it is unlawful or if it conflicts with earlier
- rights.
- Council Regulation (EC) No 40/94 of 20 December 1993
- on the Community trade mark (2) has been substantially
- amended several times (3). In the interests of clarity and
- rationality the said Regulation should be codified.
- (2)
- (4)
- (3)
- For the purpose of pursuing the Community's said
- objectives it would appear necessary to provide for
- (1) OJ C 146 E, 12.6.2008, p. 79.
- (2) OJ L 11, 14.1.1994, p. 1.
- (3) See Annex I.
- L 78/2
- (8)
- (9)
- EN
- Official Journal of the European Union
- The protection afforded by a Community trade mark, the
- function of which is in particular to guarantee the trade
- mark as an indication of origin, should be absolute in the
- case of identity between the mark and the sign and the
- goods or services. The protection should apply also in cases
- of similarity between the mark and the sign and the goods
- or services. An interpretation should be given of the
- concept of similarity in relation to the likelihood of
- confusion. The likelihood of confusion, the appreciation of
- which depends on numerous elements and, in particular, on
- the recognition of the trade mark on the market, the
- association which can be made with the used or registered
- sign, the degree of similarity between the trade mark and
- the sign and between the goods or services identified,
- should constitute the specific condition for such protection.
- It follows from the principle of free movement of goods
- that the proprietor of a Community trade mark must not be
- entitled to prohibit its use by a third party in relation to
- goods which have been put into circulation in the
- Community, under the trade mark, by him or with his
- consent, save where there exist legitimate reasons for the
- proprietor to oppose further commercialisation of the
- goods.
- (10) There is no justification for protecting Community trade
- marks or, as against them, any trade mark which has been
- registered before them, except where the trade marks are
- actually used.
- (11) A Community trade mark is to be regarded as an object of
- property which exists separately from the undertakings
- whose goods or services are designated by it. Accordingly, it
- should be capable of being transferred, subject to the
- overriding need to prevent the public being misled as a
- result of the transfer. It should also be capable of being
- charged as security in favour of a third party and of being
- the subject matter of licences.
- (12) Administrative measures are necessary at Community level
- for implementing in relation to every trade mark the trade
- mark law created by this Regulation. It is therefore essential,
- while retaining the Community's existing institutional
- structure and balance of powers, to provide for an Office
- for Harmonisation in the Internal Market (trade marks and
- designs) which is independent in relation to technical
- matters and has legal, administrative and financial
- autonomy. To this end it is necessary and appropriate that
- that Office should be a body of the Community having legal
- personality and exercising the implementing powers which
- are conferred on it by this Regulation, and that it should
- operate within the framework of Community law without
- detracting from the competencies exercised by the Community institutions.
- 24.3.2009
- decide on it. Decisions of the Boards of Appeal are, in turn,
- amenable to actions before the Court of Justice of the
- European Communities, which has jurisdiction to annul or
- to alter the contested decision.
- (14) Under the first subparagraph of Article 225(1) of the EC
- Treaty the Court of First Instance of the European
- Communities has jurisdiction to hear and determine at
- first instance the actions referred to in particular in
- Article 230 of the EC Treaty with the exception of those
- assigned to a judicial panel and those reserved in the Statute
- to the Court of Justice. The jurisdiction which this
- Regulation confers on the Court of Justice to cancel and
- alter decisions of the Boards of Appeal should accordingly
- be exercised at first instance by the Court.
- (15) In order to strengthen the protection of Community trade
- marks the Member States should designate, having regard
- to their own national system, as limited a number as
- possible of national courts of first and second instance
- having jurisdiction in matters of infringement and validity
- of Community trade marks.
- (16) Decisions regarding the validity and infringement of
- Community trade marks must have effect and cover the
- entire area of the Community, as this is the only way of
- preventing inconsistent decisions on the part of the courts
- and the Office and of ensuring that the unitary character of
- Community trade marks is not undermined. The provisions
- of Council Regulation (EC) No 44/2001 of 22 December
- 2000 on jurisdiction and the recognition and enforcement
- of judgments in civil and commercial matters (1) should
- apply to all actions at law relating to Community trade
- marks, save where this Regulation derogates from those
- rules.
- (17) Contradictory judgments should be avoided in actions
- which involve the same acts and the same parties and
- which are brought on the basis of a Community trade mark
- and parallel national trade marks. For this purpose, when
- the actions are brought in the same Member State, the way
- in which this is to be achieved is a matter for national
- procedural rules, which are not prejudiced by this
- Regulation, whilst when the actions are brought in different
- Member States, provisions modelled on the rules on lis
- pendens and related actions of Regulation (EC) No 44/2001
- appear appropriate.
- (18) In order to guarantee the full autonomy and independence
- of the Office, it is considered necessary to grant it an
- autonomous budget whose revenue comes principally from
- fees paid by the users of the system. However, the
- Community budgetary procedure remains applicable as
- far as any subsidies chargeable to the general budget of the
- European Communities are concerned. Moreover, the
- auditing of accounts should be undertaken by the Court
- of Auditors.
- (13) It is necessary to ensure that parties who are affected by
- decisions made by the Office are protected by the law in a
- manner which is suited to the special character of trade
- mark law. To that end provision is made for an appeal to lie
- from decisions of the examiners and of the various
- divisions of the Office. If the department whose decision
- is contested does not rectify its decision it is to remit the
- appeal to a Board of Appeal of the Office, which is to
- (19) Measures necessary for the implementation of this
- Regulation should be adopted, particularly as regards fees
- regulations and an Implementing Regulation, in accordance
- with Council Decision 1999/468/EC of 28 June 1999
- (1) OJ L 12, 16.1.2001, p. 1.
- 24.3.2009
- Official Journal of the European Union
- EN
- laying down the procedures for the exercise of implementing powers conferred on the Commission (1),
- L 78/3
- or of their packaging, provided that such signs are capable of
- distinguishing the goods or services of one undertaking from
- those of other undertakings.
- HAS ADOPTED THIS REGULATION:
- Article 5
- TITLE I
- Persons who can be proprietors of Community trade marks
- GENERAL PROVISIONS
- Any natural or legal person, including authorities established
- under public law, may be the proprietor of a Community trade
- mark.
- Article 1
- Community trade mark
- 1. A trade mark for goods or services which is registered in
- accordance with the conditions contained in this Regulation and
- in the manner herein provided is hereinafter referred to as a
- ‘Community trade mark’.
- 2. A Community trade mark shall have a unitary character. It
- shall have equal effect throughout the Community: it shall not be
- registered, transferred or surrendered or be the subject of a
- decision revoking the rights of the proprietor or declaring it
- invalid, nor shall its use be prohibited, save in respect of the
- whole Community. This principle shall apply unless otherwise
- provided in this Regulation.
- Article 6
- Means whereby a Community trade mark is obtained
- A Community trade mark shall be obtained by registration.
- Article 7
- Absolute grounds for refusal
- 1. The following shall not be registered:
- (a)
- signs which do not conform to the requirements of
- Article 4;
- (b)
- trade marks which are devoid of any distinctive character;
- (c)
- trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind,
- quality, quantity, intended purpose, value, geographical
- origin or the time of production of the goods or of
- rendering of the service, or other characteristics of the
- goods or service;
- (d)
- trade marks which consist exclusively of signs or indications which have become customary in the current
- language or in the bona fide and established practices of
- the trade;
- (e)
- signs which consist exclusively of:
- Article 2
- Office
- An Office for Harmonisation in the Internal Market (trade marks
- and designs), hereinafter referred to as ‘the Office’, is hereby
- established.
- Article 3
- Capacity to act
- For the purpose of implementing this Regulation, companies or
- firms and other legal bodies shall be regarded as legal persons if,
- under the terms of the law governing them, they have the
- capacity in their own name to have rights and obligations of all
- kinds, to make contracts or accomplish other legal acts and to
- sue and be sued.
- (i)
- the shape which results from the nature of the goods
- themselves;
- (ii)
- the shape of goods which is necessary to obtain a
- technical result;
- TITLE II
- THE LAW RELATING TO TRADE MARKS
- (iii) the shape which gives substantial value to the goods;
- SECTION 1
- Definition of a Community trade mark and obtaining a
- Community trade mark
- (f)
- trade marks which are contrary to public policy or to
- accepted principles of morality;
- Article 4
- (g)
- trade marks which are of such a nature as to deceive the
- public, for instance as to the nature, quality or geographical
- origin of the goods or service;
- (h)
- trade marks which have not been authorised by the
- competent authorities and are to be refused pursuant to
- Article 6ter of the Paris Convention for the Protection of
- Industrial Property, hereinafter referred to as the ‘Paris
- Convention’;
- Signs of which a Community trade mark may consist
- A Community trade mark may consist of any signs capable of
- being represented graphically, particularly words, including
- personal names, designs, letters, numerals, the shape of goods
- (1) OJ L 184, 17.7.1999, p. 23.
- L 78/4
- (i)
- (j)
- (k)
- Official Journal of the European Union
- EN
- 24.3.2009
- trade marks which include badges, emblems or escutcheons
- other than those covered by Article 6ter of the Paris
- Convention and which are of particular public interest,
- unless the consent of the competent authority to their
- registration has been given;
- mark, taking account, where appropriate, of the priorities
- claimed in respect of those trade marks:
- (i)
- Community trade marks;
- trade marks for wines which contain or consist of a
- geographical indication identifying wines or for spirits
- which contain or consist of a geographical indication
- identifying spirits with respect to such wines or spirits not
- having that origin;
- (ii)
- trade marks registered in a Member State, or, in the
- case of Belgium, the Netherlands or Luxembourg, at
- the Benelux Office for Intellectual Property;
- trade marks which contain or consist of a designation of
- origin or a geographical indication registered in accordance
- with Council Regulation (EC) No 510/2006 of 20 March
- 2006 on the protection of geographical indications and
- designations of origin for agricultural products and foodstuffs (1) when they correspond to one of the situations
- covered by Article 13 of the said Regulation and regarding
- the same type of product, on condition that the application
- for registration of the trade mark has been submitted after
- the date of filing with the Commission of the application
- for registration of the designation of origin or geographical
- indication.
- (iii) trade marks registered under international arrangements which have effect in a Member State;
- (iv) trade marks registered under international arrangements which have effect in the Community;
- (b)
- applications for the trade marks referred to in subparagraph (a), subject to their registration;
- (c)
- trade marks which, on the date of application for
- registration of the Community trade mark, or, where
- appropriate, of the priority claimed in respect of the
- application for registration of the Community trade mark,
- are well known in a Member State, in the sense in which the
- words ‘well known’ are used in Article 6bis of the Paris
- Convention.
- 2. Paragraph 1 shall apply notwithstanding that the grounds of
- non-registrability obtain in only part of the Community.
- 3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark
- has become distinctive in relation to the goods or services for
- which registration is requested in consequence of the use which
- has been made of it.
- 3. Upon opposition by the proprietor of the trade mark, a
- trade mark shall not be registered where an agent or
- representative of the proprietor of the trade mark applies for
- registration thereof in his own name without the proprietor's
- consent, unless the agent or representative justifies his action.
- Article 8
- Relative grounds for refusal
- 1. Upon opposition by the proprietor of an earlier trade mark,
- the trade mark applied for shall not be registered:
- (a)
- (b)
- if it is identical with the earlier trade mark and the goods or
- services for which registration is applied for are identical
- with the goods or services for which the earlier trade mark
- is protected;
- if because of its identity with, or similarity to, the earlier
- trade mark and the identity or similarity of the goods or
- services covered by the trade marks there exists a likelihood
- of confusion on the part of the public in the territory in
- which the earlier trade mark is protected; the likelihood of
- confusion includes the likelihood of association with the
- earlier trade mark.
- 2. For the purposes of paragraph 1, ‘earlier trade marks’ means:
- (a)
- trade marks of the following kinds with a date of
- application for registration which is earlier than the date
- of application for registration of the Community trade
- (1) OJ L 93, 31.3.2006, p. 12.
- 4. Upon opposition by the proprietor of a non-registered trade
- mark or of another sign used in the course of trade of more than
- mere local significance, the trade mark applied for shall not be
- registered where and to the extent that, pursuant to the
- Community legislation or the law of the Member State governing
- that sign:
- (a)
- rights to that sign were acquired prior to the date of
- application for registration of the Community trade mark,
- or the date of the priority claimed for the application for
- registration of the Community trade mark;
- (b)
- that sign confers on its proprietor the right to prohibit the
- use of a subsequent trade mark.
- 5. Furthermore, upon opposition by the proprietor of an
- earlier trade mark within the meaning of paragraph 2, the trade
- mark applied for shall not be registered where it is identical with,
- or similar to, the earlier trade mark and is to be registered for
- goods or services which are not similar to those for which the
- earlier trade mark is registered, where, in the case of an earlier
- Community trade mark, the trade mark has a reputation in the
- Community and, in the case of an earlier national trade mark, the
- trade mark has a reputation in the Member State concerned and
- where the use without due cause of the trade mark applied for
- would take unfair advantage of, or be detrimental to, the
- distinctive character or the repute of the earlier trade mark.
- 24.3.2009
- Official Journal of the European Union
- EN
- L 78/5
- SECTION 2
- Article 10
- Effects of Community trade marks
- Reproduction of Community trade marks in dictionaries
- Article 9
- Rights conferred by a Community trade mark
- 1. A Community trade mark shall confer on the proprietor
- exclusive rights therein. The proprietor shall be entitled to
- prevent all third parties not having his consent from using in the
- course of trade:
- If the reproduction of a Community trade mark in a dictionary,
- encyclopaedia or similar reference work gives the impression that
- it constitutes the generic name of the goods or services for which
- the trade mark is registered, the publisher of the work shall, at
- the request of the proprietor of the Community trade mark,
- ensure that the reproduction of the trade mark at the latest in the
- next edition of the publication is accompanied by an indication
- that it is a registered trade mark.
- Article 11
- (a)
- (b)
- (c)
- any sign which is identical with the Community trade mark
- in relation to goods or services which are identical with
- those for which the Community trade mark is registered;
- any sign where, because of its identity with, or similarity to,
- the Community trade mark and the identity or similarity of
- the goods or services covered by the Community trade
- mark and the sign, there exists a likelihood of confusion on
- the part of the public; the likelihood of confusion includes
- the likelihood of association between the sign and the trade
- mark;
- any sign which is identical with, or similar to, the
- Community trade mark in relation to goods or services
- which are not similar to those for which the Community
- trade mark is registered, where the latter has a reputation in
- the Community and where use of that sign without due
- cause takes unfair advantage of, or is detrimental to, the
- distinctive character or the repute of the Community trade
- mark.
- Prohibition on the use of a Community trade mark
- registered in the name of an agent or representative
- Where a Community trade mark is registered in the name of the
- agent or representative of a person who is the proprietor of that
- trade mark, without the proprietor's authorisation, the latter shall
- be entitled to oppose the use of his mark by his agent or
- representative if he has not authorised such use, unless the agent
- or representative justifies his action.
- Article 12
- Limitation of the effects of a Community trade mark
- A Community trade mark shall not entitle the proprietor to
- prohibit a third party from using in the course of trade:
- (a)
- his own name or address;
- (b)
- indications concerning the kind, quality, quantity, intended
- purpose, value, geographical origin, the time of production
- of the goods or of rendering of the service, or other
- characteristics of the goods or service;
- (c)
- the trade mark where it is necessary to indicate the intended
- purpose of a product or service, in particular as accessories
- or spare parts,
- 2. The following, inter alia, may be prohibited under paragraph 1:
- (a)
- affixing the sign to the goods or to the packaging thereof;
- (b)
- offering the goods, putting them on the market or stocking
- them for these purposes under that sign, or offering or
- supplying services thereunder;
- (c)
- importing or exporting the goods under that sign;
- (d)
- using the sign on business papers and in advertising.
- 3. The rights conferred by a Community trade mark shall
- prevail against third parties from the date of publication of
- registration of the trade mark. Reasonable compensation may,
- however, be claimed in respect of acts occurring after the date of
- publication of a Community trade mark application, which acts
- would, after publication of the registration of the trade mark, be
- prohibited by virtue of that publication. The court seized of the
- case may not decide upon the merits of the case until the
- registration has been published.
- provided he uses them in accordance with honest practices in
- industrial or commercial matters.
- Article 13
- Exhaustion of the rights conferred by a Community trade
- mark
- 1. A Community trade mark shall not entitle the proprietor to
- prohibit its use in relation to goods which have been put on the
- market in the Community under that trade mark by the
- proprietor or with his consent.
- 2. Paragraph 1 shall not apply where there exist legitimate
- reasons for the proprietor to oppose further commercialisation
- of the goods, especially where the condition of the goods is
- changed or impaired after they have been put on the market.
- L 78/6
- Official Journal of the European Union
- EN
- Article 14
- Complementary application of national law relating to
- infringement
- 1. The effects of Community trade marks shall be governed
- solely by the provisions of this Regulation. In other respects,
- infringement of a Community trade mark shall be governed by
- the national law relating to infringement of a national trade mark
- in accordance with the provisions of Title X.
- 2. This Regulation shall not prevent actions concerning a
- Community trade mark being brought under the law of Member
- States relating in particular to civil liability and unfair
- competition.
- 3. The rules of procedure to be applied shall be determined in
- accordance with the provisions of Title X.
- SECTION 3
- 24.3.2009
- entirety, and for the whole area of the Community, as a national
- trade mark registered in the Member State in which, according to
- the Register of Community trade marks:
- (a)
- the proprietor has his seat or his domicile on the relevant
- date;
- (b)
- where point (a) does not apply, the proprietor has an
- establishment on the relevant date.
- 2. In cases which are not provided for by paragraph 1, the
- Member State referred to in that paragraph shall be the Member
- State in which the seat of the Office is situated.
- 3. If two or more persons are mentioned in the Register of
- Community trade marks as joint proprietors, paragraph 1 shall
- apply to the joint proprietor first mentioned; failing this, it shall
- apply to the subsequent joint proprietors in the order in which
- they are mentioned. Where paragraph 1 does not apply to any of
- the joint proprietors, paragraph 2 shall apply.
