D'AGOSTINI ORGANIZZAZIONE S.r.L.
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D'AGOSTINI ORGANIZZAZIONE SL
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This is an easy to use European TMark Information.
For exact data information you have to refer to the Official Pubblications as
original sources.
Community Trade Mark
Go to EC Council Regulation No. 40/94 of 20.12.1993
Brussels, 13 December 1995
Rules Implementing EEC Regulation No. 40/94 of 20.12.1993
THE COMMISSION OF THE EUROPEAN
COMMUNITIES,
Having regard to the Treaty establishing the European Community,
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the
Community trade mark 1 as amended by Regulation (EC) No 3288/94 2, and in
particular Article 140 thereof,
Whereas Regulation (EC) No 40/94 (herein after 'the Regulation') creates a new
trade mark system allowing a trade mark having effect throughout the Community
to be obtained on the basis of- an application to the Office for Harmonization
in the Internal Market (trade marks and designs) ('the Office');
Whereas for this purpose, the Regulation contains the necessary provisions for
a procedure leading to the registration of a Community trade mark, as well as
for the administration of Community trade marks, for appeals against decisions
of the Office and for proceedings for the revocation or invalidation of a
Community trade mark;
Whereas Article 140 of the Regulation provides that the rules implementing the
Regulation shall be adopted in an implementing regulation;
Whereas the implementing regulation is to be adopted in accordance with the
procedure laid down in Article 141 of the Regulation;
Whereas this implementing regulation therefore lays down the rules necessary
for implementing the provisions of the Regulation on the Community trade mark;
Whereas these rules should ensure the smooth and efficient operating of trade
mark proceedings before the Office;
Whereas in accordance with Article 116 (1) of the Regulation, all the elements
of the application for a Community trade mark specified in its Article 26 (1)
as well as any other information the publication of which is prescribed by this
implementing regulation should be published in all the official languages of
the Community;
Whereas, however, it is not appropriate for the trade mark itself, names,
addresses, dates and any other similar data to be translated and published in
all the official languages of the Community;
Whereas the Office should make available standard forms for proceedings before
the Office in all official languages of the Community;
Whereas the measures envisaged in this Regulation are in. accordance with the
opinion of the Committee established under Article 141 of the Regulation,
HAS ADOPTED THIS REGULATION:
Article 1
The rules implementing the Regulation shall be as follows:
TITLE I
APPLICATION PROCEDURE
Rule 1
Content of the application
(1) The application for a Community trade mark shall contain:
(a) a request for registration of the mark as a Community trade mark;
(b) the name, address and nationality of the applicant and the State in which
he is domiciled or has his seat or an establishment. Names of natural persons
shall be indicated by the person's family name and given name(s). Names of
legal entities, as well as bodies falling under Article 3 of the Regulation,
shall be indicated by their official designation, which may be abbreviated in a
customary manner; furthermore, the law of the State governing them shall be
indicated. The telegraphic and teletype address, telephone as well as fax
numbers and details of other data communications links may be given. Only one
address shall, in principle, be indicated for each applicant; where several
addresses are indicated, only the address mentioned first shall be taken into
account, except where the applicant designates one of the addresses as an
address for service;
(c) a list of the goods and services for which the trade mark is to be
registered, in accordance with Rule 2;
(d) a representation of the mark in accordance with Rule 3;
(e) if the applicant has appointed a representative, his name and the address
of his place of business in accordance with point (b); if the representative
has more than one business address or if there are two or more representatives
with different business addresses, the application shall indicate which address
shall be used as an address for service; where such an indication is not made,
only the first-mentioned address shall be taken into account as an address for
service;
(f) where the priority of a previous application is claimed pursuant to Article
30 of the Regulation, a declaration to that effect, stating the date on which
and the country in or for which the previous application was filed;
(g) where exhibition priority is claimed pursuant to Article 33 of the
Regulation, a declaration to that effect, stating the name of the exhibition
and the date of the first display of the goods or services;
(h) where the seniority of one or more earlier trade marks, 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
(hereinafter referred to as 'earlier registered trade marks, as referred to in
Article 34 of the Regulation') is claimed pursuant to Article 34 of the
Regulation, a declaration to that effect, stating the Member State or Member
States in or for which the earlier mark is registered, the date from which the
relevant registration was effective, the number of the relevant registration,
and the goods and services for which the mark is registered;
(i) where applicable, a statement that the application is for registration of a
Community collective mark pursuant to Article 64 of the Regulation;
(j) specification of the language in which the application has been filed, and
of the second language pursuant to Article 115 (3) of the Regulation;
(k) the signature of the applicant or his representative.
(2) The application for a Community collective mark may include the regulations
governing its use.
(3) The application may include a statement by the applicant that he disclaims
any exclusive right to an element of the trade mark which is not distinctive,
to be specified by the applicant.
(4) If there is more than one applicant, the application may contain the
appointment of one applicant or representative as common representative.
Rule 2
List of goods and services
(1) The common classification referred to in Article 1 of the Nice Agreement
Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks of 15 June 1957, as revised and amended,
shall be applied to the classification of the goods and services.