- Use of Community trade marks
- Article 17
- Article 15
- Transfer
- Use of Community trade marks
- 1. If, within a period of five years following registration, the
- proprietor has not put the Community trade mark to genuine
- use in the Community in connection with the goods or services
- in respect of which it is registered, or if such use has been
- suspended during an uninterrupted period of five years, the
- Community trade mark shall be subject to the sanctions provided
- for in this Regulation, unless there are proper reasons for nonuse.
- The following shall also constitute use within the meaning of the
- first subparagraph:
- (a)
- use of the Community trade mark in a form differing in
- elements which do not alter the distinctive character of the
- mark in the form in which it was registered;
- (b)
- affixing of the Community trade mark to goods or to the
- packaging thereof in the Community solely for export
- purposes.
- 2. Use of the Community trade mark with the consent of the
- proprietor shall be deemed to constitute use by the proprietor.
- SECTION 4
- 1. A Community trade mark may be transferred, separately
- from any transfer of the undertaking, in respect of some or all of
- the goods or services for which it is registered.
- 2. A transfer of the whole of the undertaking shall include the
- transfer of the Community trade mark except where, in
- accordance with the law governing the transfer, there is
- agreement to the contrary or circumstances clearly dictate
- otherwise. This provision shall apply to the contractual
- obligation to transfer the undertaking.
- 3. Without prejudice to paragraph 2, an assignment of the
- Community trade mark shall be made in writing and shall
- require the signature of the parties to the contract, except when it
- is a result of a judgment; otherwise it shall be void.
- 4. Where it is clear from the transfer documents that because
- of the transfer the Community trade mark is likely to mislead the
- public concerning the nature, quality or geographical origin of
- the goods or services in respect of which it is registered, the
- Office shall not register the transfer unless the successor agrees
- to limit registration of the Community trade mark to goods or
- services in respect of which it is not likely to mislead.
- 5. On request of one of the parties a transfer shall be entered in
- the Register and published.
- Community trade marks as objects of property
- Article 16
- Dealing with Community trade marks as national trade
- marks
- 1. Unless Articles 17 to 24 provide otherwise, a Community
- trade mark as an object of property shall be dealt with in its
- 6. As long as the transfer has not been entered in the Register,
- the successor in title may not invoke the rights arising from the
- registration of the Community trade mark.
- 7. Where there are time limits to be observed vis-à-vis the
- Office, the successor in title may make the corresponding
- statements to the Office once the request for registration of the
- transfer has been received by the Office.
- 24.3.2009
- Official Journal of the European Union
- EN
- 8. All documents which require notification to the proprietor
- of the Community trade mark in accordance with Article 79
- shall be addressed to the person registered as proprietor.
- Article 18
- Transfer of a trade mark registered in the name of an agent
- Where a Community trade mark is registered in the name of the
- agent or representative of a person who is the proprietor of that
- trade mark, without the proprietor's authorisation, the latter shall
- be entitled to demand the assignment in his favour of the said
- registration, unless such agent or representative justifies his
- action.
- Article 19
- L 78/7
- 2. In the case of joint proprietorship of a Community trade
- mark, paragraph 1 shall apply to the share of the joint
- proprietor.
- 3. Where a Community trade mark is involved in insolvency
- proceedings, on request of the competent national authority an
- entry to this effect shall be made in the Register and published in
- the Community Trade Marks Bulletin referred to in Article 89.
- Article 22
- Licensing
- 1. A Community trade mark may be licensed for some or all of
- the goods or services for which it is registered and for the whole
- or part of the Community. A licence may be exclusive or nonexclusive.
- Rights in rem
- 1. A Community trade mark may, independently of the
- undertaking, be given as security or be the subject of rights in
- rem.
- 2. The proprietor of a Community trade mark may invoke the
- rights conferred by that trade mark against a licensee who
- contravenes any provision in his licensing contract with regard
- to:
- 2. On request of one of the parties, rights mentioned in
- paragraph 1 shall be entered in the Register and published.
- (a)
- its duration;
- (b)
- the form covered by the registration in which the trade
- mark may be used;
- (c)
- the scope of the goods or services for which the licence is
- granted;
- (d)
- the territory in which the trade mark may be affixed; or
- (e)
- the quality of the goods manufactured or of the services
- provided by the licensee.
- Article 20
- Levy of execution
- 1. A Community trade mark may be levied in execution.
- 2. As regards the procedure for levy of execution in respect of a
- Community trade mark, the courts and authorities of the
- Member States determined in accordance with Article 16 shall
- have exclusive jurisdiction.
- Insolvency proceedings
- 3. Without prejudice to the provisions of the licensing
- contract, the licensee may bring proceedings for infringement
- of a Community trade mark only if its proprietor consents
- thereto. However, the holder of an exclusive licence may bring
- such proceedings if the proprietor of the trade mark, after formal
- notice, does not himself bring infringement proceedings within
- an appropriate period.
- 1. The only insolvency proceedings in which a Community
- trade mark may be involved are those opened in the Member
- State in the territory of which the debtor has his centre of main
- interests.
- 4. A licensee shall, for the purpose of obtaining compensation
- for damage suffered by him, be entitled to intervene in
- infringement proceedings brought by the proprietor of the
- Community trade mark.
- However, where the debtor is an insurance undertaking or a
- credit institution as defined in Directive 2001/17/EC of the
- European Parliament and of the Council of 19 March 2001 on
- the reorganisation and winding-up of insurance undertakings (1)
- and Directive 2001/24/EC of the European Parliament and of the
- Council of 4 April 2001 on the reorganisation and winding up
- of credit institutions (2), respectively, the only insolvency
- proceedings in which a Community trademark may be involved
- are those opened in the Member State where that undertaking or
- institution has been authorised.
- 5. On request of one of the parties the grant or transfer of a
- licence in respect of a Community trade mark shall be entered in
- the Register and published.
- 3. On request of one the parties, levy of execution shall be
- entered in the Register and published.
- Article 21
- (1) OJ L 110, 20.4.2001, p. 28.
- (2) OJ L 125, 5.5.2001, p. 15.
- Article 23
- Effects vis-à-vis third parties
- 1. Legal acts referred to in Articles 17, 19 and 22 concerning a
- Community trade mark shall have effects vis-à-vis third parties in
- all the Member States only after entry in the Register.
- Nevertheless, such an act, before it is so entered, shall have
- L 78/8
- Official Journal of the European Union
- EN
- effect vis-à-vis third parties who have acquired rights in the trade
- mark after the date of that act but who knew of the act at the
- date on which the rights were acquired.
- 2. Paragraph 1 shall not apply in the case of a person who
- acquires the Community trade mark or a right concerning the
- Community trade mark by way of transfer of the whole of the
- undertaking or by any other universal succession.
- 3. The effects vis-à-vis third parties of the legal acts referred to
- in Article 20 shall be governed by the law of the Member State
- determined in accordance with Article 16.
- 24.3.2009
- 3. Applications referred to in paragraph 2 which reach the
- Office more than two months after filing shall be deemed to have
- been filed on the date on which the application reached the
- Office.
- 4. Ten years after the entry into force of Regulation (EC)
- No 40/94, the Commission shall draw up a report on the
- operation of the system of filing applications for Community
- trade marks, together with any proposals for modifying this
- system.
- Article 26
- 4. Until such time as common rules for the Member States in
- the field of bankruptcy enter into force, the effects vis-à-vis third
- parties of bankruptcy or like proceedings shall be governed by
- the law of the Member State in which such proceedings are first
- brought within the meaning of national law or of conventions
- applicable in this field.
- Conditions with which applications must comply
- 1. An application for a Community trade mark shall contain:
- (a)
- The application for a Community trade mark as an object of
- property
- (b)
- information identifying the applicant;
- (c)
- a list of the goods or services in respect of which the
- registration is requested;
- (d)
- Article 24
- a request for the registration of a Community trade mark;
- a representation of the trade mark.
- Articles 16 to 23 shall apply to applications for Community
- trade marks.
- TITLE III
- APPLICATION FOR COMMUNITY TRADE MARKS
- SECTION 1
- Filing of applications and the conditions which govern them
- 2. The application for a Community trade mark shall be subject
- to the payment of the application fee and, when appropriate, of
- one or more class fees.
- 3. An application for a Community trade mark must comply
- with the conditions laid down in the Implementing Regulation
- referred to in Article 162(1), hereinafter referred to as the
- ‘Implementing Regulation’.
- Article 25
- Article 27
- Filing of applications
- Date of filing
- 1. An application for a Community trade mark shall be filed, at
- the choice of the applicant:
- The date of filing of a Community trade mark application shall
- be the date on which documents containing the information
- specified in Article 26(1) are filed with the Office by the
- applicant or, if the application has been filed with the central
- office of a Member State or with the Benelux Office for
- Intellectual Property, with that office, subject to payment of the
- application fee within a period of one month of filing the
- abovementioned documents.
- (a)
- at the Office;
- (b)
- at the central industrial property office of a Member State
- or at the Benelux Office for Intellectual Property. An
- application filed in this way shall have the same effect as if
- it had been filed on the same date at the Office.
- Article 28
- 2. Where the application is filed at the central industrial
- property office of a Member State or at the Benelux Office for
- Intellectual Property, that office shall take all steps to forward the
- application to the Office within two weeks after filing. It may
- charge the applicant a fee which shall not exceed the
- administrative costs of receiving and forwarding the application.
- Classification
- Goods and services in respect of which Community trade marks
- are applied for shall be classified in conformity with the system
- of classification specified in the Implementing Regulation.
- 24.3.2009
- Official Journal of the European Union
- EN
- SECTION 2
- Priority
- L 78/9
- application for the purposes of establishing which rights take
- precedence.
- Article 29
- Article 32
- Right of priority
- Equivalence of Community filing with national filing
- 1. A person who has duly filed an application for a trade mark
- in or in respect of any State party to the Paris Convention or to
- the Agreement establishing the World Trade Organisation, or his
- successors in title, shall enjoy, for the purpose of filing a
- Community trade mark application for the same trade mark in
- respect of goods or services which are identical with or contained
- within those for which the application has been filed, a right of
- priority during a period of six months from the date of filing of
- the first application.
- A Community trade mark application which has been accorded a
- date of filing shall, in the Member States, be equivalent to a
- regular national filing, where appropriate with the priority
- claimed for the Community trade mark application.
- SECTION 3
- Exhibition priority
- 2. Every filing that is equivalent to a regular national filing
- under the national law of the State where it was made or under
- bilateral or multilateral agreements shall be recognised as giving
- rise to a right of priority.
- Article 33
- Exhibition priority
- 3. By a regular national filing is meant any filing that is
- sufficient to establish the date on which the application was filed,
- whatever may be the outcome of the application.
- 4. A subsequent application for a trade mark which was the
- subject of a previous first application in respect of the same
- goods or services and which is filed in or in respect of the same
- State shall be considered as the first application for the purposes
- of determining priority, provided that, at the date of filing of the
- subsequent application, the previous application has been
- withdrawn, abandoned or refused, without being open to public
- inspection and without leaving any rights outstanding, and has
- not served as a basis for claiming a right of priority. The previous
- application may not thereafter serve as a basis for claiming a
- right of priority.
- 5. If the first filing has been made in a State which is not a
- party to the Paris Convention or to the Agreement establishing
- the World Trade Organisation, paragraphs 1 to 4 shall apply only
- in so far as that State, according to published findings, grants, on
- the basis of the first filing made at the Office and subject to
- conditions equivalent to those laid down in this Regulation, a
- right of priority having equivalent effect.
- 1. If an applicant for a Community trade mark has displayed
- goods or services under the mark applied for, at an official or
- officially recognised international exhibition falling within the
- terms of the Convention on International Exhibitions signed at
- Paris on 22 November 1928 and last revised on 30 November
- 1972, he may, if he files the application within a period of six
- months from the date of the first display of the goods or services
- under the mark applied for, claim a right of priority from that
- date within the meaning of Article 31.
- 2. An applicant who wishes to claim priority pursuant to
- paragraph 1 must file evidence of the display of goods or services
- under the mark applied for under the conditions laid down in
- the Implementing Regulation.
- 3. An exhibition priority granted in a Member State or in a
- third country does not extend the period of priority laid down in
- Article 29.
- SECTION 4
- Article 30
- Claiming the seniority of a national trade mark
- Claiming priority
- An applicant desiring to take advantage of the priority of a
- previous application shall file a declaration of priority and a copy
- of the previous application. If the language of the latter is not
- one of the languages of the Office, the applicant shall file a
- translation of the previous application in one of those languages.
- Article 31
- Effect of priority right
- The right of priority shall have the effect that the date of priority
- shall count as the date of filing of the Community trade mark
- Article 34
- Claiming the seniority of a national trade mark
- 1. The proprietor of an earlier trade mark registered in a
- Member State, including a trade mark registered in the Benelux
- countries, or registered under international arrangements having
- effect in a Member State, who applies for an identical trade mark
- for registration as a Community trade mark for goods or services
- which are identical with or contained within those for which the
- earlier trade mark has been registered, may claim for the
- Community trade mark the seniority of the earlier trade mark in
- respect of the Member State in or for which it is registered.
- L 78/10
- Official Journal of the European Union
- EN
- 2. Seniority shall have the sole effect under this Regulation
- that, where the proprietor of the Community trade mark
- surrenders the earlier trade mark or allows it to lapse, he shall be
- deemed to continue to have the same rights as he would have
- had if the earlier trade mark had continued to be registered.
- 3. The seniority claimed for the Community trade mark shall
- lapse if the earlier trade mark the seniority of which is claimed is
- declared to have been revoked or to be invalid or if it is
- surrendered prior to the registration of the Community trade
- mark.
- Article 35
- Claiming seniority after registration of the Community
- trade mark
- 1. The proprietor of a Community trade mark who is the
- proprietor of an earlier identical trade mark registered in a
- Member State, including a trade mark registered in the Benelux
- countries or of an earlier identical trade mark, with an
- international registration effective in a Member State, for goods
- or services which are identical to those for which the earlier trade
- mark has been registered, or contained within them, may claim
- the seniority of the earlier trade mark in respect of the Member
- State in or for which it was registered.
- 2. Article 34(2) and (3) shall apply.
- 24.3.2009
- 3. If the deficiencies or the default on payment established
- pursuant to paragraph 1(a) are not remedied within this period,
- the application shall not be dealt with as a Community trade
- mark application. If the applicant complies with the Office's
- request, the Office shall accord as the date of filing of the
- application the date on which the deficiencies or the default on
- payment established are remedied.
- 4. If the deficiencies established pursuant to paragraph 1(b) are
- not remedied within the prescribed period, the Office shall refuse
- the application.
- 5. If the default on payment established pursuant to paragraph 1(c) is not remedied within the prescribed period, the
- application shall be deemed to be withdrawn unless it is clear
- which categories of goods or services the amount paid is
- intended to cover.
- 6. Failure to satisfy the requirements concerning the claim to
- priority shall result in loss of the right of priority for the
- application.
- 7. Failure to satisfy the requirements concerning the claiming
- of seniority of a national trade mark shall result in loss of that
- right for the application.
- Article 37
- Examination as to absolute grounds for refusal
- TITLE IV
- REGISTRATION PROCEDURE
- SECTION 1
- Examination of applications
- Article 36
- Examination of the conditions of filing
- 1. The Office shall examine whether:
- (a)
- the Community trade mark application satisfies the
- requirements for the accordance of a date of filing in
- accordance with Article 27;
- (b)
- the Community trade mark application complies with the
- conditions laid down in this Regulation and with the
- conditions laid down in the Implementing Regulation;
- (c)
- where appropriate, the class fees have been paid within the
- prescribed period.
- 1. Where, under Article 7, a trade mark is ineligible for
- registration in respect of some or all of the goods or services
- covered by the Community trade mark application, the
- application shall be refused as regards those goods or services.
- 2. Where the trade mark contains an element which is not
- distinctive, and where the inclusion of that element in the trade
- mark could give rise to doubts as to the scope of protection of
- the trade mark, the Office may request, as a condition for
- registration of said trade mark, that the applicant state that he
- disclaims any exclusive right to such element. Any disclaimer
- shall be published together with the application or the
- registration of the Community trade mark, as the case may be.
- 3. The application shall not be refused before the applicant has
- been allowed the opportunity of withdrawing or amending the
- application or of submitting his observations.
- SECTION 2
- Search
- Article 38
- Search
- 2. Where the Community trade mark application does not
- satisfy the requirements referred to in paragraph 1, the Office
- shall request the applicant to remedy the deficiencies or the
- default on payment within the prescribed period.
- 1. Once the Office has accorded a date of filing, it shall draw up
- a Community search report citing those earlier Community trade
- marks or Community trade mark applications discovered which
- 24.3.2009
- Official Journal of the European Union
- EN
- may be invoked under Article 8 against the registration of the
- Community trade mark applied for.
- 2. Where, at the time of filing a Community trade mark
- application, the applicant requests that a search report also be
- prepared by the central industrial property offices of the Member
- States and where the appropriate search fee has been paid within
- the time limit for the payment of the filing fee, the Office shall, as
- soon as a Community trade mark application has been accorded
- a date of filing, transmit a copy thereof to the central industrial
- property office of each Member State which has informed the
- Office of its decision to operate a search in its own register of
- trade marks in respect of Community trade mark applications.
- referred to in Article 38(7) has expired, the application shall be
- published to the extent that it has not been refused pursuant to
- Article 37.
- 2. Where, after publication, the application is refused under
- Article 37, the decision that it has been refused shall be
- published upon becoming final.
- SECTION 4
- Observations by third parties and opposition
- 3. Each of the central industrial property offices referred to in
- paragraph 2 shall communicate to the Office within two months
- as from the date on which it received the Community trade mark
- application a search report which shall either cite those earlier
- national trade marks or trade mark applications discovered
- which may be invoked under Article 8 against the registration of
- the Community trade mark applied for, or state that the search
- has revealed no such rights.
- 4. The search reports referred to in paragraph 3 shall be
- prepared on a standard form drawn up by the Office, after
- consulting the Administrative Board provided for in Article 126(1), hereinafter referred to as ‘the Administrative Board’.
- The essential contents of this form shall be set out in the
- Implementing Regulation.
- L 78/11
- Article 40
- Observations by third parties
- 1. Following the publication of the Community trade mark
- application, any natural or legal person and any group or body
- representing manufacturers, producers, suppliers of services,
- traders or consumers may submit to the Office written
- observations, explaining on which grounds under Article 7, in
- particular, the trade mark shall not be registered ex officio. They
- shall not be parties to the proceedings before the Office.
- 5. An amount shall be paid by the Office to each central
- industrial property office for each search report provided by that
- office in accordance with paragraph 3. The amount, which shall
- be the same for each office, shall be fixed by the Budget
- Committee by means of a decision adopted by a majority of
- three-quarters of the representatives of the Member States.
- 2. The observations referred to in paragraph 1 shall be
- communicated to the applicant who may comment on them.
- 6. The Office shall transmit without delay to the applicant for
- the Community trade mark the Community search report and
- any requested national search reports received within the time
- limit laid down in paragraph 3.
- Opposition
- 7. Upon publication of the Community trade mark application,
- which may not take place before the expiry of a period of one
- month as from the date on which the Office transmits the search
- reports to the applicant, the Office shall inform the proprietors
- of any earlier Community trade marks or Community trade mark
- applications cited in the Community search report of the
- publication of the Community trade mark application.
- Article 41
- 1. Within a period of three months following the publication
- of a Community trade mark application, notice of opposition to
- registration of the trade mark may be given on the grounds that
- it may not be registered under Article 8:
- (a)
- by the proprietors of earlier trade marks referred to in
- Article 8(2) as well as licensees authorised by the
- proprietors of those trade marks, in respect of Article 8(1) and (5);
- (b)
- by the proprietors of trade marks referred to in Article 8(3);
- (c)
- by the proprietors of earlier marks or signs referred to in
- Article 8(4) and by persons authorised under the relevant
- national law to exercise these rights.
- SECTION 3
- Publication of the application
- Article 39
- Publication of the application
- 1. If the conditions which the application for a Community
- trade mark must satisfy have been fulfilled and if the period
- 2. Notice of opposition to registration of the trade mark may
- also be given, subject to the conditions laid down in paragraph 1,
- in the event of the publication of an amended application in
- accordance with the second sentence of Article 43(2).
- L 78/12
- Official Journal of the European Union
- EN
- 3. Opposition must be expressed in writing and must specify
- the grounds on which it is made. It shall not be treated as duly
- entered until the opposition fee has been paid. Within a period
- fixed by the Office, the opponent may submit in support of his
- case facts, evidence and arguments.
- Article 42
- Examination of opposition
- 1. In the examination of the opposition the Office shall invite
- the parties, as often as necessary, to file observations, within a
- period set them by the Office, on communications from the
- other parties or issued by itself.
- 24.3.2009
- contained therein. Where the application has already been
- published, the withdrawal or restriction shall also be published.
- 2. In other respects, a Community trade mark application may
- be amended, upon request of the applicant, only by correcting
- the name and address of the applicant, errors of wording or of
- copying, or obvious mistakes, provided that such correction does
- not substantially change the trade mark or extend the list of
- goods or services. Where the amendments affect the representation of the trade mark or the list of goods or services and are
- made after publication of the application, the trade mark
- application shall be published as amended.
- Article 44
- 2. If the applicant so requests, the proprietor of an earlier
- Community trade mark who has given notice of opposition shall
- furnish proof that, during the period of five years preceding the
- date of publication of the Community trade mark application,
- the earlier Community trade mark has been put to genuine use in
- the Community in connection with the goods or services in
- respect of which it is registered and which he cites as justification
- for his opposition, or that there are proper reasons for non-use,
- provided the earlier Community trade mark has at that date been
- registered for not less than five years. In the absence of proof to
- this effect, the opposition shall be rejected. If the earlier
- Community trade mark has been used in relation to part only
- of the goods or services for which it is registered it shall, for the
- purposes of the examination of the opposition, be deemed to be
- registered in respect only of that part of the goods or services.
- Division of the application
- 1. The applicant may divide the application by declaring that
- some of the goods or services included in the original application
- will be the subject of one or more divisional applications. The
- goods or services in the divisional application shall not overlap
- with the goods or services which remain in the original
- application or those which are included in other divisional
- applications.
- 2. The declaration of division shall not be admissible:
- (a)
- if, where an opposition has been entered against the
- original application, such a divisional application has the
- effect of introducing a division amongst the goods or
- services against which the opposition has been directed,
- until the decision of the Opposition Division has become
- final or the opposition proceedings are finally terminated
- otherwise;
- 4. The Office may, if it thinks fit, invite the parties to make a
- friendly settlement.
- (b)
- during the periods laid down in the Implementing
- Regulation.
- 5. If examination of the opposition reveals that the trade mark
- may not be registered in respect of some or all of the goods or
- services for which the Community trade mark application has
- been made, the application shall be refused in respect of those
- goods or services. Otherwise the opposition shall be rejected.
- 3. The declaration of division must comply with the provisions
- set out in the Implementing Regulation.
- 3. Paragraph 2 shall apply to earlier national trade marks
- referred to in Article 8(2)(a), by substituting use in the Member
- State in which the earlier national trade mark is protected for use
- in the Community.
- 6. The decision refusing the application shall be published
- upon becoming final.
- 4. The declaration of division shall be subject to a fee. The
- declaration shall be deemed not to have been made until the fee
- has been paid.
- 5. The division shall take effect on the date on which it is
- recorded in the files kept by the Office concerning the original
- application.
- SECTION 5
- Withdrawal, restriction, amendment and division of the
- application
- Article 43
- Withdrawal, restriction and amendment of the application
- 1. The applicant may at any time withdraw his Community
- trade mark application or restrict the list of goods or services
- 6. All requests and applications submitted and all fees paid
- with regard to the original application prior to the date on which
- the Office receives the declaration of division are deemed also to
- have been submitted or paid with regard to the divisional
- application or applications. The fees for the original application
- which have been duly paid prior to the date on which the
- declaration of division is received shall not be refunded.
- 7. The divisional application shall preserve the filing date and
- any priority date and seniority date of the original application.
- 24.3.2009
- Official Journal of the European Union
- EN
- L 78/13
- SECTION 6
- Article 48
- Registration
- Alteration
- Article 45
- 1. The Community trade mark shall not be altered in the
- Register during the period of registration or on renewal thereof.
- Registration
- Where an application meets the requirements of this Regulation
- and where no notice of opposition has been given within the
- period referred to in Article 41(1) or where opposition has been
- rejected by a definitive decision, the trade mark shall be
- registered as a Community trade mark, provided that the
- registration fee has been paid within the period prescribed. If the
- fee is not paid within this period the application shall be deemed
- to be withdrawn.
- 2. Nevertheless, where the Community trade mark includes the
- name and address of the proprietor, any alteration thereof not
- substantially affecting the identity of the trade mark as originally
- registered may be registered at the request of the proprietor.
- 3. The publication of the registration of the alteration shall
- contain a representation of the Community trade mark as
- altered. Third parties whose rights may be affected by the
- alteration may challenge the registration thereof within a period
- of three months following publication.
- TITLE V
- Article 49
- DURATION, RENEWAL, ALTERATION AND DIVISION OF
- COMMUNITY TRADE MARKS
- Division of the registration
- Article 46
- Duration of registration
- Community trade marks shall be registered for a period of 10
- years from the date of filing of the application. Registration may
- be renewed in accordance with Article 47 for further periods of
- 10 years.
- Article 47
- 1. The proprietor of the Community trade mark may divide the
- registration by declaring that some of the goods or services
- included in the original registration will be the subject of one or
- more divisional registrations. The goods or services in the
- divisional registration shall not overlap with the goods or
- services which remain in the original registration or those which
- are included in other divisional registrations.
- 2. The declaration of division shall not be admissible:
- (a)
- if, where an application for revocation of rights or for a
- declaration of invalidity has been entered at the Office
- against the original registration, such a divisional declaration has the effect of introducing a division amongst the
- goods or services against which the application for
- revocation of rights or for a declaration of invalidity is
- directed, until the decision of the Cancellation Division has
- become final or the proceedings are finally terminated
- otherwise;
- (b)
- if, where a counterclaim for revocation or for a declaration
- of invalidity has been entered in a case before a Community
- trade mark court, such a divisional declaration has the effect
- of introducing a division amongst the goods or services
- against which the counterclaim is directed, until the
- mention of the Community trade mark court's judgment
- is recorded in the Register pursuant to Article 100(6).
- Renewal
- 1. Registration of the Community trade mark shall be renewed
- at the request of the proprietor of the trade mark or any person
- expressly authorised by him, provided that the fees have been
- paid.
- 2. The Office shall inform the proprietor of the Community
- trade mark, and any person having a registered right in respect of
- the Community trade mark, of the expiry of the registration in
- good time before the said expiry. Failure to give such information
- shall not involve the responsibility of the Office.
- 3. The request for renewal shall be submitted within a period
- of six months ending on the last day of the month in which
- protection ends. The fees shall also be paid within this period.
- Failing this, the request may be submitted and the fees paid
- within a further period of six months following the day referred
- to in the first sentence, provided that an additional fee is paid
- within this further period.
- 4. Where the request is submitted or the fees paid in respect of
- only some of the goods or services for which the Community
- trade mark is registered, registration shall be renewed for those
- goods or services only.
- 5. Renewal shall take effect from the day following the date on
- which the existing registration expires. The renewal shall be
- registered.
- 3. The declaration of division must comply with the provisions
- set out in the Implementing Regulation.
- 4. The declaration of division shall be subject to a fee. The
- declaration shall be deemed not to have been made until the fee
- has been paid.
- 5. The division shall take effect on the date on which it is
- entered in the Register.
- 6. All requests and applications submitted and all fees paid
- with regard to the original registration prior to the date on which
- the Office receives the declaration of division shall be deemed
- L 78/14
- Official Journal of the European Union
- EN
- also to have been submitted or paid with regard to the divisional
- registration or registrations. The fees for the original registration
- which have been duly paid prior to the date on which the
- declaration of division is received shall not be refunded.
- 24.3.2009
- and filing of the application or counterclaim, genuine use of
- the trade mark has been started or resumed; the
- commencement or resumption of use within a period of
- three months preceding the filing of the application or
- counterclaim which began at the earliest on expiry of the
- continuous period of five years of non-use shall, however,
- be disregarded where preparations for the commencement
- or resumption occur only after the proprietor becomes
- aware that the application or counterclaim may be filed;
- 7. The divisional registration shall preserve the filing date and
- any priority date and seniority date of the original registration.
- (b)
- if, in consequence of acts or inactivity of the proprietor, the
- trade mark has become the common name in the trade for
- a product or service in respect of which it is registered;
- (c)
- TITLE VI
- if, in consequence of the use made of it by the proprietor of
- the trade mark or with his consent in respect of the goods
- or services for which it is registered, the trade mark is liable
- to mislead the public, particularly as to the nature, quality
- or geographical origin of those goods or services.
- SURRENDER, REVOCATION AND INVALIDITY
- SECTION 1
- Surrender
- Article 50
- Surrender
- 2. Where the grounds for revocation of rights exist in respect
- of only some of the goods or services for which the Community
- trade mark is registered, the rights of the proprietor shall be
- declared to be revoked in respect of those goods or services only.
- 1. A Community trade mark may be surrendered in respect of
- some or all of the goods or services for which it is registered.
- 2. The surrender shall be declared to the Office in writing by
- the proprietor of the trade mark. It shall not have effect until it
- has been entered in the Register.
- 3. Surrender shall be entered only with the agreement of the
- proprietor of a right entered in the Register. If a licence has been
- registered, surrender shall be entered in the Register only if the
- proprietor of the trade mark proves that he has informed the
- licensee of his intention to surrender; this entry shall be made on
- expiry of the period prescribed by the Implementing Regulation.
- SECTION 3
- Grounds for invalidity
- Article 52
- Absolute grounds for invalidity
- 1. A Community trade mark shall be declared invalid on
- application to the Office or on the basis of a counterclaim in
- infringement proceedings:
- SECTION 2
- Grounds for revocation
- Article 51
- (a)
- where the Community trade mark has been registered
- contrary to the provisions of Article 7;
- (b)
- where the applicant was acting in bad faith when he filed
- the application for the trade mark.
- Grounds for revocation
- 1. The rights of the proprietor of the Community trade mark
- shall be declared to be revoked on application to the Office or on
- the basis of a counterclaim in infringement proceedings:
- (a)
- if, within a continuous period of five years, the trade mark
- has not been put to genuine use in the Community in
- connection with the goods or services in respect of which it
- is registered, and there are no proper reasons for non-use;
- however, no person may claim that the proprietor's rights
- in a Community trade mark should be revoked where,
- during the interval between expiry of the five-year period
- 2. Where the Community trade mark has been registered in
- breach of the provisions of Article 7(1)(b), (c) or (d), it may
- nevertheless not be declared invalid if, in consequence of the use
- which has been made of it, it has after registration acquired a
- distinctive character in relation to the goods or services for which
- it is registered.
- 3. Where the ground for invalidity exists in respect of only
- some of the goods or services for which the Community trade
- mark is registered, the trade mark shall be declared invalid as
- regards those goods or services only.
- 24.3.2009
- Official Journal of the European Union
- EN
- Article 53
- Relative grounds for invalidity
- 1. A Community trade mark shall be declared invalid on
- application to the Office or on the basis of a counterclaim in
- infringement proceedings:
- (a)
- where there is an earlier trade mark as referred to in
- Article 8(2) and the conditions set out in paragraph 1 or
- paragraph 5 of that Article are fulfilled;
- (b)
- where there is a trade mark as referred to in Article 8(3) and
- the conditions set out in that paragraph are fulfilled;
- (c)
- where there is an earlier right as referred to in Article 8(4)
- and the conditions set out in that paragraph are fulfilled.
- 2. A Community trade mark shall also be declared invalid on
- application to the Office or on the basis of a counterclaim in
- infringement proceedings where the use of such trade mark may
- be prohibited pursuant to another earlier right under the
- Community legislation or national law governing its protection,
- and in particular:
- L 78/15
- mark has been used, unless registration of the later Community
- trade mark was applied for in bad faith.
- 2. Where the proprietor of an earlier national trade mark as
- referred to in Article 8(2) or of another earlier sign referred to in
- Article 8(4) has acquiesced, for a period of five successive years,
- in the use of a later Community trade mark in the Member State
- in which the earlier trade mark or the other earlier sign is
- protected while being aware of such use, he shall no longer be
- entitled on the basis of the earlier trade mark or of the other
- earlier sign either to apply for a declaration that the later trade
- mark is invalid or to oppose the use of the later trade mark in
- respect of the goods or services for which the later trade mark
- has been used, unless registration of the later Community trade
- mark was applied for in bad faith.
- 3. In the cases referred to in paragraphs 1 and 2, the proprietor
- of a later Community trade mark shall not be entitled to oppose
- the use of the earlier right, even though that right may no longer
- be invoked against the later Community trade mark.
- SECTION 4
- (a)
- a right to a name;
- (b)
- a right of personal portrayal;
- (c)
- a copyright;
- Consequences of revocation and invalidity
- Article 55
- Consequences of revocation and invalidity
- (d)
- an industrial property right.
- 3. A Community trade mark may not be declared invalid where
- the proprietor of a right referred to in paragraphs 1 or 2 consents
- expressly to the registration of the Community trade mark before
- submission of the application for a declaration of invalidity or
- the counterclaim.
- 4. Where the proprietor of one of the rights referred to in
- paragraphs 1 or 2 has previously applied for a declaration that a
- Community trade mark is invalid or made a counterclaim in
- infringement proceedings, he may not submit a new application
- for a declaration of invalidity or lodge a counterclaim on the
- basis of another of the said rights which he could have invoked
- in support of his first application or counterclaim.
- 5. Article 52(3) shall apply.
- Article 54
- 1. The Community trade mark shall be deemed not to have
- had, as from the date of the application for revocation or of the
- counterclaim, the effects specified in this Regulation, to the
- extent that the rights of the proprietor have been revoked. An
- earlier date, on which one of the grounds for revocation
- occurred, may be fixed in the decision at the request of one of the
- parties.
- 2. The Community trade mark shall be deemed not to have
- had, as from the outset, the effects specified in this Regulation, to
- the extent that the trade mark has been declared invalid.
- 3. Subject to the national provisions relating either to claims
- for compensation for damage caused by negligence or lack of
- good faith on the part of the proprietor of the trade mark, or to
- unjust enrichment, the retroactive effect of revocation or
- invalidity of the trade mark shall not affect:
- (a)
- any decision on infringement which has acquired the
- authority of a final decision and been enforced prior to the
- revocation or invalidity decision;
- (b)
- any contract concluded prior to the revocation or invalidity
- decision, in so far as it has been performed before that
- decision; however, repayment, to an extent justified by the
- circumstances, of sums paid under the relevant contract,
- may be claimed on grounds of equity.
- Limitation in consequence of acquiescence
- 1. Where the proprietor of a Community trade mark has
- acquiesced, for a period of five successive years, in the use of a
- later Community trade mark in the Community while being
- aware of such use, he shall no longer be entitled on the basis of
- the earlier trade mark either to apply for a declaration that the
- later trade mark is invalid or to oppose the use of the later trade
- mark in respect of the goods or services for which the later trade
- L 78/16
- Official Journal of the European Union
- EN
- SECTION 5
- Proceedings in the Office in relation to revocation or invalidity
- Article 56
- 24.3.2009
- at that date. In the absence of proof to this effect the application
- for a declaration of invalidity shall be rejected. If the earlier
- Community trade mark has been used in relation to part only of
- the goods or services for which it is registered, it shall, for the
- purpose of the examination of the application for a declaration
- of invalidity, be deemed to be registered in respect only of that
- part of the goods or services.