(2) The list of goods and services shall be worded in such a way as to indicate
clearly the nature of the goods and services and to allow each item to be
classified in only one class of the Nice Classification.
(3) The goods and services shall, in principle, be grouped according to the
classes of the Nice classification, each group being preceded by the number of
the class of that Classification to which that group of goods or services
belongs and presented in the order of the classes under that Classification.
(4) The classification of goods and services shall serve exclusively
administrative purposes. Therefore, goods and services may not be regarded as
being similar to each other on the ground that they appear in the same class
under the Nice Classification, and goods and services may not be regarded as
being dissimilar from each other on the ground that they appear in different
classes under the Nice Classification.
Rule 3
Representation of the mark
(1) If the applicant does not wish to claim any special graphic feature or
colour, the mark shall be reproduced in normal script, as for example, by
typing the letters, numerals and signs in the application. The use of small
letters and capital letters shall be permitted and shall be followed
accordingly in publications of the mark and in the registration by the Office.
(2) In cases other than those referred to in paragraph 1, the mark shall be
reproduced on a sheet of paper separate from the sheet on which the text of the
application appears. The sheet on which the mark is reproduced shall not exceed
DIN A4 size (29,7 cm high, 21 cm wide) and the space used for the reproduction
(type-area) shall not be larger than 26,2 cm x 17 cm. A margin of at least 2,5
cm shall be left on the left-hand side. Where it is not obvious, the correct
position of the mark shall be indicated by adding the word 'top' to each
reproduction. The reproduction of the mark shall be of such quality as to
enable it to be reduced or enlarged to a size not more than 8 cm wide by 16 cm
high for publication in the Community Trade Mark Bulletin. The separate sheet
shall also indicate the name and address of the applicant. Four copies of the
separate sheet carrying the reproduction shall be filed.
(3), In cases to which paragraph 2 applies, the application shall contain an
indication to that effect. The application may contain a description of the
mark.
(4) Where registration of a three-dimensional mark is applied for, the
application shall contain an indication to that effect. The representation
shall consist of a photographic reproduction or a graphic representation of the
mark. The representation may contain up to six different perspectives of the
mark.
(5) Where registration in colour is applied for, the application shall contain
an indication to that effect. The colours making up the mark shall also be
indicated. The reproduction under paragraph 2 shall consist of the colour
reproduction of the mark.
(6) The President of the Office may determine that, as far as the requirements
of paragraph 2 are concerned, the mark may be reproduced in the text of the
application itself and not on a separate sheet of paper and that the the number
of copies of the reproduction of the mark may be less than four.
Rule 4
Fees for the application
The fees payable for the application shall be:
(a) the basic fee;
and
(b) a class fee for each class exceeding three to which the goods or services
belong according to Rule 2.
Rule 5
Filing of the application
(1) The Office shall mark the documents making up the application with the date
of its receipt and the file number of the application. The Office shall issue
to the applicant without delay a receipt which shall include at least the file
number, a representation, description or other identification of the mark, the
nature and the number of the documents and the date of their receipt.
(2) If the application is filed with the central industrial property office of
a Member Sate or at the Benelux Trade Mark Office in accordance with Article 25
of the Regulation, the office of filing shall number all the pages of the
application with arabic numerals. Before forwarding, the office of filing shall
mark the documents making up the application with the date of receipt and the
number of pages. The office of filing shall issue to the applicant without
delay a receipt which shall include at least the nature and the number of the
documents and the date of their receipt.
(3) If the Office receives an application forwarded by the central industrial
property office of a Member State or the Benelux Trade Mark Office, it shall
mark the application with the date of receipt and the file number and shall
issue to the applicant without delay a receipt in accordance with the second
sentence of paragraph 1, indicating the date of receipt at the Office.
Rule 6
Claiming priority
(1) Where the priority of one or more previous applications pursuant to Article
30 of the Regulation is claimed in the application, the applicant shall
indicate the file number of the previous application and file a copy of it
within three months from the filing date. The copy shall be certified to be an
exact copy of the previous application by the authority which received the
previous application, and shall be accompanied by a certificate issued by that
authority stating the date of filing- of the previous application.
(2) Where the applicant wishes to claim the priority of one or more previous
applications pursuant to Article 30 of the Regulation subsequent to the filing
of the application, the declaration of priority, stating the date on which and
the country in or for which the previous application was made, shall be
submitted within a period of two months from the filing date. The indications
and evidence required under paragraph 1 shall be submitted to the Office within
a period of three months from receipt of the declaration of priority.
(3) If the language of the previous application is not one of the languages of
the Office, the Office shall require the applicant to file, within a period
specified by the Office, which shall be not less than three months, a
translation of the previous application into one of these languages.
(4) The President of the Office may determine that the evidence to be provided
by the applicant may consist of less than is required under paragraph 1,
provided that the information required is available to the Office from other
sources.