- Application for revocation or for a declaration of invalidity
- 1. An application for revocation of the rights of the proprietor
- of a Community trade mark or for a declaration that the trade
- mark is invalid may be submitted to the Office:
- (a)
- where Articles 51 and 52 apply, by any natural or legal
- person and any group or body set up for the purpose of
- representing the interests of manufacturers, producers,
- suppliers of services, traders or consumers, which under the
- terms of the law governing it has the capacity in its own
- name to sue and be sued;
- (b)
- where Article 53(1) applies, by the persons referred to in
- Article 41(1);
- (c)
- where Article 53(2) applies, by the owners of the earlier
- rights referred to in that provision or by the persons who
- are entitled under the law of the Member State concerned
- to exercise the rights in question.
- 2. The application shall be filed in a written reasoned
- statement. It shall not be deemed to have been filed until the
- fee has been paid.
- 3. An application for revocation or for a declaration of
- invalidity shall be inadmissible if an application relating to the
- same subject matter and cause of action, and involving the same
- parties, has been adjudicated on by a court in a Member State
- and has acquired the authority of a final decision.
- Article 57
- Examination of the application
- 1. On the examination of the application for revocation of
- rights or for a declaration of invalidity, the Office shall invite the
- parties, as often as necessary, to file observations, within a period
- to be fixed by the Office, on communications from the other
- parties or issued by itself.
- 2. If the proprietor of the Community trade mark so requests,
- the proprietor of an earlier Community trade mark, being a party
- to the invalidity proceedings, shall furnish proof that, during the
- period of five years preceding the date of the application for a
- declaration of invalidity, the earlier Community trade mark has
- been put to genuine use in the Community in connection with
- the goods or services in respect of which it is registered and
- which he cites as justification for his application, or that there are
- proper reasons for non-use, provided the earlier Community
- trade mark has at that date been registered for not less than five
- years. If, at the date on which the Community trade mark
- application was published, the earlier Community trade mark
- had been registered for not less than five years, the proprietor of
- the earlier Community trade mark shall furnish proof that, in
- addition, the conditions contained in Article 42(2) were satisfied
- 3. Paragraph 2 shall apply to earlier national trade marks
- referred to in Article 8(2)(a), by substituting use in the Member
- State in which the earlier national trade mark is protected for use
- in the Community.
- 4. The Office may, if it thinks fit, invite the parties to make a
- friendly settlement.
- 5. If the examination of the application for revocation of rights
- or for a declaration of invalidity reveals that the trade mark
- should not have been registered in respect of some or all of the
- goods or services for which it is registered, the rights of the
- proprietor of the Community trade mark shall be revoked or it
- shall be declared invalid in respect of those goods or services.
- Otherwise the application for revocation of rights or for a
- declaration of invalidity shall be rejected.
- 6. A record of the Office's decision on the application for
- revocation of rights or for a declaration of invalidity shall be
- entered in the Register once it has become final.
- TITLE VII
- APPEALS
- Article 58
- Decisions subject to appeal
- 1. An appeal shall lie from decisions of the examiners,
- Opposition Divisions, Administration of Trade Marks and Legal
- Divisions and Cancellation Divisions. It shall have suspensive
- effect.
- 2. A decision which does not terminate proceedings as regards
- one of the parties can only be appealed together with the final
- decision, unless the decision allows separate appeal.
- Article 59
- Persons entitled to appeal and to be parties to appeal
- proceedings
- Any party to proceedings adversely affected by a decision may
- appeal. Any other parties to the proceedings shall be parties to
- the appeal proceedings as of right.
- Article 60
- Time limit and form of appeal
- Notice of appeal must be filed in writing at the Office within two
- months after the date of notification of the decision appealed
- 24.3.2009
- Official Journal of the European Union
- EN
- from. The notice shall be deemed to have been filed only when
- the fee for appeal has been paid. Within four months after the
- date of notification of the decision, a written statement setting
- out the grounds of appeal must be filed.
- L 78/17
- Article 64
- Decisions in respect of appeals
- Revision of decisions in ex parte cases
- 1. Following the examination as to the allowability of the
- appeal, the Board of Appeal shall decide on the appeal. The
- Board of Appeal may either exercise any power within the
- competence of the department which was responsible for the
- decision appealed or remit the case to that department for
- further prosecution.
- 1. If the party which has lodged the appeal is the sole party to
- the procedure, and if the department whose decision is contested
- considers the appeal to be admissible and well founded, the
- department shall rectify its decision.
- 2. If the Board of Appeal remits the case for further
- prosecution to the department whose decision was appealed,
- that department shall be bound by the ratio decidendi of the Board
- of Appeal, in so far as the facts are the same.
- 2. If the decision is not rectified within one month after receipt
- of the statement of grounds, the appeal shall be remitted to the
- Board of Appeal without delay, and without comment as to its
- merit.
- 3. The decisions of the Boards of Appeal shall take effect only
- as from the date of expiration of the period referred to in
- Article 65(5) or, if an action has been brought before the Court
- of Justice within that period, as from the date of dismissal of such
- action.
- Article 62
- Article 65
- Revision of decisions in inter partes cases
- Actions before the Court of Justice
- Article 61
- 1. Where the party which has lodged the appeal is opposed by
- another party and if the department whose decision is contested
- considers the appeal to be admissible and well founded, it shall
- rectify its decision.
- 2. The decision may be rectified only if the department whose
- decision is contested notifies the other party of its intention to
- rectify it, and that party accepts it within two months of the date
- on which it received the notification.
- 3. If, within two months of receiving the notification referred
- to in paragraph 2, the other party does not accept that the
- contested decision is to be rectified and makes a declaration to
- that effect or does not make any declaration within the period
- laid down, the appeal shall be remitted to the Board of Appeal
- without delay, and without comment as to its merit.
- 4. However, if the department whose decision is contested does
- not consider the appeal to be admissible and well founded within
- one month after receipt of the statement of grounds, it shall,
- instead of taking the measures provided for in paragraphs 2 and
- 3, remit the appeal to the Board of Appeal without delay, and
- without comment as to its merit.
- 1. Actions may be brought before the Court of Justice against
- decisions of the Boards of Appeal on appeals.
- 2. The action may be brought on grounds of lack of
- competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any
- rule of law relating to their application or misuse of power.
- 3. The Court of Justice has jurisdiction to annul or to alter the
- contested decision.
- 4. The action shall be open to any party to proceedings before
- the Board of Appeal adversely affected by its decision.
- 5. The action shall be brought before the Court of Justice
- within two months of the date of notification of the decision of
- the Board of Appeal.
- 6. The Office shall be required to take the necessary measures
- to comply with the judgment of the Court of Justice.
- TITLE VIII
- COMMUNITY COLLECTIVE MARKS
- Article 63
- Article 66
- Examination of appeals
- Community collective marks
- 1. If the appeal is admissible, the Board of Appeal shall
- examine whether the appeal is allowable.
- 1. A Community collective mark shall be a Community trade
- mark which is described as such when the mark is applied for
- and is capable of distinguishing the goods or services of the
- members of the association which is the proprietor of the mark
- from those of other undertakings. Associations of manufacturers,
- producers, suppliers of services, or traders which, under the
- terms of the law governing them, have the capacity in their own
- name to have rights and obligations of all kinds, to make
- 2. In the examination of the appeal, the Board of Appeal shall
- invite the parties, as often as necessary, to file observations,
- within a period to be fixed by the Board of Appeal, on
- communications from the other parties or issued by itself.
- L 78/18
- Official Journal of the European Union
- EN
- Article 70
- contracts or accomplish other legal acts and to sue and be sued,
- as well as legal persons governed by public law, may apply for
- Community collective marks.
- 2. In derogation from Article 7(1)(c), signs or indications
- which may serve, in trade, to designate the geographical origin of
- the goods or services may constitute Community collective
- marks within the meaning of paragraph 1. A collective mark
- shall not entitle the proprietor to prohibit a third party from
- using in the course of trade such signs or indications, provided
- he uses them in accordance with honest practices in industrial or
- commercial matters; in particular, such a mark may not be
- invoked against a third party who is entitled to use a
- geographical name.
- 3. The provisions of this Regulation shall apply to Community
- collective marks, unless Articles 67 to 74 provide otherwise.
- Article 67
- Regulations governing use of the mark
- 1. An applicant for a Community collective mark must submit
- regulations governing its use within the period prescribed.
- 2. The regulations governing use shall specify the persons
- authorised to use the mark, the conditions of membership of the
- association and, where they exist, the conditions of use of the
- mark, including sanctions. The regulations governing use of a
- mark referred to in Article 66(2) must authorise any person
- whose goods or services originate in the geographical area
- concerned to become a member of the association which is the
- proprietor of the mark.
- Article 68
- Refusal of the application
- 1. In addition to the grounds for refusal of a Community trade
- mark application provided for in Articles 36 and 37, an
- application for a Community collective mark shall be refused
- where the provisions of Articles 66 or 67 are not satisfied, or
- where the regulations governing use are contrary to public policy
- or to accepted principles of morality.
- 2. An application for a Community collective mark shall also
- be refused if the public is liable to be misled as regards the
- character or the significance of the mark, in particular if it is
- likely to be taken to be something other than a collective mark.
- 24.3.2009
- Use of marks
- Use of a Community collective mark by any person who has
- authority to use it shall satisfy the requirements of this
- Regulation, provided that the other conditions which this
- Regulation imposes with regard to the use of Community trade
- marks are fulfilled.
- Article 71
- Amendment of the regulations governing use of the mark
- 1. The proprietor of a Community collective mark must
- submit to the Office any amended regulations governing use.
- 2. The amendment shall not be mentioned in the Register if the
- amended regulations do not satisfy the requirements of Article 67
- or involve one of the grounds for refusal referred to in
- Article 68.
- 3. Article 69 shall apply to amended regulations governing use.
- 4. For the purposes of applying this Regulation, amendments
- to the regulations governing use shall take effect only from the
- date of entry of the mention of the amendment in the Register.
- Article 72
- Persons who are entitled to bring an action for
- infringement
- 1. The provisions of Article 22(3) and (4) concerning the rights
- of licensees shall apply to every person who has authority to use
- a Community collective mark.
- 2. The proprietor of a Community collective mark shall be
- entitled to claim compensation on behalf of persons who have
- authority to use the mark where they have sustained damage in
- consequence of unauthorised use of the mark.
- Article 73
- Grounds for revocation
- Apart from the grounds for revocation provided for in Article 51,
- the rights of the proprietor of a Community collective mark shall
- be revoked on application to the Office or on the basis of a
- counterclaim in infringement proceedings, if:
- (a)
- the proprietor does not take reasonable steps to prevent the
- mark being used in a manner incompatible with the
- conditions of use, where these exist, laid down in the
- regulations governing use, amendments to which have,
- where appropriate, been mentioned in the Register;
- (b)
- the manner in which the mark has been used by the
- proprietor has caused it to become liable to mislead the
- public in the manner referred to in Article 68(2);
- (c)
- an amendment to the regulations governing use of the
- mark has been mentioned in the Register in breach of the
- provisions of Article 71(2), unless the proprietor of the
- mark, by further amending the regulations governing use,
- complies with the requirements of those provisions.
- 3. An application shall not be refused if the applicant, as a
- result of amendment of the regulations governing use, meets the
- requirements of paragraphs 1 and 2.
- Article 69
- Observations by third parties
- Apart from the cases mentioned in Article 40, any person, group
- or body referred to in that Article may submit to the Office
- written observations based on the particular grounds on which
- the application for a Community collective mark should be
- refused under the terms of Article 68.
- 24.3.2009
- Official Journal of the European Union
- EN
- L 78/19
- Article 74
- Article 78
- Grounds for invalidity
- Taking of evidence
- Apart from the grounds for invalidity provided for in Articles 52
- and 53, a Community collective mark which is registered in
- breach of the provisions of Article 68 shall be declared invalid on
- application to the Office or on the basis of a counterclaim in
- infringement proceedings, unless the proprietor of the mark, by
- amending the regulations governing use, complies with the
- requirements of those provisions.
- 1. In any proceedings before the Office, the means of giving or
- obtaining evidence shall include the following:
- (a)
- hearing the parties;
- (b)
- requests for information;
- (c)
- the production of documents and items of evidence;
- (d)
- hearing witnesses;
- (e)
- opinions by experts;
- (f)
- statements in writing sworn or affirmed or having a similar
- effect under the law of the State in which the statement is
- drawn up.
- TITLE IX
- PROCEDURE
- SECTION 1
- General provisions
- Article 75
- Statement of reasons on which decisions are based
- 2. The relevant department may commission one of its
- members to examine the evidence adduced.
- Decisions of the Office shall state the reasons on which they are
- based. They shall be based only on reasons or evidence on which
- the parties concerned have had on opportunity to present their
- comments.
- 3. If the Office considers it necessary for a party, witness or
- expert to give evidence orally, it shall issue a summons to the
- person concerned to appear before it.
- Article 76
- 4. The parties shall be informed of the hearing of a witness or
- expert before the Office. They shall have the right to be present
- and to put questions to the witness or expert.
- Examination of the facts by the Office of its own motion
- 1. In proceedings before it the Office shall examine the facts of
- its own motion; however, in proceedings relating to relative
- grounds for refusal of registration, the Office shall be restricted in
- this examination to the facts, evidence and arguments provided
- by the parties and the relief sought.
- 2. The Office may disregard facts or evidence which are not
- submitted in due time by the parties concerned.
- Article 79
- Notification
- The Office shall, as a matter of course, notify those concerned of
- decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those
- concerned must be notified under other provisions of this
- Regulation or of the Implementing Regulation, or of which
- notification has been ordered by the President of the Office.
- Article 77
- Oral proceedings
- Article 80
- 1. If the Office considers that oral proceedings would be
- expedient they shall be held either at the instance of the Office or
- at the request of any party to the proceedings.
- Revocation of decisions
- 2. Oral proceedings before the examiners, the Opposition
- Division and the Administration of Trade Marks and Legal
- Division shall not be public.
- 3. Oral proceedings, including delivery of the decision, shall be
- public before the Cancellation Division and the Boards of
- Appeal, in so far as the department before which the proceedings
- are taking place does not decide otherwise in cases where
- admission of the public could have serious and unjustified
- disadvantages, in particular for a party to the proceedings.
- 1. Where the Office has made an entry in the Register or taken
- a decision which contains an obvious procedural error
- attributable to the Office, it shall ensure that the entry is
- cancelled or the decision is revoked. Where there is only one
- party to the proceedings and the entry or the act affects its rights,
- cancellation or revocation shall be determined even if the error
- was not evident to the party.
- 2. Cancellation or revocation as referred to in paragraph 1 shall
- be determined, ex officio or at the request of one of the parties to
- the proceedings, by the department which made the entry or
- took the decision. Cancellation or revocation shall be determined
- L 78/20
- Official Journal of the European Union
- EN
- within six months from the date on which the entry was made in
- the Register or the decision was taken, after consultation with the
- parties to the proceedings and any proprietor of rights to the
- Community trade mark in question that are entered in the
- Register.
- 3. This Article shall be without prejudice to the right of the
- parties to submit an appeal under Articles 58 and 65, or to the
- possibility, under the procedures and conditions laid down by
- the Implementing Regulation, of correcting any linguistic errors
- or errors of transcription and obvious errors in the Office's
- decisions or errors attributable to the Office in registering the
- trade mark or in publishing its registration.
- Article 81
- Restitutio in integrum
- 1. The applicant for or proprietor of a Community trade mark
- or any other party to proceedings before the Office who, in spite
- of all due care required by the circumstances having been taken,
- was unable to comply with a time limit vis-à-vis the Office shall,
- upon application, have his rights re-established if the obstacle to
- compliance has the direct consequence, by virtue of the
- provisions of this Regulation, of causing the loss of any right
- or means of redress.
- 2. The application must be filed in writing within two months
- from the removal of the obstacle to compliance with the time
- limit. The omitted act must be completed within this period. The
- application shall only be admissible within the year immediately
- following the expiry of the unobserved time limit. In the case of
- non-submission of the request for renewal of registration or of
- non-payment of a renewal fee, the further period of six months
- provided in Article 47(3), third sentence, shall be deducted from
- the period of one year.
- 3. The application must state the grounds on which it is based
- and must set out the facts on which it relies. It shall not be
- deemed to be filed until the fee for re-establishment of rights has
- been paid.
- 4. The department competent to decide on the omitted act
- shall decide upon the application.
- 5. This Article shall not be applicable to the time limits referred
- to in paragraph 2 of this Article, Article 41(1) and (3) and
- Article 82.
- 6. Where the applicant for or proprietor of a Community trade
- mark has his rights re-established, he may not invoke his rights
- vis-à-vis a third party who, in good faith, has put goods on the
- market or supplied services under a sign which is identical with,
- or similar to, the Community trade mark in the course of the
- period between the loss of rights in the application or in the
- Community trade mark and publication of the mention of reestablishment of those rights.
- 7. A third party who may avail himself of the provisions of
- paragraph 6 may bring third party proceedings against the
- decision re-establishing the rights of the applicant for or
- proprietor of a Community trade mark within a period of two
- 24.3.2009
- months as from the date of publication of the mention of reestablishment of those rights.
- 8. Nothing in this Article shall limit the right of a Member
- State to grant restitutio in integrum in respect of time limits
- provided for in this Regulation and to be observed vis-à-vis the
- authorities of such State.
- Article 82
- Continuation of proceedings
- 1. An applicant for or proprietor of a Community trade mark
- or any other party to proceedings before the Office who has
- omitted to observe a time limit vis-à-vis the Office may, upon
- request, obtain the continuation of proceedings, provided that at
- the time the request is made the omitted act has been carried out.
- The request for continuation of proceedings shall be admissible
- only if it is presented within two months following the expiry of
- the unobserved time limit. The request shall not be deemed to
- have been filed until the fee for continuation of the proceedings
- has been paid.
- 2. This Article shall not be applicable to the time limits laid
- down in Article 25(3), Article 27, Article 29(1), Article 33(1),
- Article 36(2), Article 41, Article 42, Article 47(3), Article 60,
- Article 62, Article 65(5), Article 81, Article 112, or to the time
- limits laid down in this Article or the time limits laid down by
- the Implementing Regulation for claiming, after the application
- has been filed, priority within the meaning of Article 30,
- exhibition priority within the meaning of Article 33 or seniority
- within the meaning of Article 34.
- 3. The department competent to decide on the omitted act
- shall decide upon the application.
- 4. If the Office accepts the application, the consequences of
- having failed to observe the time limit shall be deemed not to
- have occurred.
- 5. If the Office rejects the application, the fee shall be refunded.
- Article 83
- Reference to general principles
- In the absence of procedural provisions in this Regulation, the
- Implementing Regulation, the fees regulations or the rules of
- procedure of the Boards of Appeal, the Office shall take into
- account the principles of procedural law generally recognised in
- the Member States.
- Article 84
- Termination of financial obligations
- 1. Rights of the Office to the payment of a fee shall be
- extinguished after four years from the end of the calendar year in
- which the fee fell due.
- 2. Rights against the Office for the refunding of fees or sums of
- money paid in excess of a fee shall be extinguished after four
- years from the end of the calendar year in which the right arose.
- 24.3.2009
- Official Journal of the European Union
- EN
- 3. The period laid down in paragraphs 1 and 2 shall be
- interrupted, in the case covered by paragraph 1, by a request for
- payment of the fee, and in the case covered by paragraph 2, by a
- reasoned claim in writing. On interruption it shall begin again
- immediately and shall end at the latest six years after the end of
- the year in which it originally began, unless, in the meantime,
- judicial proceedings to enforce the right have begun; in this case
- the period shall end at the earliest one year after the judgment
- has acquired the authority of a final decision.
- SECTION 2
- Costs
- Article 85
- Costs
- 1. The losing party in opposition proceedings, proceedings for
- revocation, proceedings for a declaration of invalidity or appeal
- proceedings shall bear the fees incurred by the other party as
- well as all costs, without prejudice to Article 119(6), incurred by
- him essential to the proceedings, including travel and subsistence
- and the remuneration of an agent, adviser or advocate, within the
- limits of the scales set for each category of costs under the
- conditions laid down in the Implementing Regulation.
- L 78/21
- Article 86
- Enforcement of decisions fixing the amount of costs
- 1. Any final decision of the Office fixing the amount of costs
- shall be enforceable.
- 2. Enforcement shall be governed by the rules of civil
- procedure in force in the State in the territory of which it is
- carried out. The order for its enforcement shall be appended to
- the decision, without other formality than verification of the
- authenticity of the decision, by the national authority which the
- Government of each Member State shall designate for this
- purpose and shall make known to the Office and to the Court of
- Justice.
- 3. When these formalities have been completed on application
- by the party concerned, the latter may proceed to enforcement in
- accordance with the national law, by bringing the matter directly
- before the competent authority.
- 4. Enforcement may be suspended only by a decision of the
- Court of Justice. However, the courts of the country concerned
- shall have jurisdiction over complaints that enforcement is being
- carried out in an irregular manner.
- SECTION 3
- 2. However, where each party succeeds on some and fails on
- other heads, or if reasons of equity so dictate, the Opposition
- Division, Cancellation Division or Board of Appeal shall decide a
- different apportionment of costs.
- Information which may be made available to the public and of
- the authorities of the Member States
- 3. The party who terminates the proceedings by withdrawing
- the Community trade mark application, the opposition, the
- application for revocation of rights, the application for a
- declaration of invalidity or the appeal, or by not renewing
- registration of the Community trade mark or by surrendering the
- Community trade mark, shall bear the fees and the costs incurred
- by the other party as stipulated in paragraphs 1 and 2.
- Register of Community trade marks
- 4. Where a case does not proceed to judgment the costs shall
- be at the discretion of the Opposition Division, Cancellation
- Division or Board of Appeal.
- 5. Where the parties conclude before the Opposition Division,
- Cancellation Division or Board of Appeal a settlement of costs
- differing from that provided for in the preceding paragraphs, the
- department concerned shall take note of that agreement.
- 6. The Opposition Division or Cancellation Division or Board
- of Appeal shall fix the amount of the costs to be paid pursuant to
- the preceding paragraphs when the costs to be paid are limited to
- the fees paid to the Office and the representation costs. In all
- other cases, the registry of the Board of Appeal or a member of
- the staff of the Opposition Division or Cancellation Division
- shall fix the amount of the costs to be reimbursed on request.
- The request is admissible only within two months of the date on
- which the decision for which an application was made for the
- costs to be fixed became final. The amount so determined may
- be reviewed by a decision of the Opposition Division or
- Cancellation Division or Board of Appeal on a request filed
- within the prescribed period.
- Article 87
- The Office shall keep a register to be known as the Register of
- Community trade marks, which shall contain those particulars
- the registration or inclusion of which is provided for by this
- Regulation or by the Implementing Regulation. The Register shall
- be open to public inspection.
- Article 88
- Inspection of files
- 1. The files relating to Community trade mark applications
- which have not yet been published shall not be made available
- for inspection without the consent of the applicant.
- 2. Any person who can prove that the applicant for a
- Community trade mark has stated that after the trade mark
- has been registered he will invoke the rights under it against him
- may obtain inspection of the files prior to the publication of that
- application and without the consent of the applicant.
- 3. Subsequent to the publication of the Community trade mark
- application, the files relating to such application and the resulting
- trade mark may be inspected on request.
- 4. However, where the files are inspected pursuant to
- paragraphs 2 or 3, certain documents in the file may be
- withheld from inspection in accordance with the provisions of
- the Implementing Regulation.
- L 78/22
- Official Journal of the European Union
- EN
- Article 89
- Periodical publications
- The Office shall periodically publish:
- (a)
- (b)
- a Community Trade Marks Bulletin containing entries made
- in the Register of Community trade marks as well as other
- particulars the publication of which is prescribed by this
- Regulation or by the Implementing Regulation;
- Office by an employee. An employee of a legal person to which
- this paragraph applies may also represent other legal persons
- which have economic connections with the first legal person,
- even if those other legal persons have neither their domicile nor
- their principal place of business nor a real and effective industrial
- or commercial establishment within the Community.
- 4. The Implementing Regulation shall specify whether and
- under what conditions an employee must file with the Office a
- signed authorisation for insertion on the file.
- an Official Journal containing notices and information of a
- general character issued by the President of the Office, as
- well as any other information relevant to this Regulation or
- its implementation.
- Article 90
- 24.3.2009
- Article 93
- Professional representatives
- 1. Representation of natural or legal persons before the Office
- may only be undertaken by:
- Administrative cooperation
- Unless otherwise provided in this Regulation or in national laws,
- the Office and the courts or authorities of the Member States
- shall on request give assistance to each other by communicating
- information or opening files for inspection. Where the Office
- lays files open to inspection by courts, Public Prosecutors' Offices
- or central industrial property offices, the inspection shall not be
- subject to the restrictions laid down in Article 88.
- (a)
- any legal practitioner qualified in one of the Member States
- and having his place of business within the Community, to
- the extent that he is entitled, within the said State, to act as
- a representative in trade mark matters;
- (b)
- professional representatives whose names appear on the list
- maintained for this purpose by the Office. The Implementing Regulation shall specify whether and under what
- conditions the representatives before the Office must file
- with the Office a signed authorisation for insertion on the
- file.
- Article 91
- Exchange of publications
- 1. The Office and the central industrial property offices of the
- Member States shall despatch to each other on request and for
- their own use one or more copies of their respective publications
- free of charge.
- 2. The Office may conclude agreements relating to the
- exchange or supply of publications.
- Representatives acting before the Office must file with it a signed
- authorisation for insertion on the files, the details of which are
- set out in the Implementing Regulation.
- 2. Any natural person who fulfils the following conditions may
- be entered on the list of professional representatives:
- (a)
- he must be a national of one of the Member States;
- (b)
- he must have his place of business or employment in the
- Community;
- (c)
- he must be entitled to represent natural or legal persons in
- trade mark matters before the central industrial property
- office of a Member State. Where, in that State, the
- entitlement is not conditional upon the requirement of
- special professional qualifications, persons applying to be
- entered on the list who act in trade mark matters before the
- central industrial property office of the said State must have
- habitually so acted for at least five years. However, persons
- whose professional qualification to represent natural or
- legal persons in trade mark matters before the central
- industrial property office of one of the Member States is
- officially recognised in accordance with the regulations laid
- down by such State shall not be subject to the condition of
- having exercised the profession.
- SECTION 4
- Representation
- Article 92
- General principles of representation
- 1. Subject to the provisions of paragraph 2, no person shall be
- compelled to be represented before the Office.
- 2. Without prejudice to paragraph 3, second sentence, natural
- or legal persons not having either their domicile or their
- principal place of business or a real and effective industrial or
- commercial establishment in the Community must be represented before the Office in accordance with Article 93(1) in all
- proceedings established by this Regulation, other than in filing
- an application for a Community trade mark; the Implementing
- Regulation may permit other exceptions.
- 3. Natural or legal persons having their domicile or principal
- place of business or a real and effective industrial or commercial
- establishment in the Community may be represented before the
- 3. Entry shall be effected upon request, accompanied by a
- certificate furnished by the central industrial property office of
- the Member State concerned, which must indicate that the
- conditions laid down in paragraph 2 are fulfilled.
- 24.3.2009
- Official Journal of the European Union
- EN
- 4. The President of the Office may grant exemption from:
- (a)
- (b)
- the requirement of paragraph 2(c), second sentence, if the
- applicant furnishes proof that he has acquired the requisite
- qualification in another way;
- the requirement of paragraph 2(a) in special circumstances.
- 5. The conditions under which a person may be removed from
- the list of professional representatives shall be laid down in the
- Implementing Regulation.
- L 78/23
- first and second instance, hereinafter referred to as ‘Community
- trade mark courts’, which shall perform the functions assigned to
- them by this Regulation.
- 2. Each Member State shall communicate to the Commission
- within three years of the entry into force of Regulation (EC)
- No 40/94 a list of Community trade mark courts indicating their
- names and their territorial jurisdiction.
- 3. Any change made after communication of the list referred to
- in paragraph 2 in the number, names or territorial jurisdiction of
- the courts shall be notified without delay by the Member State
- concerned to the Commission.
- TITLE X
- JURISDICTION AND PROCEDURE IN LEGAL ACTIONS
- RELATING TO COMMUNITY TRADE MARKS
- SECTION 1
- Application of Regulation (EC) No 44/2001
- Article 94
- Application of Regulation (EC) No 44/2001
- 1. Unless otherwise specified in this Regulation, Regulation
- (EC) No 44/2001 shall apply to proceedings relating to
- Community trade marks and applications for Community trade
- marks, as well as to proceedings relating to simultaneous and
- successive actions on the basis of Community trade marks and
- national trade marks.
- 2. In the case of proceedings in respect of the actions and
- claims referred to in Article 96:
- 4. The information referred to in paragraphs 2 and 3 shall be
- notified by the Commission to the Member States and published
- in the Official Journal of the European Union.
- 5. As long as a Member State has not communicated the list as
- stipulated in paragraph 2, jurisdiction for any proceedings
- resulting from an action or application covered by Article 96,
- and for which the courts of that State have jurisdiction under
- Article 97, shall lie with that court of the State in question which
- would have jurisdiction ratione loci and ratione materiae in the case
- of proceedings relating to a national trade mark registered in that
- State.
- Article 96
- Jurisdiction over infringement and validity
- The Community trade mark courts shall have exclusive
- jurisdiction:
- Articles 23 and 24 of Regulation (EC) No 44/2001 shall
- apply subject to the limitations in Article 97(4) of this
- Regulation;
- (c)
- the provisions of Chapter II of Regulation (EC) No 44/2001
- which are applicable to persons domiciled in a Member
- State shall also be applicable to persons who do not have a
- domicile in any Member State but have an establishment
- therein.
- (b)
- for actions for declaration of non-infringement, if they are
- permitted under national law;
- for all actions brought as a result of acts referred to in
- Article 9(3), second sentence;
- (d)
- for counterclaims for revocation or for a declaration of
- invalidity of the Community trade mark pursuant to
- Article 100.
- Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and
- Article 31 of Regulation (EC) No 44/2001 shall not apply;
- (b)
- for all infringement actions and — if they are permitted
- under national law — actions in respect of threatened
- infringement relating to Community trade marks;
- (c)
- (a)
- (a)
- SECTION 2
- Disputes concerning the infringement and validity of
- Community trade marks
- Article 95
- Community trade mark courts
- 1. The Member States shall designate in their territories as
- limited a number as possible of national courts and tribunals of
- Article 97
- International jurisdiction
- 1. Subject to the provisions of this Regulation as well as to any
- provisions of Regulation (EC) No 44/2001 applicable by virtue
- of Article 94, proceedings in respect of the actions and claims
- referred to in Article 96 shall be brought in the courts of the
- Member State in which the defendant is domiciled or, if he is not
- domiciled in any of the Member States, in which he has an
- establishment.
- L 78/24
- Official Journal of the European Union
- EN
- 24.3.2009
- 2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be
- brought in the courts of the Member State in which the plaintiff
- is domiciled or, if he is not domiciled in any of the Member
- States, in which he has an establishment.
- admissible in so far as the defendant claims that the rights of the
- proprietor of the Community trade mark could be revoked for
- lack of use or that the Community trade mark could be declared
- invalid on account of an earlier right of the defendant.
- 3. If neither the defendant nor the plaintiff is so domiciled or
- has such an establishment, such proceedings shall be brought in
- the courts of the Member State where the Office has its seat.
- Article 100
- 4. Notwithstanding the provisions of paragraphs 1, 2 and 3:
- (a)
- (b)
- Article 23 of Regulation (EC) No 44/2001 shall apply if the
- parties agree that a different Community trade mark court
- shall have jurisdiction;
- Article 24 of Regulation (EC) No 44/2001 shall apply if the
- defendant enters an appearance before a different Community trade mark court.
- 5. Proceedings in respect of the actions and claims referred to
- in Article 96, with the exception of actions for a declaration of
- non-infringement of a Community trade mark, may also be
- brought in the courts of the Member State in which the act of
- infringement has been committed or threatened, or in which an
- act within the meaning of Article 9(3), second sentence, has been
- committed.
- Article 98
- Extent of jurisdiction
- 1. A Community trade mark court whose jurisdiction is based
- on Article 97(1) to (4) shall have jurisdiction in respect of:
- (a)
- acts of infringement committed or threatened within the
- territory of any of the Member States;
- (b)
- acts within the meaning of Article 9(3), second sentence,
- committed within the territory of any of the Member States.
- 2. A Community trade mark court whose jurisdiction is based
- on Article 97(5) shall have jurisdiction only in respect of acts
- committed or threatened within the territory of the Member
- State in which that court is situated.
- Article 99
- Presumption of validity — Defence as to the merits
- Counterclaims
- 1. A counterclaim for revocation or for a declaration of
- invalidity may only be based on the grounds for revocation or
- invalidity mentioned in this Regulation.
- 2. A Community trade mark court shall reject a counterclaim
- for revocation or for a declaration of invalidity if a decision taken
- by the Office relating to the same subject matter and cause of
- action and involving the same parties has already become final.
- 3. If the counterclaim is brought in a legal action to which the
- proprietor of the trade mark is not already a party, he shall be
- informed thereof and may be joined as a party to the action in
- accordance with the conditions set out in national law.
- 4. The Community trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the
- Community trade mark has been filed shall inform the Office of
- the date on which the counterclaim was filed. The latter shall
- record this fact in the Register of Community trade marks.
- 5. Article 57(2) to (5) shall apply.
- 6. Where a Community trade mark court has given a judgment
- which has become final on a counterclaim for revocation or for
- invalidity of a Community trade mark, a copy of the judgment
- shall be sent to the Office. Any party may request information
- about such transmission. The Office shall mention the judgment
- in the Register of Community trade marks in accordance with
- the provisions of the Implementing Regulation.
- 7. The Community trade mark court hearing a counterclaim
- for revocation or for a declaration of invalidity may stay the
- proceedings on application by the proprietor of the Community
- trade mark and after hearing the other parties and may request
- the defendant to submit an application for revocation or for a
- declaration of invalidity to the Office within a time limit which it
- shall determine. If the application is not made within the time
- limit, the proceedings shall continue; the counterclaim shall be
- deemed withdrawn. Article 104(3) shall apply.
- 1. The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the
- defendant with a counterclaim for revocation or for a declaration
- of invalidity.
- Applicable law
- 2. The validity of a Community trade mark may not be put in
- issue in an action for a declaration of non-infringement.
- 1. The Community trade mark courts shall apply the
- provisions of this Regulation.
- 3. In the actions referred to in Article 96(a) and (c) a plea
- relating to revocation or invalidity of the Community trade mark
- submitted otherwise than by way of a counterclaim shall be
- 2. On all matters not covered by this Regulation a Community
- trade mark court shall apply its national law, including its private
- international law.
- Article 101
- 24.3.2009
- Official Journal of the European Union
- EN
- 3. Unless otherwise provided in this Regulation, a Community
- trade mark court shall apply the rules of procedure governing the
- same type of action relating to a national trade mark in the
- Member State in which the court is located.
- Article 102
- Sanctions
- 1. Where a Community trade mark court finds that the
- defendant has infringed or threatened to infringe a Community
- trade mark, it shall, unless there are special reasons for not doing
- so, issue an order prohibiting the defendant from proceeding
- with the acts which infringed or would infringe the Community
- trade mark. It shall also take such measures in accordance with
- its national law as are aimed at ensuring that this prohibition is
- complied with.
- 2. In all other respects the Community trade mark court shall
- apply the law of the Member State in which the acts of
- infringement or threatened infringement were committed,
- including the private international law.
- Article 103
- Provisional and protective measures
- 1. Application may be made to the courts of a Member State,
- including Community trade mark courts, for such provisional,
- including protective, measures in respect of a Community trade
- mark or Community trade mark application as may be available
- under the law of that State in respect of a national trade mark,
- even if, under this Regulation, a Community trade mark court of
- another Member State has jurisdiction as to the substance of the
- matter.