Rule 7
Exhibition priority
(1) Where the exhibition priority pursuant to Article 33 of the Regulation has
been claimed in the application, the applicant shall, within three months from
the filing date, file a certificate issued at the exhibition by the authority
responsible for the protection of industrial property at the exhibition. This
certificate shall declare that the mark was in fact used for the goods or
services, and shall state the opening date of the exhibition and, where the
first public use did not coincide with the opening date of the exhibition, the
date of such first public use. The certificate must be accompanied by an
identification of the actual use of the mark, duly certified by the
abovementioned authority.
(2) Where the applicant wishes to claim an exhibition priority subsequently to
the filing of the application, the declaration of priority, indicating the name
of the exhibition and the date of the first display of the goods or services,
shall be submitted within a period of two months from the filing date. The
indications and evidence required under paragraph 1 shall be submitted to the
Office within a period of three months from receipt of the declaration of
priority.
Rule 8
Claiming the seniority of a national trade mark
(1) Where the seniority of one or more earlier registered trade marks, as
referred to in Article 34 of the Regulation, has been claimed in the
application, the applicant shall, within three months from the filing date,
submit a copy of the relevant registration. The copy must be certified by the
competent authority to be an exact copy of the relevant registration.
(2) Where the applicant wishes to claim the seniority of one or more earlier
registered trade marks as referred to in Article 34 of the Regulation,
subsequent to the filing of the application, the declaration of seniority,
indicating the Member State or Member States in or for which the mark is
registered, the date from which the relevant registration was effective, the
number of the relevant registration, and the goods and services for which the
mark is registered, shall be submitted within a period of two months from the
filing date. The evidence required under paragraph 1 shall be submitted to the
Office within a period of three months from receipt of the declaration of
seniority.
(3) The Office shall inform the Benelux Trade Mark Office or the central
industrial property office of the Member State concerned of the effective
claiming of seniority.
(4) The President of the Office may determine that the evidence to be provided
by the applicant may consist of less than is required under paragraph 1,
provided that the information required is available to the Office from other
sources.
Rule 9
Examination of requirements for a filing date and of
formal requirements
(1) If the application fails to meet the requirements for according a filing
date because:
(a) the application does not contain:
(i) a request for registration of the mark as a
Community trade mark;
(ii) information identifying the applicant;
(iii) a list of the goods and services for which the
mark is to be registered;
(iv) a representation of the trade mark; or
(b) the basic fee for the application has not been paid within one month of the
filing of the application with the Office or, if the application has been filed
with the central industrial property office of a Member State or with the
Benelux Trade Mark Office, with that office, the Office shall notify the
applicant that a date of filing cannot be accorded in view of those
deficiencies.
(2) If the deficiencies referred to under paragraph 1 are remedied within two
months of receipt of the notification, the date on which all the deficiencies
are remedied shall determine the date of filing. If the deficiencies are not
remedied before the time limit expires, the application shall not be dealt with
as a Community trade mark application. Any fees paid shall be refunded.
(3) Where, although a date of filing has been accorded, the examination reveals
that
(a) the requirements of Rules 1, 2 and 3 or the other formal requirements
governing applications laid down in the Regulation or in these Rules are not
complied with;
(b) the full amount of the class fees payable under Rule 4 (b), read in
conjunction with Commission Regulation (EC) No 2869/95 3 (hereinafter 'the Fees
Regulation') has not been received by the Office;
(c) where priority has been claimed pursuant to Rules 6 and 7, either in the
application itself or within two months after the date of filing, the other
requirements of the said Rules are not complied with; or
(d) where seniority has been claimed pursuant to Rule 8, either in the
application itself or within two months after the date of filing, the other
requirements of Rule 8 are not complied with, the Office shall invite the
applicant to remedy the deficiencies noted within such period as it may
specify.
(4) If the deficiencies referred to in paragraph 3 (a) are not remedied before
the time limit expires, the Office shall reject the application.
(5) If the outstanding class fees are not paid before the time limit expires,
the application shall be deemed to have been withdrawn, unless it is clear
which class or classes the amount paid is intended to cover. In the absence of
other criteria to determine which classes are intended to be covered, the
Office shall take the classes in the order of the classification. The
application shall be deemed to have been withdrawn with regard to those classes
for which the class fees have not been paid or have not been paid in full.
(6) If the deficiencies referred to in paragraph 3 concern the claim to
priority, the right of priority for the application shall be lost.
(7) If the deficiencies referred to in paragraph 3 concern the claim to
seniority, the right of seniority in respect of that application shall be lost.
(8) If the deficiencies referred to in paragraph 3 concern only some of the
goods and services, the Office shall refuse the application, or the right of
priority or the right of seniority shall be lost, only in so far as those goods
and services are concerned.
Rule 10
Examination of the conditions relating to the entitlement
to be proprietor
Where, pursuant to Article 5 of the Regulation, the applicant is not entitled
to be the proprietor of a Community trade mark, the Office shall notify the
applicant thereof. The Office shall specify a period within which the applicant
may withdraw the application or submit his observations. Where the applicant
fails to overcome the objections to registration, the Office shall refuse the
application.