- 2. A Community trade mark court whose jurisdiction is based
- on Article 97(1), (2), (3) or (4) shall have jurisdiction to grant
- provisional and protective measures which, subject to any
- necessary procedure for recognition and enforcement pursuant
- to Title III of Regulation (EC) No 44/2001, are applicable in the
- territory of any Member State. No other court shall have such
- jurisdiction.
- Article 104
- Specific rules on related actions
- 1. A Community trade mark court hearing an action referred
- to in Article 96, other than an action for a declaration of noninfringement shall, unless there are special grounds for
- continuing the hearing, of its own motion after hearing the
- parties or at the request of one of the parties and after hearing
- the other parties, stay the proceedings where the validity of the
- Community trade mark is already in issue before another
- Community trade mark court on account of a counterclaim or
- where an application for revocation or for a declaration of
- invalidity has already been filed at the Office.
- 2. The Office, when hearing an application for revocation or
- for a declaration of invalidity shall, unless there are special
- grounds for continuing the hearing, of its own motion after
- L 78/25
- hearing the parties or at the request of one of the parties and
- after hearing the other parties, stay the proceedings where the
- validity of the Community trade mark is already in issue on
- account of a counterclaim before a Community trade mark
- court. However, if one of the parties to the proceedings before
- the Community trade mark court so requests, the court may,
- after hearing the other parties to these proceedings, stay the
- proceedings. The Office shall in this instance continue the
- proceedings pending before it.
- 3. Where the Community trade mark court stays the
- proceedings it may order provisional and protective measures
- for the duration of the stay.
- Article 105
- Jurisdiction of Community trade mark courts of second
- instance — Further appeal
- 1. An appeal to the Community trade mark courts of second
- instance shall lie from judgments of the Community trade mark
- courts of first instance in respect of proceedings arising from the
- actions and claims referred to in Article 96.
- 2. The conditions under which an appeal may be lodged with a
- Community trade mark court of second instance shall be
- determined by the national law of the Member State in which
- that court is located.
- 3. The national rules concerning further appeal shall be
- applicable in respect of judgments of Community trade mark
- courts of second instance.
- SECTION 3
- Other disputes concerning Community trade marks
- Article 106
- Supplementary provisions on the jurisdiction of national
- courts other than Community trade mark courts
- 1. Within the Member State whose courts have jurisdiction
- under Article 94(1) those courts shall have jurisdiction for
- actions other than those referred to in Article 96, which would
- have jurisdiction ratione loci and ratione materiae in the case of
- actions relating to a national trade mark registered in that State.
- 2. Actions relating to a Community trade mark, other than
- those referred to in Article 96, for which no court has
- jurisdiction under Article 94(1) and paragraph 1 of this Article
- may be heard before the courts of the Member State in which the
- Office has its seat.
- Article 107
- Obligation of the national court
- A national court which is dealing with an action relating to a
- Community trade mark, other than the action referred to in
- Article 96, shall treat the trade mark as valid.
- L 78/26
- Official Journal of the European Union
- EN
- 24.3.2009
- SECTION 4
- SECTION 2
- Transitional provision
- Application of national laws for the purpose of prohibiting the
- use of Community trade marks
- Article 108
- Transitional provision relating to the application of the
- Convention on Jurisdiction and Enforcement
- The provisions of Regulation (EC) No 44/2001 which are
- rendered applicable by the preceding Articles shall have effect in
- respect of any Member State solely in the text of the Regulation
- which is in force in respect of that State at any given time.
- TITLE XI
- EFFECTS ON THE LAWS OF THE MEMBER STATES
- SECTION 1
- Civil actions on the basis of more than one trade mark
- Article 109
- Simultaneous and successive civil actions on the basis of
- Community trade marks and national trade marks
- 1. Where actions for infringement involving the same cause of
- action and between the same parties are brought in the courts of
- different Member States, one seized on the basis of a Community
- trade mark and the other seized on the basis of a national trade
- mark:
- (a)
- (b)
- the court other than the court first seized shall of its own
- motion decline jurisdiction in favour of that court where
- the trade marks concerned are identical and valid for
- identical goods or services. The court which would be
- required to decline jurisdiction may stay its proceedings if
- the jurisdiction of the other court is contested;
- the court other than the court first seized may stay its
- proceedings where the trade marks concerned are identical
- and valid for similar goods or services and where the trade
- marks concerned are similar and valid for identical or
- similar goods or services.
- 2. The court hearing an action for infringement on the basis of
- a Community trade mark shall reject the action if a final
- judgment on the merits has been given on the same cause of
- action and between the same parties on the basis of an identical
- national trade mark valid for identical goods or services.
- 3. The court hearing an action for infringement on the basis of
- a national trade mark shall reject the action if a final judgment on
- the merits has been given on the same cause of action and
- between the same parties on the basis of an identical Community
- trade mark valid for identical goods or services.
- 4. Paragraphs 1, 2 and 3 shall not apply in respect of
- provisional, including protective, measures.
- Article 110
- Prohibition of use of Community trade marks
- 1. This Regulation shall, unless otherwise provided for, not
- affect the right existing under the laws of the Member States to
- invoke claims for infringement of earlier rights within the
- meaning of Article 8 or Article 53(2) in relation to the use of a
- later Community trade mark. Claims for infringement of earlier
- rights within the meaning of Article 8(2) and (4) may, however,
- no longer be invoked if the proprietor of the earlier right may no
- longer apply for a declaration that the Community trade mark is
- invalid in accordance with Article 54(2).
- 2. This Regulation shall, unless otherwise provided for, not
- affect the right to bring proceedings under the civil, administrative or criminal law of a Member Sate or under provisions of
- Community law for the purpose of prohibiting the use of a
- Community trade mark to the extent that the use of a national
- trade mark may be prohibited under the law of that Member
- State or under Community law.
- Article 111
- Prior rights applicable to particular localities
- 1. The proprietor of an earlier right which only applies to a
- particular locality may oppose the use of the Community trade
- mark in the territory where his right is protected in so far as the
- law of the Member State concerned so permits.
- 2. Paragraph 1 shall cease to apply if the proprietor of the
- earlier right has acquiesced in the use of the Community trade
- mark in the territory where his right is protected for a period of
- five successive years, being aware of such use, unless the
- Community trade mark was applied for in bad faith.
- 3. The proprietor of the Community trade mark shall not be
- entitled to oppose use of the right referred to in paragraph 1
- even though that right may no longer be invoked against the
- Community trade mark.
- SECTION 3
- Conversion into a national trade mark application
- Article 112
- Request for the application of national procedure
- 1. The applicant for or proprietor of a Community trade mark
- may request the conversion of his Community trade mark
- application or Community trade mark into a national trade mark
- application:
- 24.3.2009
- Official Journal of the European Union
- EN
- (a)
- to the extent that the Community trade mark application is
- refused, withdrawn, or deemed to be withdrawn;
- (b)
- to the extent that the Community trade mark ceases to have
- effect.
- 2. Conversion shall not take place:
- (a)
- (b)
- where the rights of the proprietor of the Community trade
- mark have been revoked on the grounds of non-use, unless
- in the Member State for which conversion is requested the
- Community trade mark has been put to use which would
- be considered to be genuine use under the laws of that
- Member State;
- for the purpose of protection in a Member State in which,
- in accordance with the decision of the Office or of the
- national court, grounds for refusal of registration or
- grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark.
- 3. The national trade mark application resulting from the
- conversion of a Community trade mark application or a
- Community trade mark shall enjoy in respect of the Member
- State concerned the date of filing or the date of priority of that
- application or trade mark and, where appropriate, the seniority
- of a trade mark of that State claimed under Articles 34 or 35.
- 4. In cases where a Community trade mark application is
- deemed to be withdrawn, the Office shall send to the applicant a
- communication fixing a period of three months from the date of
- that communication in which a request for conversion may be
- filed.
- L 78/27
- 2. If the Community trade mark application has been
- published, receipt of any such request shall be recorded in the
- Register of Community trade marks and the request for
- conversion shall be published.
- 3. The Office shall check whether the conversion requested
- fulfils the conditions set out in this Regulation, in particular
- Article 112(1), (2), (4), (5) and (6), and paragraph 1 of this
- Article, together with the formal conditions laid down in the
- Implementing Regulation. If these conditions are fulfilled, the
- Office shall transmit the request for conversion to the industrial
- property offices of the Member States specified therein.
- Article 114
- Formal requirements for conversion
- 1. Any central industrial property office to which the request
- for conversion is transmitted may obtain from the Office any
- additional information concerning the request enabling that
- office to make a decision regarding the national trade mark
- resulting from the conversion.
- 2. A Community trade mark application or a Community trade
- mark transmitted in accordance with Article 113 shall not be
- subjected to formal requirements of national law which are
- different from or additional to those provided for in this
- Regulation or in the Implementing Regulation.
- 3. Any central industrial property office to which the request is
- transmitted may require that the applicant shall, within not less
- than two months:
- (a)
- 5. Where the Community trade mark application is withdrawn
- or the Community trade mark ceases to have effect as a result of
- a surrender being recorded or of failure to renew the registration,
- the request for conversion shall be filed within three months
- after the date on which the Community trade mark application
- has been withdrawn or on which the Community trade mark
- ceases to have effect.
- 6. Where the Community trade mark application is refused by
- decision of the Office or where the Community trade mark
- ceases to have effect as a result of a decision of the Office or of a
- Community trade mark court, the request for conversion shall be
- filed within three months after the date on which that decision
- acquired the authority of a final decision.
- 7. The effect referred to in Article 32 shall lapse if the request is
- not filed in due time.
- pay the national application fee;
- (b)
- file a translation in one of the official languages of the State
- in question of the request and of the documents
- accompanying it;
- (c)
- indicate an address for service in the State in question;
- (d)
- supply a representation of the trade mark in the number of
- copies specified by the State in question.
- TITLE XII
- THE OFFICE
- SECTION 1
- Article 113
- General provisions
- Submission, publication and transmission of the request for
- conversion
- 1. A request for conversion shall be filed with the Office and
- shall specify the Member States in which application of the
- procedure for registration of a national trade mark is desired. The
- request shall not be deemed to be filed until the conversion fee
- has been paid.
- Article 115
- Legal status
- 1. The Office shall be a body of the Community. It shall have
- legal personality.
- L 78/28
- Official Journal of the European Union
- EN
- 24.3.2009
- 2. In each of the Member States the Office shall enjoy the most
- extensive legal capacity accorded to legal persons under their
- laws; it may, in particular, acquire or dispose of movable and
- immovable property and may be a party to legal proceedings.
- 3. The applicant must indicate a second language which shall
- be a language of the Office the use of which he accepts as a
- possible language of proceedings for opposition, revocation or
- invalidity proceedings.
- 3. The Office shall be represented by its President.
- If the application was filed in a language which is not one of the
- languages of the Office, the Office shall arrange to have the
- application, as described in Article 26(1), translated into the
- language indicated by the applicant.
- Article 116
- Staff
- 1. The Staff Regulations of officials of the European Communities, hereinafter referred to as ‘the Staff Regulations’, the
- Conditions of Employment of other servants of the European
- Communities, and the rules adopted by agreement between the
- Institutions of the European Communities for giving effect to
- those Staff Regulations and Conditions of Employment shall
- apply to the staff of the Office, without prejudice to the
- application of Article 136 to the members of the Boards of
- Appeal.
- 2. Without prejudice to Article 125, the powers conferred on
- each Institution by the Staff Regulations and by the Conditions of
- Employment of other servants shall be exercised by the Office in
- respect of its staff.
- Article 117
- Privileges and immunities
- The Protocol on the Privileges and Immunities of the European
- Communities shall apply to the Office.
- Article 118
- Liability
- 1. The contractual liability of the Office shall be governed by
- the law applicable to the contract in question.
- 2. The Court of Justice shall be competent to give judgment
- pursuant to any arbitration clause contained in a contract
- concluded by the Office.
- 3. In the case of non-contractual liability, the Office shall, in
- accordance with the general principles common to the laws of
- the Member States, make good any damage caused by its
- departments or by its servants in the performance of their duties.
- 4. The Court of Justice shall have jurisdiction in disputes
- relating to compensation for the damage referred to in
- paragraph 3.
- 5. The personal liability of its servants towards the Office shall
- be governed by the provisions laid down in their Staff
- Regulations or in the Conditions of Employment applicable to
- them.
- Article 119
- Languages
- 1. The application for a Community trade mark shall be filed in
- one of the official languages of the European Community.
- 2. The languages of the Office shall be English, French,
- German, Italian and Spanish.
- 4. Where the applicant for a Community trade mark is the sole
- party to proceedings before the Office, the language of
- proceedings shall be the language used for filing the application
- for a Community trade mark. If the application was made in a
- language other than the languages of the Office, the Office may
- send written communications to the applicant in the second
- language indicated by the applicant in his application.
- 5. The notice of opposition and an application for revocation
- or invalidity shall be filed in one of the languages of the Office.
- 6. If the language chosen, in accordance with paragraph 5, for
- the notice of opposition or the application for revocation or
- invalidity is the language of the application for a trade mark or
- the second language indicated when the application was filed,
- that language shall be the language of the proceedings.
- If the language chosen, in accordance with paragraph 5, for the
- notice of opposition or the application for revocation or
- invalidity is neither the language of the application for a trade
- mark nor the second language indicated when the application
- was filed, the opposing party or the party seeking revocation or
- invalidity shall be required to produce, at his own expense, a
- translation of his application either into the language of the
- application for a trade mark, provided that it is a language of the
- Office, or into the second language indicated when the
- application was filed. The translation shall be produced within
- the period prescribed in the Implementing Regulation. The
- language into which the application has been translated shall
- then become the language of the proceedings.
- 7. Parties to opposition, revocation, invalidity or appeal
- proceedings may agree that a different official language of the
- European Community is to be the language of the proceedings.
- Article 120
- Publication and entries in the Register
- 1. An application for a Community trade mark, as described in
- Article 26(1), and all other information the publication of which
- is prescribed by this Regulation or the Implementing Regulation,
- shall be published in all the official languages of the European
- Community.
- 2. All entries in the Register of Community trade marks shall
- be made in all the official languages of the European Community.
- 3. In cases of doubt, the text in the language of the Office in
- which the application for the Community trade mark was filed
- shall be authentic. If the application was filed in an official
- language of the European Community other than one of the
- languages of the Office, the text in the second language indicated
- by the applicant shall be authentic.
- 24.3.2009
- Official Journal of the European Union
- EN
- Article 121
- The translation services required for the functioning of the Office
- shall be provided by the Translation Centre for the Bodies of the
- European Union.
- L 78/29
- 2. To this end the President shall have in particular the
- following functions and powers:
- (a)
- he shall take all necessary steps, including the adoption of
- internal administrative instructions and the publication of
- notices, to ensure the functioning of the Office;
- (b)
- he may place before the Commission any proposal to
- amend this Regulation, the Implementing Regulation, the
- rules of procedure of the Boards of Appeal, the fees
- regulations and any other rules applying to Community
- trade marks after consulting the Administrative Board and,
- in the case of the fees regulations and the budgetary
- provisions of this Regulation, the Budget Committee;
- (c)
- he shall draw up the estimates of the revenue and
- expenditure of the Office and shall implement the budget;
- (d)
- he shall submit a management report to the Commission,
- the European Parliament and the Administrative Board each
- year;
- (e)
- he shall exercise in respect of the staff the powers laid down
- in Article 116(2);
- (f)
- he may delegate his powers.
- Article 122
- Control of legality
- 1. The Commission shall check the legality of those acts of the
- President of the Office in respect of which Community law does
- not provide for any check on legality by another body and of acts
- of the Budget Committee attached to the Office pursuant to
- Article 138.
- 2. It shall require that any unlawful acts as referred to in
- paragraph 1 be altered or annulled.
- 3. Member States and any person directly and individually
- concerned may refer to the Commission any act as referred to in
- paragraph 1, whether express or implied, for the Commission to
- examine the legality of that act. Referral shall be made to the
- Commission within one month of the day on which the party
- concerned first became aware of the act in question. The
- Commission shall take a decision within three months. If no
- decision has been taken within this period, the case shall be
- deemed to have been dismissed.
- Article 123
- Access to documents
- 1. Regulation (EC) No 1049/2001 of the European Parliament
- and of the Council of 30 May 2001 regarding public access to
- European Parliament, Council and Commission documents (1)
- shall apply to documents held by the Office.
- 3. The President shall be assisted by one or more VicePresidents. If the President is absent or indisposed, the VicePresident or one of the Vice-Presidents shall take his place in
- accordance with the procedure laid down by the Administrative
- Board.
- 2. The Administrative Board shall adopt the practical arrangements for Implementing Regulation (EC) No 1049/2001 with
- regard to this Regulation.
- Article 125
- 3. Decisions taken by the Office pursuant to Article 8 of
- Regulation (EC) No 1049/2001 may give rise to the lodging of a
- complaint to the Ombudsman or form the subject of an action
- before the Court of Justice, under the conditions laid down in
- Articles 195 and 230 of the Treaty respectively.
- SECTION 2
- Management of the Office
- Article 124
- Powers of the President
- Appointment of senior officials
- 1. The President of the Office shall be appointed by the Council
- from a list of at most three candidates, which shall be prepared
- by the Administrative Board. Power to dismiss the President shall
- lie with the Council, acting on a proposal from the
- Administrative Board.
- 2. The term of office of the President shall not exceed five
- years. This term of office shall be renewable.
- 3. The Vice-President or Vice-Presidents of the Office shall be
- appointed or dismissed as in paragraph 1, after consultation of
- the President.
- 1. The Office shall be managed by the President.
- (1) OJ L 145, 31.5.2001, p. 43.
- 4. The Council shall exercise disciplinary authority over the
- officials referred to in paragraphs 1 and 3.