Rule 11
Examination as to absolute grounds for refusal
(1) Where, pursuant to Article 7 of the Regulation, the trade mark may not be
registered for all or any part of the goods or services applied for, the office
shall notify the applicant of the grounds for refusing registration. The Office
shall specify a period within which the applicant may withdraw or amend the
application or submit his observations.
(2) Where, pursuant to Article 38 (2) of the Regulation, registration of the
Community trade mark is subject to the applicant's stating that he disclaims
any exclusive right in the non-distinctive elements in the mark, the Office
shall notify the applicant thereof, stating the reasons, and shall invite him
to submit the relevant statement within such period as it may specify.
(3) Where the applicant fails to overcome the ground for refusing registration
or to comply with the condition laid down in paragraph 2 within the time limit,
the Office shall refuse the application in whole or in part.
Rule 12
Publication of the application
The publication of the application shall contain:
(a) the applicant's name and address;
(b) where applicable, the name and business address of the representative
appointed by the applicant other than a representative falling within the first
sentence of Article 88 (3) of the Regulation; if there is more than one
representative with the same business address, only. the name and business
address of the first-named representative shall be published and it shall be
followed by the words 'and others'; if there are two or more representatives
with different business addresses, only the address for service determined
pursuant to Rule 1 (1) -(e) shall be published; where an association of
representatives is appointed under Rule 76 (9), only the name and business
address of the association shall be published;
(c) the reproduction of the mark, together with the indications and
descriptions pursuant to Rule 3; where registration in colour is applied for,
the publication shall contain the indication 'in colour' and indicate the
colour or colours making up the mark;
(d) the list of goods and services, grouped according to the classes of the
Nice classification, each group being preceded by the number of the class of
that classification to which that group of goods or services belongs, and
presented in the order of the classes of that classification;
(e) the date of filing and the file number;
(f) where applicable, particulars of the claim of priority pursuant to Article
30 of the Regulation;
(g) where applicable, particulars of the claim of exhibition priority pursuant
to Article 33 of the Regulation;
(h) where applicable, particulars of the claim of seniority pursuant to Article
34 of the Regulation;
(i) where applicable, a statement that the mark has become distinctive in
consequence of the use which has been made of it, pursuant to Article 7 (3) of
the Regulation;
(j) where applicable, a statement that the application is for a Community
collective mark;
(k) where applicable, a statement by the applicant disclaiming any exclusive
right to an element of the mark pursuant to Rule 1 (3) or Rule 11 (2);
(I) the language in which the application was filed and the second language
which the applicant has indicated pursuant to Article 115 (3) of the
Regulation.
Rule 13
Amendment of the application
(1) An application for amendment of the application under Article 44 of the
Regulation shall contain:
(a) the file number of the application;
(b) the name and the address of the applicant in accordance with Rule 1 (1)
(b);
(c) where the applicant has appointed a representative, the name and the
business' address of the representative in accordance with Rule 1 (1) (e);
(d) the indication of the element of the application to be corrected or
amended, and that element in its corrected or amended version;
(e) where the amendment relates to the representation of the mark, a
representation of the mark as amended, in accordance with Rule 3.
(2) Where the application for amendment is subject to the payment of a fee, the
application shall not be deemed to have been filed until the required fee has
been paid. If the fee has not been paid or has not been paid in full, the
Office shall inform the applicant accordingly.
(3) If the requirements governing the amendment of the application are not
fulfilled, the Office shall communicate the deficiency to the applicant. If the
deficiency is not remedied within a period to be specified by the Office, the
Office shall reject the application for amendment.
(4) Where the amendment is published pursuant to Article 44 (2) of the
Regulation, Rules 15 to 22 shall apply mutatis mutandis.
(5) A single application for amendment may be made for the amendment of the
same element in two or more applications of the same applicant. Where the
application for amendment is subject to the payment of a fee, the required fee
shall be paid in respect of each application to be amended.
(6) Paragraphs 1 to 5 shall apply mutatis mutandis for applications to correct
the name or the business address of a representative appointed by the
applicant. Such applications shall not be subject to the payment of a fee.
Rule 14
Correction of mistakes and errors in publications
(1) Where the publication of the application contains a mistake or error
attributable to the Office, the Office shall correct the mistake or error
acting of its own motion or at the request of the applicant.
(2) Where a request as referred to in paragraph 1 is made by the applicant,
Rule 13 shall apply mutatis mutandis. The request shall not be subject to the
payment of a fee.
(3) The corrections effected under this Rule shall be published.
(4) Article 42 (2) of the Regulation and Rules 15 to 22 shall apply mutatis
mutandis where the correction concerns the list of goods or services or the
representation of the mark.
TITLE II
PROCEDURE FOR OPPOSITlON AND PROOF OF USE
Rule 15
Contents of the notice of opposition
(1) Opposition may be entered on the basis of one or more earlier marks within
the meaning of Article 8 (2) of the Regulation ('earlier marks') or of one or
more other earlier rights within the meaning of Article 8 (4) of the Regulation
('earlier rights').
(2) The notice of opposition shall contain:
(a) as concerns the application against which opposition is entered:
(i) the file number of the application against which
opposition is entered;
(ii) an indication of the goods and services listed in
the Community trade mark application against
which opposition is entered;
(iii) the name of the applicant for the Community
trade mark;
(b) as concerns the earlier mark or the earlier right on which the opposition
is based:
(i) where the opposition is based on an earlier mark, a statement to that
effect and an
indication that the earlier mark is a Community mark or an indication of the
Member State or Member States including, where applicable, the Benelux, where
the earlier mark has been registered or applied for, or, where the earlier mark
is an internationally registered mark, an indication of the Member State or
Member States including, where applicable, the Benelux, to which protection of
that earlier mark has been extended;
(ii) where available, the file number or the registration number and the filing
date, including the priority date of the earlier mark;
(iii) where the opposition is based on an earlier mark which is a well-known
mark within the meaning of Article 8 (2) (c) of the Regulation, an indication
to that effect and an indication of the
Member State or Member States in which the earlier mark is well-known;
(iv) where the opposition is based on an earlier mark having a reputation
within the meaning of Article 8 (5) of the Regulation, an indication to that
effect, and an indication of where that earlier mark is registered or applied
for in accordance with subparagraph (i);
(v) where the opposition is based on an earlier right, an indication to that
effect, and an indication of the Member State or Member States where that
earlier right exists;
(vi) a representation and, where appropriate, a description of the earlier mark
or earlier right;
(vii) the goods and services in respect of which the earlier mark has been
registered or applied for or in respect of which - the earlier mark is
well-known within the meaning of Article 8 (2)
(c) of the Regulation or has a reputation within the meaning of Article 8 (5)
of the Regulation; the opposing party shall, when indicating all the goods and
services for which the earlier mark is protected, also indicate those goods and
services on which the opposition is based;
(c) as concerns the opposing party:
(i) where the opposition is entered by the proprietor of the earlier mark or of
the earlier right, his name and address in accordance with Rule 1 (1) (b) and
an indication that he is the proprietor of such mark or right;
(ii) where opposition is entered by a licensee. the name of the licensee and
his address in accordance with Rule 1 (1) (b) and an indication that he has
been authorized to enter the opposition;
(iii) where the opposition is entered by the successor in title to the
registered proprietor of a Community trade mark who has not yet been registered
as new proprietor, an indication to that effect, the name and address of the
opposing party in accordance with Rule 1 (1) (b), and an indication of the date
on which the application for registration of the new proprietor was received by
the Office or, where this information is not available, was sent to the Office;
(iv) where opposition is entered on the basis of an earlier right by a person
who is not the proprietor of that right, the name of the person and his address
in accordance with Rule 1 (1) (b) and an indication that the is entitled under
the relevant national law to exercise that right;
(v) where the opposing party has appointed a representative, the name of the
representative and his business in accordance with Rule 1 (1)
(e);
(d) a specification of the grounds on which the opposition is based.
(3) Paragraphs 1 and 2 shall apply mutatis mutandis to an opposition entered pursuant
to Article 8 (3) of the Regulation.
Rule 16
Facts, evidence and arguments presented in support of the opposition
(1) Every notice of opposition may contain particulars of the facts, evidence
and arguments presented in support of the opposition, accompanied by the
relevant supporting documents.
(2) If the opposition is based on an earlier mark which is not a Community
trade mark, the notice of opposition shall preferably be accompanied by
evidence of the registration or filing of that earlier mark, such as a
certificate of registration. If the opposition is based on a well-known mark as
referred to in Article 8 (2) (c) of the Regulation or on a mark having a
reputation as referred to in Article 8 (5) of the Regulation, the notice of
opposition shall in principle be accompanied by evidence attesting that it is
well-known or that it has a reputation. If the opposition is entered on the
basis of any other earlier right, the notice of opposition shall in principle
be accompanied by appropriate evidence on the acquisition and scope of
protection of that right.
(3) The particulars of the facts, evidence and arguments - and other supporting
documents as referred to in paragraphs 1, and the evidence referred to in
paragraph 2 may, if they are not submitted together with the notice of
opposition or subsequent thereto, be submitted within such period after
commencement of the opposition proceedings as the Office may specify pursuant
to Rule 20 (2).
Rule 17
Use of languages in opposition proceedings
(1) Where the notice of opposition is not filed in the language of the
application for registration of the Community trade mark, if that language is
one of the languages of the Office, or in the second language indicated when
the application was filed, the opposing party shall file a translation of the
notice of opposition in one of those languages within a period of one month
from the expiry of the opposition period.
(2) Where the evidence in support of the opposition as provided for in Rule 16
(1) and (2) is not filed in the language of the opposition proceedings, the
opposing party shall file a translation of that evidence into that language
within a period of one month from the expiry of the opposition period or, where
applicable, within the period specified by the Office pursuant to Rule 16 (3).