- L 78/30
- Official Journal of the European Union
- EN
- SECTION 3
- Administrative Board
- 24.3.2009
- chairman or at the request of the Commission or of one-third of
- the Member States.
- 4. The Administrative Board shall adopt rules of procedure.
- Article 126
- Creation and powers
- 1. An Administrative Board is hereby set up, attached to the
- Office. Without prejudice to the powers attributed to the Budget
- Committee in Section 5 — budget and financial control — the
- Administrative Board shall have the powers defined below.
- 2. The Administrative Board shall draw up the lists of
- candidates provided for in Article 125.
- 3. It shall advise the President on matters for which the Office
- is responsible.
- 5. The Administrative Board shall take its decisions by a simple
- majority of the representatives of the Member States. However, a
- majority of three-quarters of the representatives of the Member
- States shall be required for the decisions which the Administrative Board is empowered to take under Article 125(1) and (3).
- In both cases each Member State shall have one vote.
- 6. The Administrative Board may invite observers to attend its
- meetings.
- 7. The Secretariat for the Administrative Board shall be
- provided by the Office.
- 4. It shall be consulted before adoption of the guidelines for
- examination in the Office and in the other cases provided for in
- this Regulation.
- SECTION 4
- Implementation of procedures
- 5. It may deliver opinions and requests for information to the
- President and to the Commission where it considers that this is
- necessary.
- Article 127
- Composition
- 1. The Administrative Board shall be composed of one
- representative of each Member State and one representative of
- the Commission and their alternates.
- 2. The members of the Administrative Board may, subject to
- the provisions of its rules of procedure, be assisted by advisers or
- experts.
- Article 128
- Chairmanship
- 1. The Administrative Board shall elect a chairman and a
- deputy chairman from among its members. The deputy chairman shall ex officio replace the chairman in the event of his being
- prevented from attending to his duties.
- 2. The duration of the terms of office of the chairman and the
- deputy chairman shall be three years. The terms of office shall be
- renewable.
- Article 129
- Meetings
- 1. Meetings of the Administrative Board shall be convened by
- its chairman.
- 2. The President of the Office shall take part in the
- deliberations, unless the Administrative Board decides otherwise.
- 3. The Administrative Board shall hold an ordinary meeting
- once a year; in addition, it shall meet on the initiative of its
- Article 130
- Competence
- For taking decisions in connection with the procedures laid
- down in this Regulation, the following shall be competent:
- (a)
- examiners;
- (b)
- Opposition Divisions;
- (c)
- an Administration of Trade Marks and Legal Division;
- (d)
- Cancellation Divisions;
- (e)
- Boards of Appeal.
- Article 131
- Examiners
- An examiner shall be responsible for taking decisions on behalf
- of the Office in relation to an application for registration of a
- Community trade mark, including the matters referred to in
- Articles 36, 37 and 68, except in so far as an Opposition
- Division is responsible.
- Article 132
- Opposition Divisions
- 1. An Opposition Division shall be responsible for taking
- decisions on an opposition to an application to register a
- Community trade mark.
- 2. The decisions of the Opposition Divisions shall be taken by
- three-member groups. At least one member shall be legally
- qualified. In certain specific cases provided for in the
- Implementing Regulation, the decisions shall be taken by a
- single member.
- 24.3.2009
- Official Journal of the European Union
- EN
- Article 133
- Administration of Trade Marks and Legal Division
- 1. The Administration of Trade Marks and Legal Division shall
- be responsible for those decisions required by this Regulation
- which do not fall within the competence of an examiner, an
- Opposition Division or a Cancellation Division. It shall in
- particular be responsible for decisions in respect of entries in the
- Register of Community trade marks.
- 2. It shall also be responsible for keeping the list of professional
- representatives which is referred to in Article 93.
- L 78/31
- 4. The composition of the enlarged Board and the rules on
- referrals to it shall be laid down pursuant to the rules of
- procedure of the Boards referred to in Article 162(3).
- 5. To determine which specific cases fall under the authority of
- a single member, account should be taken of the lack of difficulty
- of the legal or factual matters raised, the limited importance of
- the individual case or the absence of other specific circumstances.
- The decision to confer a case on one member in the cases
- referred to shall be adopted by the Board handling the case.
- Further details shall be laid down in the rules of procedure of the
- Boards referred to in Article 162(3).
- Article 136
- 3. A decision of the Division shall be taken by one member.
- Independence of the members of the Boards of Appeal
- Article 134
- Cancellation Divisions
- 1. A Cancellation Division shall be responsible for taking
- decisions in relation to an application for the revocation or
- declaration of invalidity of a Community trade mark.
- 2. The decisions of the Cancellation Divisions shall be taken by
- three-member groups. At least one member shall be legally
- qualified. In certain specific cases provided for in the
- Implementing Regulation, the decisions shall be taken by a
- single member.
- 1. The President of the Boards of Appeal and the chairmen of
- the Boards shall be appointed, in accordance with the procedure
- laid down in Article 125 for the appointment of the President of
- the Office, for a term of five years. They may not be removed
- from office during this term, unless there are serious grounds for
- such removal and the Court of Justice, on application by the
- institution which appointed them, takes a decision to this effect.
- The term of office of the President of the Boards of Appeal and
- the chairmen of the Boards may be renewed for additional fiveyear periods, or until retirement age if this age is reached during
- the new term of office.
- The President of the Boards of Appeal shall, inter alia, have
- managerial and organisational powers, principally to:
- (a)
- chair the authority of the Boards of Appeal responsible for
- laying down the rules and organising the work of the
- Boards, which authority is provided for in the rules of
- procedure of the Boards referred to in Article 162(3);
- (b)
- ensure the implementation of the authority's decisions;
- (c)
- Article 135
- allocate cases to a Board on the basis of objective criteria
- determined by the authority of the Boards of Appeal;
- (d)
- forward to the President of the Office the Boards'
- expenditure requirements, with a view to drawing up the
- expenditure estimates.
- Boards of Appeal
- 1. The Boards of Appeal shall be responsible for deciding on
- appeals from decisions of the examiners, Opposition Divisions,
- Administration of Trade Marks and Legal Division and
- Cancellation Divisions.
- 2. The decisions of the Boards of Appeal shall be taken by three
- members, at least two of whom are legally qualified. In certain
- specific cases, decisions shall be taken by an enlarged Board
- chaired by the President of the Boards of Appeal or by a single
- member, who must be legally qualified.
- 3. In order to determine the special cases which fall under the
- jurisdiction of the enlarged Board, account should be taken of
- the legal difficulty or the importance of the case or of special
- circumstances which justify it. Such cases may be referred to the
- enlarged Board:
- (a)
- (b)
- by the authority of the Boards of Appeal set up in
- accordance with the rules of procedure of the Boards
- referred to in Article 162(3); or
- by the Board handling the case.
- The President of the Boards of Appeal shall chair the enlarged
- Board.
- Further details shall be laid down in the rules of procedure of the
- Boards referred to in Article 162(3).
- 2. The members of the Boards of Appeal shall be appointed by
- the Administrative Board for a term of five years. Their term of
- office may be renewed for additional five-year periods, or until
- retirement age if that age is reached during the new term of
- office.
- L 78/32
- Official Journal of the European Union
- EN
- 3. The members of the Boards of Appeal may not be removed
- from office unless there are serious grounds for such removal
- and the Court of Justice, after the case has been referred to it by
- the Administrative Board on the recommendation of the
- President of the Boards of Appeal, after consulting the chairman
- of the Board to which the member concerned belongs, takes a
- decision to this effect.
- 24.3.2009
- SECTION 5
- Budget and financial control
- Article 138
- Budget Committee
- 4. The President of the Boards of Appeal and the chairmen and
- members of the Boards of Appeal shall be independent. In their
- decisions they shall not be bound by any instructions.
- 5. The President of the Boards of Appeal and the chairmen and
- members of the Boards of Appeal may not be examiners or
- members of the Opposition Divisions, Administration of Trade
- Marks and Legal Division or Cancellation Divisions.
- 1. A Budget Committee is hereby set up, attached to the Office.
- The Budget Committee shall have the powers assigned to it in
- this Section and in Article 38(4).
- 2. Articles 126(6), 127, 128 and 129(1) to (4), (6) and (7) shall
- apply to the Budget Committee mutatis mutandis.
- 3. The Budget Committee shall take its decisions by a simple
- majority of the representatives of the Member States. However, a
- majority of three-quarters of the representatives of the Member
- States shall be required for the decisions which the Budget
- Committee is empowered to take under Articles 38(4), 140(3)
- and 143. In both cases each Member State shall have one vote.
- Article 137
- Exclusion and objection
- Article 139
- Budget
- 1. Examiners and members of the Divisions set up within the
- Office or of the Boards of Appeal may not take part in any
- proceedings if they have any personal interest therein, or if they
- have previously been involved as representatives of one of the
- parties. Two of the three members of an Opposition Division
- shall not have taken part in examining the application. Members
- of the Cancellation Divisions may not take part in any
- proceedings if they have participated in the final decision on
- the case in the proceedings for registration or opposition
- proceedings. Members of the Boards of Appeal may not take part
- in appeal proceedings if they participated in the decision under
- appeal.
- 2. If, for one of the reasons mentioned in paragraph 1 or for
- any other reason, a member of a Division or of a Board of
- Appeal considers that he should not take part in any
- proceedings, he shall inform the Division or Board accordingly.
- 3. Examiners and members of the Divisions or of a Board of
- Appeal may be objected to by any party for one of the reasons
- mentioned in paragraph 1, or if suspected of partiality. An
- objection shall not be admissible if, while being aware of a reason
- for objection, the party has taken a procedural step. No objection
- may be based upon the nationality of examiners or members.
- 1. Estimates of all the Office's revenue and expenditure shall be
- prepared for each financial year and shall be shown in the
- Office's budget, and each financial year shall correspond with the
- calendar year.
- 2. The revenue and expenditure shown in the budget shall be in
- balance.
- 3. Revenue shall comprise, without prejudice to other types of
- income, total fees payable under the fees regulations, total fees
- payable under the Madrid Protocol referred to in Article 140 of
- this Regulation for an international registration designating the
- European Community and other payments made to Contracting
- Parties to the Madrid Protocol, total fees payable under the
- Geneva Act referred to in Article 106c of Council Regulation
- (EC) No 6/2002 of 12 December 2001 on Community
- designs (1) for an international registration designating the
- European Community and other payments made to Contracting
- Parties to the Geneva Act, and, to the extend necessary, a subsidy
- entered against a specific heading of the general budget of the
- European Communities, Commission section.
- Article 140
- Preparation of the budget
- 4. The Divisions and the Boards of Appeal shall decide as to the
- action to be taken in the cases specified in paragraphs 2 and 3
- without the participation of the member concerned. For the
- purposes of taking this decision the member who withdraws or
- has been objected to shall be replaced in the Division or Board of
- Appeal by his alternate.
- 1. The President shall draw up each year an estimate of the
- Office's revenue and expenditure for the following year and shall
- send it to the Budget Committee not later than 31 March in each
- year, together with a list of posts.
- (1) OJ L 3, 5.1.2002, p. 1.
- 24.3.2009
- Official Journal of the European Union
- EN
- 2. Should the budget estimates provide for a Community
- subsidy, the Budget Committee shall immediately forward the
- estimate to the Commission, which shall forward it to the budget
- authority of the Communities. The Commission may attach an
- opinion on the estimate along with an alternative estimate.
- 3. The Budget Committee shall adopt the budget, which shall
- include the Office's list of posts. Should the budget estimates
- contain a subsidy from the general budget of the Communities,
- the Office's budget shall, if necessary, be adjusted.
- L 78/33
- Article 144
- Fees regulations
- 1. The fees regulations shall determine in particular the
- amounts of the fees and the ways in which they are to be paid.
- 2. The amounts of the fees shall be fixed at such a level as to
- ensure that the revenue in respect thereof is in principle sufficient
- for the budget of the Office to be balanced.
- 3. The fees regulations shall be adopted and amended in
- accordance with the procedure referred to in Article 163(2).
- Article 141
- Audit and control
- TITLE XIII
- 1. An internal audit function shall be set up within the Office,
- to be performed in compliance with the relevant international
- standards. The internal auditor, appointed by the President, shall
- be responsible to him for verifying the proper operation of
- budget implementation systems and procedures of the Office.
- INTERNATIONAL REGISTRATION OF MARKS
- SECTION I
- General provisions
- 2. The internal auditor shall advise the President on dealing
- with risks, by issuing independent opinions on the quality of
- management and control systems and by issuing recommendations for improving the conditions of implementation of
- operations and promoting sound financial management.
- 3. The responsibility for putting in place internal control
- systems and procedures suitable for carrying out his tasks shall
- lie with the authorising officer.
- Article 142
- Auditing of accounts
- 1. Not later than 31 March in each year the President shall
- transmit to the Commission, the European Parliament, the
- Budget Committee and the Court of Auditors accounts of the
- Office's total revenue and expenditure for the preceding financial
- year. The Court of Auditors shall examine them in accordance
- with Article 248 of the Treaty.
- 2. The Budget Committee shall give a discharge to the President
- of the Office in respect of the implementation of the budget.
- Article 145
- Application of provisions
- Unless otherwise specified in this title, this Regulation and its
- Implementing Regulations shall apply to applications for
- international registrations under the Protocol relating to the
- Madrid Agreement concerning the international registration of
- marks, adopted at Madrid on 27 June 1989 (hereafter referred to
- as ‘international applications’ and ‘the Madrid Protocol’ respectively), based on an application for a Community trade mark or
- on a Community trade mark and to registrations of marks in the
- international register maintained by the International Bureau of
- the World Intellectual Property Organisation (hereafter referred
- to as ‘international registrations’ and ‘the International Bureau’,
- respectively) designating the European Community.
- SECTION 2
- International registration on the basis of applications for a
- Community trade mark and of Community trade marks
- Article 146
- Filing of an international application
- Financial provisions
- 1. International applications pursuant to Article 3 of the
- Madrid Protocol based on an application for a Community trade
- mark or on a Community trade mark shall be filed at the Office.
- The Budget Committee shall, after consulting the Court of
- Auditors of the European Communities and the Commission,
- adopt internal financial provisions specifying, in particular, the
- procedure for establishing and implementing the Office's budget.
- As far as is compatible with the particular nature of the Office,
- the financial provisions shall be based on the financial
- regulations adopted for other bodies set up by the Community.
- 2. Where an international application is filed before the mark
- on which the international registration is to be based has been
- registered as a Community trade mark, the applicant for the
- international registration must indicate whether the international
- registration is to be based on a Community trade mark
- application or registration. Where the international registration
- is to be based on a Community trade mark once it is registered,
- Article 143
- L 78/34
- Official Journal of the European Union
- EN
- the international application shall be deemed to have been
- received at the Office on the date of registration of the
- Community trade mark.
- Article 147
- Form and contents of the international application
- 1. The international application shall be filed in one of the
- official languages of the European Community, using a form
- provided by the Office. Unless otherwise specified by the
- applicant on that form when he files the international
- application, the Office shall correspond with the applicant in
- the language of filing in a standard form.
- 2. If the international application is filed in a language which is
- not one of the languages allowed under the Madrid Protocol, the
- applicant must indicate a second language from among those
- languages. This shall be the language in which the Office submits
- the international application to the International Bureau.
- 3. Where the international application is filed in a language
- other than one of the languages allowed under the Madrid
- Protocol for the filing of international applications, the applicant
- may provide a translation of the list of goods or services in the
- language in which the international application is to be
- submitted to the International Bureau pursuant to paragraph 2.
- 4. The Office shall forward the international application to the
- International Bureau as soon as possible.
- 5. The filing of an international application shall be subject to
- the payment of a fee to the Office. In the cases referred to in the
- second sentence of Article 146(2), the fee shall be due on the
- date of registration of the Community trade mark. The
- application shall be deemed not to have been filed until the
- required fee has been paid.
- 6. The international application must fulfil the relevant
- conditions laid down in the Implementing Regulation.
- Article 148
- 24.3.2009
- Article 149
- Request for territorial extension subsequent to the
- international registration
- A request for territorial extension made subsequent to
- international registration pursuant to Article 3ter(2) of
- Madrid Protocol may be filed through the intermediary of
- Office. The request must be filed in the language in which
- international application was filed pursuant to Article 147.
- the
- the
- the
- the
- Article 150
- International fees
- Any fees payable to the International Bureau under the Madrid
- Protocol shall be paid direct to the International Bureau.
- SECTION 3
- International registrations designating the European
- Community
- Article 151
- Effects of international registrations designating the
- European Community
- 1. An international registration designating the European
- Community shall, from the date of its registration pursuant to
- Article 3(4) of the Madrid Protocol or from the date of the
- subsequent designation of the European Community pursuant to
- Article 3ter(2) of the Madrid Protocol, have the same effect as an
- application for a Community trade mark.
- 2. If no refusal has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has
- been withdrawn, the international registration of a mark
- designating the European Community shall, from the date
- referred to in paragraph 1, have the same effect as the
- registration of a mark as a Community trade mark.
- 3. For the purposes of applying Article 9(3), publication of the
- particulars of the international registration designating the
- European Community pursuant to Article 152(1) shall take the
- place of publication of a Community trade mark application, and
- publication pursuant to Article 152(2) shall take the place of
- publication of the registration of a Community trade mark.
- Recordal in the files and in the Register
- 1. The date and number of an international registration based
- on a Community trade mark application, shall be recorded in the
- files of that application. When the application results in a
- Community trade mark, the date and number of the
- international registration shall be entered in the Register.
- 2. The date and number of an international registration based
- on a Community trade mark shall be entered in the Register.
- Article 152
- Publication
- 1. The Office shall publish the date of registration of a mark
- designating the European Community pursuant to Article 3(4) of
- the Madrid Protocol or the date of the subsequent designation of
- the European Community pursuant to Article 3ter(2) of the
- Madrid Protocol, the language of filing of the international
- application and the second language indicated by the applicant,
- 24.3.2009
- Official Journal of the European Union
- EN
- the number of the international registration and the date of
- publication of such registration in the Gazette published by the
- International Bureau, a reproduction of the mark and the
- numbers of the classes of the goods or services in respect of
- which protection is claimed.