(3) Where the opposing party or the applicant informs the Office, before the
date on which the opposition proceedings shall be deemed to commence pursuant
to Rule 19 (1), that the applicant and the opposing party have agreed on a
different language for the opposition proceeding pursuant to Article 115 (7) of
the Regulation, the opposing party shall, where the notice of opposition has
not been filed in that language, file a translation of the notice of opposition
in that language within a period of one month from the said date.
Rule 18
Rejection of notice of opposition as inadmissible
(1) If the Office finds that the notice of opposition does not comply with the
provisions of Article 42 of the Regulation, or where the notice of opposition
does not clearly identify the application against which opposition is entered
or the earlier mark or the earlier right on the basis of which the opposition
is being entered, the Office shall reject the notice of opposition as inadmissible
unless those deficiencies have been remedied before expiry of the opposition
period. If the opposition fee has not been paid within the opposition period,
the notice of opposition shall be deemed not to have been entered. If the
opposition fee has been paid after the expiry of the opposition period, it
shall be refunded to the opposing party.
(2) If the Office finds that the notice of opposition does not comply with
other provisions of the Regulation or of these Rules, it shall inform the
opposing party accordingly and shall call upon him to remedy the deficiencies
noted within a period of two months. If the deficiencies are not remedied
before the time limit expires, the Office shall reject the notice of opposition
as inadmissible.
(3) Any decision to reject a notice of opposition as inadmissible under
paragraphs 1 or 2 shall be communicated to the applicant.
Rule 19
Commencement of opposition proceedings
(1) If the Office does not reject the notice of opposition in accordance with
Rule 18, it shall communicate the opposition to the applicant and shall invite
him to file his observations within such period as it may specify. The Office
shall draw the applicant's attention to the fact that the opposition
proceedings shall be deemed to commence two months after receipt of the
communication, unless the applicant informs the Office, before the expiry of
this period, that he withdraws his application or restricts the application to
goods and services against which the opposition is not directed.
(2) The Office may, pursuant to Rule 71, grant an extension of the period
referred to in the second sentence of paragraph 1 where such request is
presented jointly by the applicant and the opposing party.
(3) There the application is withdrawn or restricted within the period
specified in the second sentence of paragraph 1 or within any extension of that
period granted under paragraph 2, the Office shall inform the opposing party
accordingly and shall refund the opposition fee.
Rule 20
Examination of opposition
(1) If the application is not withdrawn or restricted pursuant to Rule 19, the
applicant shall file his observations within the period specified by the Office
in its communication referred to in the first sentence of Rule 19 (1).
(2) Where the notice of opposition does not contain particulars of the facts,
evidence and arguments as referred to in Rule 16 (1) and (2), the Office shall
call upon the opposing party to submit such particulars within a period
specified by the Office. Any submission by the opposing party shall be
communicated to the applicant who shall be given an opportunity to reply within
a period specified by the Office.
(3) If the applicant files no observations, the Office may give a ruling on the
opposition on the basis of the evidence before it.
(4) The observations filed by the applicant shall be communicated to the
opposing party who shall be called upon by the Office, if it considers it
necessary to do so, to reply within a period specified by the Office.
(5) If, pursuant to Article 44 (1) of the Regulation, the applicant restricts
the list of goods and services, the Office shall communicate this to the
opposing party and call upon him, within such period as it may specify, to
submit observations stating whether--he maintains the opposition and, if so,
against which of the remaining goods and services.
(6) The Office may suspend any opposition proceeding where the opposition is
based on an application for registration pursuant to Article 8 (2) (b) of the
Regulation until a final decision is taken in that proceeding, or where other
circumstances are such that such suspension is appropriate.
Rule 21
Multiple oppositions
(1) Where a number of oppositions have been entered in respect of the same
application for a Community trade mark, the Office may deal with them in one
set of proceedings. The Office may subsequently decide to no longer deal with
them in this way.
(2) If a preliminary examination of one or more oppositions reveals that the
Community trade mark for which an application for registration has been filed
is possibly not eligible for registration in respect of some or all of the
goods or services for which registration is sought, the Office may suspend the
other opposition proceedings. The Office shall inform the remaining opposing
parties of any relevant decisions taken during those proceedings which are
continued.
(3) Once a decision rejecting the application has become final, the oppositions
on which a decision was deferred in accordance with paragraph 2 shall be deemed
to have been disposed of and the opposing parties concerned shall be informed
accordingly. Such disposition shall be considered to constitute a case which
has not proceeded to judgement within the meaning of Article 81 (4) of the
Regulation.
(4) The Office shall refund 50% of the opposition fee paid by each opposing
party whose opposition is deemed to have been disposed of in accordance with
paragraphs 1, 2 and 3.
Rule 22
Proof of use
(1) Where, pursuant to Article 43 (2) or (3) of the Regulation, the opposing
party has to furnish proof of use or show that there are proper reasons for
non-use, the Office shall invite him to provide the proof required within such
period as it shall specify. If the opposing party does not provide such proof
before the time limit expires, the Office shall reject the opposition.
(2) The indications and evidence for the furnishing of proof of use shall
consist of indications concerning the place, time, extent and nature of use of
the opposing trade mark for the goods and services in respect of which it is
registered and on which the opposition is based, and evidence in support of
these indications in accordance with paragraph 3.
(3) The evidence shall, in principle, be confined to the submission of
supporting documents and items such as packages, labels, price lists,
catalogues, invoices, photographs, newspaper advertisements, and statements in
writing as referred to in Article 76 (1) (f) of the Regulation.
(4) Where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the
language of the opposition proceedings, the Office may require the opposing
party to submit a translation of that evidence in that language, within a
period specified by the Office.
TITLE III
REGISTRATION PROCEDURE
Rule 23
Registration of the trade mark
(1) The registration fee provided for in Article 45 of the Regulation shall
consist of
(a) a basic fee;
and
(b) a class fee for each class exceeding three in respect of which the mark is
to be registered.
(2) Where no opposition has been entered or where any opposition entered has
been finally disposed of by withdrawal, rejection or other disposition, the
Office shall request the applicant to pay the registration of within two months
of receipt of the request.
(3) If the registration fee is not paid within due time, it may still be
validly paid within two months of notification of a communication pointing out
the failure to observe the time limit, provided that within this period the
additional fee specified in the Fees Regulations is paid.
(4) On receipt of the registration fee the mark applied for and the particulars
referred to in Rule 84 (2) shall be recorded in the Register of Community trade
marks.
(5) The registration shall be published in the Community Trade Marks Bulletin.
(6) The registration fee shall be refunded if the trade mark applied for is not
registered.
Rule 24
Certificate of registration
(1) The Office shall issue to the proprietor of the trade mark a certificate of
registration which shall contain the entries in the Register provided for in
Rule 84 (2) and a statement to the effect that those entries have been recorded
in the Register.
(2) The proprietor of the trade mark may request that certified or uncertified
copies of the certificate of registration be supplied to him upon payment of a
fee.
Rule 25
Alteration of the registration
(1) An application for alteration of the registration pursuant to Article 48
(2) of the Regulation shall contain:
(a) the registration number,
(b) the name and the address of the proprietor of the mark in accordance with
Rule 1 (1) (b);
(c) where the proprietor has appointed a representative, the name and the
business address of the representative in accordance with Rule 1 (1) (e);
(d) the indication of the element in the representation of the mark to be
altered and that element in its altered version;
(e) a representation of the mark as altered, in accordance with Rule 3.
(2) The application shall be deemed not to have been filed until the required
fee has been paid. If the fee has not been paid or has not been paid in full,
the Office shall inform the applicant accordingly.
(3) If the requirements governing the alteration of the registration are not
fulfilled, the Office shall communicate the deficiency to the applicant. If the
deficiency is not remedied within a period to be specified by the Office, the
Office shall reject the application.
(4) Where the registration of the alteration is challenged pursuant to Article
48 (3) of the Regulation, the provisions on opposition contained in the
Regulation and in these Rules shall apply mutatis mutandis.
(5) A single application may be made for the alteration of the same element in
two or more registrations of the same proprietor. The required fee shall be
paid in respect of each registration to be altered.
Rule 26
Change of the name or address of the proprietor of
the Community trade mark or of his registered
representative
(1) A change of the name or address of the proprietor of the Community trade
mark which is not an alteration of the Community trade mark pursuant to Article
48 (2) of the Regulation and which is not the consequence of a whole or partial
transfer of the registered mark shall, at the request of the proprietor, be
recorded in the register.
(2) An application for the change of the name or address of the proprietor of
the registered mark shall contain:
(a) the registration number of the mark;
(b) the name and the address of the proprietor of the mark as recorded in the
register;
(c) the indication of the name and address of the proprietor of the mark, as
amended, in accordance with Rule 1 (1) (e).
(d) where the proprietor has appointed a representative, the name and the
business address of the representative, in accordance with Rule 1 (1) (e).
(3) The application shall not be subject to payment of a fee.
(4) A single application may be made for the change of the name or address in
respect of two or more registrations of the same proprietor.
(5) If the requirements governing the recording of a change are not fulfilled,
the Office shall communicate the deficiency to the applicant. If the deficiency
is not remedied within a period to be specified by the Office, the Office shall
reject the application.
(6) Paragraphs 1 to 5 shall apply mutatis mutandis to a change of the name or
address of the registered representative.
(7) Paragraphs 1 to 6 shall apply mutatis mutandis to applications for
Community trade marks. The change shall be recorded in the files kept by the
Office on the Community trade mark application.
Rule 27
Correction of mistakes and errors in the register and in
the publication of-the registration
(1) Where the registration of the mark or the publication of the registration
contains a mistake or error attributable to the Office, the Office shall
correct the error or mistake of its own motion or at the request of the
proprietor.
(2) Where such a request is made by the proprietor, Rule 26 shall apply mutatis
mutandis. The request shall not be subject to payment of a fee.