- 2. If no refusal of protection of an international registration
- designating the European Community has been notified in
- accordance with Article 5(1) and (2) of the Madrid Protocol or if
- any such refusal has been withdrawn, the Office shall publish this
- fact, together with the number of the international registration
- and, where applicable, the date of publication of such registration
- in the Gazette published by the International Bureau.
- L 78/35
- Article 155
- Search
- 1. Once the Office has received a notification of an
- international registration designating the European Community,
- it shall draw up a Community search report as provided for in
- Article 38(1).
- 2. As soon as the Office has received a notification of an
- international registration designating the European Community,
- the Office shall transmit a copy thereof to the central industrial
- property office of each Member State which has informed the
- Office of its decision to operate a search in its own register of
- trade marks as provided for in Article 38(2).
- Article 153
- Seniority
- 3. Article 38(3) to (6) shall apply mutatis mutandis.
- 1. The applicant for an international registration designating
- the European Community may claim, in the international
- application, the seniority of an earlier trade mark registered in
- a Member State, including a trade mark registered in the Benelux
- countries, or registered under international arrangements having
- effect in a Member State, as provided for in Article 34.
- 4. The Office shall inform the proprietors of any earlier
- Community trade marks or Community trade mark applications
- cited in the Community search report of the publication of the
- international registration designating the European Community
- as provided for in Article 152(1).
- 2. The holder of an international registration designating the
- European Community may, as from the date of publication of
- the effects of such registration pursuant to Article 152(2), claim
- at the Office the seniority of an earlier trade mark registered in a
- Member State, including a trade mark registered in the Benelux
- countries, or registered under international arrangements having
- effect in a Member State, as provided for in Article 35. The Office
- shall notify the International Bureau accordingly.
- Article 156
- Article 154
- Examination as to absolute grounds for refusal
- 1. International registrations designating the European Community shall be subject to examination as to absolute grounds for
- refusal in the same way as applications for Community trade
- marks.
- 2. Protection of an international registration shall not be
- refused before the holder of the international registration has
- been allowed the opportunity to renounce or limit the protection
- in respect of the European Community or of submitting his
- observations.
- 3. Refusal of protection shall take the place of refusal of a
- Community trade mark application.
- 4. Where protection of an international registration is refused
- by a decision under this Article which has become final or where
- the holder of the international registration has renounced the
- protection in respect of the European Community pursuant to
- paragraph 2, the Office shall refund the holder of the
- international registration a part of the individual fee to be laid
- down in the Implementing Regulation.
- Opposition
- 1. International registration designating the European Community shall be subject to opposition in the same way as
- published Community trade mark applications.
- 2. Notice of opposition shall be filed within a period of three
- months which shall begin six months following the date of the
- publication pursuant to Article 152(1). The opposition shall not
- be treated as duly entered until the opposition fee has been paid.
- 3. Refusal of protection shall take the place of refusal of a
- Community trade mark application.
- 4. Where protection of an international registration is refused
- by a decision under this Article which has become final or where
- the holder of the international registration has renounced the
- protection in respect of the European Community prior to a
- decision under this Article which has become final, the Office
- shall refund the holder of the international registration a part of
- the individual fee to be laid down in the Implementing
- Regulation.
- Article 157
- Replacement of a Community trade mark by an
- international registration
- The Office shall, upon request, enter a notice in the Register that
- a Community trade mark is deemed to have been replaced by an
- international registration in accordance with Article 4bis of the
- Madrid Protocol.
- L 78/36
- Official Journal of the European Union
- EN
- Article 158
- Invalidation of the effects of an international registration
- 24.3.2009
- registration designating the European Community must be put
- to genuine use in the Community.
- Article 161
- 1. The effects of an international registration designating the
- European Community may be declared invalid.
- Transformation
- 2. The application for invalidation of the effects of an
- international registration designating the European Community
- shall take the place of an application for a declaration of
- revocation as provided for in Article 51 or for a declaration of
- invalidity as provided for in Article 52 or Article 53.
- 1. Subject to paragraph 2, the provisions applicable to
- Community trade mark applications shall apply mutatis mutandis
- to applications for transformation of an international registration
- into a Community trade mark application pursuant to
- Article 9quinquies of the Madrid Protocol.
- Article 159
- 2. When the application for transformation relates to an
- international registration designating the European Community
- the particulars of which have been published pursuant to
- Article 152(2), Articles 37 to 42 shall not apply.
- Conversion of a designation of the European Community
- through an international registration into a national trade
- mark application or into a designation of Member States
- TITLE XIV
- 1. Where a designation of the European Community through
- an international registration has been refused or ceases to have
- effect, the holder of the international registration may request the
- conversion of the designation of the European Community:
- FINAL PROVISIONS
- Article 162
- (a)
- into a national trade mark application pursuant to
- Articles 112, 113 and 114;
- (b)
- into a designation of a Member State party to the Madrid
- Protocol or the Madrid Agreement concerning the
- international registration of marks, adopted at Madrid on
- 14 April 1891, as revised and amended (hereafter referred
- to as the ‘Madrid Agreement’), provided that on the date
- when conversion was requested it was possible to have
- designated that Member State directly under the Madrid
- Protocol or the Madrid Agreement. Articles 112, 113 and
- 114 shall apply.
- Community implementing provisions
- 1. The rules implementing this Regulation shall be adopted in
- an Implementing Regulation.
- 2. In addition to the fees provided for in the preceding Articles,
- fees shall be charged, in accordance with the detailed rules of
- application laid down in the Implementing Regulation, in the
- cases listed below:
- late payment of the registration fee;
- (b)
- issue of a copy of the certificate of registration;
- (c)
- registration of a licence or another right in respect of a
- Community trade mark;
- (d)
- registration of a licence or another right in respect of an
- application for a Community trade mark;
- (e)
- cancellation of the registration of a licence or another right;
- (f)
- alteration of a registered Community trade mark;
- (g)
- issue of an extract from the Register;
- (h)
- 2. The national trade mark application or the designation of a
- Member State party to the Madrid Protocol or the Madrid
- Agreement resulting from the conversion of the designation of
- the European Community through an international registration
- shall enjoy, in respect of the Member State concerned, the date of
- the international registration pursuant to Article 3(4) of the
- Madrid Protocol or the date of the extension to the European
- Community pursuant to Article 3ter(2) of the Madrid Protocol if
- the latter was made subsequently to the international registration, or the date of priority of that registration and, where
- appropriate, the seniority of a trade mark of that State claimed
- under Article 153.
- (a)
- inspection of the files;
- (i)
- issue of copies of file documents;
- (j)
- issue of certified copies of the application;
- (k)
- communication of information in a file;
- (l)
- review of the determination of the procedural costs to be
- refunded.
- 3. The request for conversion shall be published.
- Article 160
- Use of a mark subject of an international registration
- For the purposes of applying Article 15(1), Article 42(2),
- Article 51(1)(a) and Article 57(2), the date of publication
- pursuant to Article 152(2) shall take the place of the date of
- registration for the purpose of establishing the date as from
- which the mark which is the subject of an international
- 24.3.2009
- Official Journal of the European Union
- EN
- 3. The Implementing Regulation and the rules of procedure of
- the Boards of Appeal shall be adopted and amended in
- accordance with the procedure referred to in Article 163(2).
- Article 163
- Establishment of a committee and procedure for the
- adoption of implementing regulations
- 1. The Commission shall be assisted by a committee referred to
- as the ‘Committee on Fees, Implementation Rules and the
- Procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (trade marks and designs)’.
- 2. Where reference is made to this paragraph, Articles 5 and 7
- of Decision 1999/468/EC shall apply.
- The period laid down in Article 5(6) of Decision 1999/468/EC
- shall be set at three months.
- Article 164
- Compatibility with other Community legal provisions
- This Regulation shall not affect Council Regulation (EC) No 510/
- 2006, and in particular Article 14 thereof.
- Article 165
- L 78/37
- within the meaning of Article 8 was acquired in a new Member
- State prior to accession, provided that it was acquired in good
- faith and that the filing date or, where applicable, the priority
- date or the date of acquisition in the new Member State of the
- earlier trade mark or other earlier right precedes the filing date
- or, where applicable, the priority date of the Community trade
- mark applied for.
- 4. A Community trade mark as referred to in paragraph 1 may
- not be declared invalid:
- (a)
- pursuant to Article 52 if the grounds for invalidity became
- applicable merely because of the accession of a new
- Member State;
- (b)
- pursuant to Article 53(1) and (2) if the earlier national right
- was registered, applied for or acquired in a new Member
- State prior to the date of accession.
- 5. The use of a Community trade mark as referred to in
- paragraph 1 may be prohibited pursuant to Articles 110 and
- 111, if the earlier trade mark or other earlier right was registered,
- applied for or acquired in good faith in the new Member State
- prior to the date of accession of that State; or, where applicable,
- has a priority date prior to the date of accession of that State.
- Article 166
- Provisions relating to the enlargement of the Community
- 1. As from the date of accession of Bulgaria, the Czech
- Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta,
- Poland, Romania, Slovenia and Slovakia (hereinafter referred to
- as ‘new Member State(s)’), a Community trade mark registered or
- applied for pursuant to this Regulation before the respective
- dates of accession shall be extended to the territory of those
- Member States in order to have equal effect throughout the
- Community.
- 2. The registration of a Community trade mark which is under
- application at the date of accession may not be refused on the
- basis of any of the absolute grounds for refusal listed in Article 7(1), if these grounds became applicable merely because of
- the accession of a new Member State.
- 3. Where an application for the registration of a Community
- trade mark has been filed during the six months prior to the date
- of accession, notice of opposition may be given pursuant to
- Article 41 where an earlier trade mark or another earlier right
- Repeal
- Regulation (EC) No 40/94, as amended by the instruments set
- out in Annex I, is repealed.
- References to the repealed Regulation shall be construed as
- references to this Regulation and shall be read in accordance with
- the correlation table in Annex II.
- Article 167
- Entry into force
- 1. This Regulation shall enter into force on the 20th day
- following its publication in the Official Journal of the European
- Union.
- 2. The Member States shall within three years following entry
- into force of Regulation (EC) No 40/94 take the necessary
- measures for the purpose of implementing Articles 95 and 114.
- This Regulation shall be binding in its entirety and directly applicable in all Member States.
- Done at Brussels, 26 February 2009.
- For the Council
- The President
- I. LANGER
- L 78/38
- Official Journal of the European Union
- EN
- ANNEX I
- Repealed Regulation with list of its successive amendments
- (referred to in Article 166)
- Council Regulation (EC) No 40/94
- (OJ L 11, 14.1.1994, p. 1)
- Council Regulation (EC) No 3288/94
- (OJ L 349, 31.12.1994, p. 83)
- Council Regulation (EC) No 807/2003
- (OJ L 122, 16.5.2003, p. 36)
- Only point 48 of Annex III
- Council Regulation (EC) No 1653/2003
- (OJ L 245, 29.9.2003, p. 36)
- Council Regulation (EC) No 1992/2003
- (OJ L 296, 14.11.2003, p. 1)
- Council Regulation (EC) No 422/2004
- (OJ L 70, 9.3.2004, p. 1)
- Council Regulation (EC) No 1891/2006
- (OJ L 386, 29.12.2006, p. 14)
- Annex II, Part 4 (C)(I) of the 2003 Act of Accession
- (OJ L 236, 23.9.2003, p. 342)
- Annex III, Point 1.I of the 2005 Act of Accession
- (OJ L 157, 21.6.2005, p. 231)
- Only Article 1
- 24.3.2009
- 24.3.2009
- Official Journal of the European Union
- EN
- L 78/39
- ANNEX II
- Correlation Table
- Regulation (EC) No 40/94
- Articles 1 to 14
- This Regulation
- Articles 1 to 14
- Article 15(1)
- Article 15(1), first subparagraph
- Article 15(2), introductory words
- Article 15(1), second subparagraph, introductory words
- Article 15(2), point a
- Article 15(1), second subparagraph, point a
- Article 15(2), point b
- Article 15(1), second subparagraph, point b
- Article 15(3)
- Article 15(2)
- Articles 16 to 36
- Articles 16 to 36
- Article 37
- —
- Article 38
- Article 37
- Article 39
- Article 38
- Article 40
- Article 39
- Article 41
- Article 40
- Article 42
- Article 41
- Article 43
- Article 42
- Article 44
- Article 43
- Article 44a
- Article 44
- Articles 45 to 48
- Articles 45 to 48
- Article 48a
- Article 49
- Article 49
- Article 50
- Article 50
- Article 51
- Article 51
- Article 52
- Article 52
- Article 53
- Article 53
- Article 54
- Article 54
- Article 55
- Article 55
- Article 56
- Article 56
- Article 57
- Article 57
- Article 58
- Article 58
- Article 59
- Article 59
- Article 60
- Article 60
- Article 61
- Article 60a
- Article 62
- Article 61
- Article 63
- Article 62
- Article 64
- Article 63
- Article 65
- Article 64
- Article 66
- Article 65
- Article 67
- Article 66
- Article 68
- Article 67
- Article 69
- Article 68
- Article 70
- Article 69
- Article 71
- Article 70
- Article 72
- Article 71
- Article 73
- Article 72
- Article 74
- L 78/40
- Official Journal of the European Union
- EN
- Regulation (EC) No 40/94
- 24.3.2009
- This Regulation
- Article 73
- Article 75
- Article 74
- Article 76
- Article 75
- Article 77
- Article 76
- Article 78
- Article 77
- Article 79
- Article 77a
- Article 80
- Article 78
- Article 81
- Article 78a
- Article 82
- Article 79
- Article 83
- Article 80
- Article 84
- Article 81
- Article 85
- Article 82
- Article 86
- Article 83
- Article 87
- Article 84
- Article 88
- Article 85
- Article 89
- Article 86
- Article 90
- Article 87
- Article 91
- Article 88
- Article 92
- Article 89
- Article 93
- Article 90
- Article 94
- Article 91
- Article 95
- Article 92
- Article 96
- Article 93
- Article 97
- Article 94(1), introductory wording
- Article 98(1), introductory wording
- Article 94(1), first indent
- Article 98(1)(a)
- Article 94(1), second indent
- Article 98(1)(b)
- Article 94(2)
- Article 98(2)
- Article 95
- Article 99
- Article 96
- Article 100
- Article 97
- Article 101
- Article 98
- Article 102
- Article 99
- Article 103
- Article 100
- Article 104
- Article 101
- Article 105
- Article 102
- Article 106
- Article 103
- Article 107
- Article 104
- Article 108
- Article 105
- Article 109
- Article 106
- Article 110
- Article 107
- Article 111
- Article 108
- Article 112
- Article 109
- Article 113
- Article 110
- Article 114
- Article 111
- Article 115
- Article 112
- Article 116
- Article 113
- Article 117
- Article 114
- Article 118
- 24.3.2009
- Official Journal of the European Union
- EN
- Regulation (EC) No 40/94
- L 78/41
- This Regulation
- Article 115
- Article 119
- Article 116
- Article 120
- Article 117
- Article 121
- Article 118
- Article 122
- Article 118a
- Article 123
- Article 119
- Article 124
- Article 120
- Article 125
- Article 121(1) and (2)
- Article 126(1) and (2)
- Article 121(3)
- —
- Article 121(4)
- Article 126(3)
- Article 121(5)
- Article 126(4)
- Article 121(6)
- Article 126(5)
- Article 122
- Article 127
- Article 123
- Article 128
- Article 124
- Article 129
- Article 125
- Article 130
- Article 126
- Article 131
- Article 127
- Article 132
- Article 128
- Article 133
- Article 129
- Article 134
- Article 130
- Article 135
- Article 131
- Article 136
- Article 132
- Article 137
- Article 133
- Article 138
- Article 134
- Article 139
- Article 135
- Article 140
- Article 136
- Article 141
- Article 137
- Article 142
- Article 138
- Article 143
- Article 139
- Article 144
- Article 140
- Article 145
- Article 141
- Article 146
- Article 142
- Article 147
- Article 143
- Article 148
- Article 144
- Article 149
- Article 145
- Article 150
- Article 146
- Article 151
- Article 147
- Article 152
- Article 148
- Article 153
- Article 149
- Article 154
- Article 150
- Article 155
- Article 151
- Article 156
- Article 152
- Article 157
- Article 153
- Article 158
- Article 154
- Article 159
- Article 155
- Article 160
- Article 156
- Article 161
- L 78/42
- Official Journal of the European Union
- EN
- Regulation (EC) No 40/94
- 24.3.2009
- This Regulation
- Article 157(1)
- Article 162(1)
- Article 157(2), introductory wording
- Article 162(2), introductory wording
- Article 157(2)(2)
- Article 162(2)(a)
- Article 157(2)(3)
- Article 162(2)(b)
- Article 157(2)(5)
- Article 162(2)(c)
- Article 157(2)(6)
- Article 162(2)(d)
- Article 157(2)(7)
- Article 162(2)(e)
- Article 157(2)(8)
- Article 162(2)(f)
- Article 157(2)(9)
- Article 162(2)(g)
- Article 157(2)(10)
- Article 162(2)(h)
- Article 157(2)(11)
- Article 162(2)(i)
- Article 157(2)(12)
- Article 162(2)(j)
- Article 157(2)(13)
- Article 162(2)(k)
- Article 157(2)(14)
- Article 162(2)(l)
- Article 157(3)
- Article 162(3)
- Article 158
- Article 163
- Article 159
- Article 164
- Article 159a(1), (2) and (3)
- Article 165(1), (2) and (3)
- Article 159a(4), initial wording
- Article 165(4), initial wording
- Article 159a(4), first indent
- Article 165(4)(a)
- Article 159a(4), second indent
- Article 165(4)(b)
- Article 159a(5)
- Article 165(5)
- —
- Article 166
- Article 160(1)
- Article 167(1)
- Article 160(2)
- Article 167(2)
- Article 160(3) and (4)
- —
- —
- Annex I
- —
- Annex II
|