(3) The Office shall publish the corrections made under this Rule
Rule 28
Claiming seniority after registration of the Community
trade mark
(1) An application pursuant to Article 35 of the Regulation to obtain the
seniority of one or more earlier registered trade marks as referred to in
Article 34 of the Regulation, shall contain:
(a) the registration number of the Community trade mark;
(b) the name and address of the proprietor of the Community Trade mark in
accordance with Rule 1 (-1) (b)
(c) where the proprietor has appointed a representative, the name and the
business address of the representative in accordance with Rule 1 (1) (e);
(d) an indication of the Member State or Member States in or for which the
earlier mark is registered, the date from which the relevant registration was
effective, the number of the relevant registration, and the goods and services
for which the earlier mark is registered;
(e) an indication of the goods and services in respect of which seniority is
claimed;
(f) a copy of the relevant registration; the copy must be certified as an exact
copy of the relevant registration by the competent authority.
(2) If the requirements governing the claiming of seniority are not fulfilled,
the Office shall communicate the deficiency to the applicant. If the deficiency
is not remedied within a period specified by the Office, the Office shall
reject the application.
(3) The Office shall inform the Benelux Trade Mark Office or the central
industrial property office of the Member State concerned of the effective
claiming of seniority.
(4) The President of the Office may determine that the material to be provided
by the applicant may consist of less than is required under paragraph 1 (f),
provided that the information required is available to the Office from other
sources.
TITLE IV
RENEWAL
Rule 29
Notification of expiry
At least six months before expiry of the registration the Office shall inform
the proprietor of the Community trade mark, and any person having a registered
right, including a licence, in respect of the Community trade mark, that the
registration is approaching expiry. Failure to give such notification shall not
affect the expiry of the registration.
Rule 30
Renewal of registration
(1) An application for renewal shall contain:
(a) where the application is filed by the proprietor of the trade mark, his
name and address in accordance with Rule 1 (1) (b);
(b) where the application is filed by a person expressly authorized to do so by
the proprietor of the mark, the name and address of that person and evidence
that he is authorized to file the application;
(c) where the applicant has appointed a representative, the name and business
address of the representative in accordance with Rule 1 (1) (e); (d) the
registration number;
(e) an indication that renewal is requested for all the goods and services
covered by the registration or, if the renewal is not requested for all the
goods and services for which the mark is registered, an indication of those
classes or those goods and services for which renewal is requested or those
classes or .those goods and services for which renewal is not requested,
grouped according to the classes of the Nice classification, each group being
preceded by the number of the class of that classification to which that group
of goods or services belongs and presented in the order of the classes of that
classification.
(2) The fees payable under Article 47 of the Regulation for the renewal of a
Community trade mark shall consist of:
(a) a basic fee;
(b) a class fee for each class exceeding three in the list of classes in
respect of which renewal is applied for as shown in paragraph 1 (e); and
(c) where applicable, the additional fee for late payment of the renewal fee or
late submission of the request for renewal, pursuant to Article 47 (3) of the
Regulation, as specified in the Fees Regulation.
(3) Where the application for renewal is filed within the time periods provided
for in Article 47 (3) of the Regulation, but the other conditions governing
renewal provided for in Article 47 of the Regulation and these Rules are not
satisfied, the Office shall inform the applicant of the deficiencies found. If
the application is filed by a person whom the proprietor of the trade mark has
expressly authorized to do so, the proprietor of the trade mark shall receive a
copy of the notification.
(4) Where an application for renewal is not submitted or is submitted after
expiry of the period provided for in the third sentence of Article 47 (3) of
the Regulation, or if the fees are not paid or are paid only after the period
in question has expired, or if the deficiencies are not remedied within that
period, the Office shall determine that the registration has expired and shall
so notify the proprietor of the Community trade mark and, where appropriate,
the applicant and the person recorded in the Register as having rights in the
mark. Where the fees paid are insufficient to cover all the classes of goods
and services for which renewal is requested, such a determination shall not be
made if it is clear which class or classes are to be covered. In the absence of
other criteria, the Office shall take the classes into account in the order of
classification.
(5) Where the determination made pursuant to paragraph 4 has become final, the
Office shall cancel the mark from the register. The cancellation shall take
effect from the day following the day on which the existing registration
expired.
(6) Where the renewal fees provided for in paragraph 2 have been paid but the
registration is not renewed, those fees shall be refunded.
TITEL V
TRANSFER; LICENCES AND OTHER RIGHTS, CHANGES
Rule 31
Transfer
(1) An application for registration of a transfer under Article 17 of the
Regulation shall contain:
(a) the registration number of the Community trade mark;
(b) particulars of the new proprietor in accordance with Rule 1 (1) (b);
(c) where not all the registered goods or services are included in the
transfer, particulars of the registered goods or services to which the transfer
relates;
(d) documents duly establishing the transfer in accordance with Article 17 (2)
and (3) of the Regulation;
(2) The application may contain, where applicable, the name and business
address of the representative of the new proprietor, to be set out in
accordance with Rule 1 (1) (e)
(3) Transfers to any natural or legal persons who cannot be proprietors of
Community trade marks pursuant to Article 5 of the Regulation shall not be
registered.
(4) The application shall not be deemed to have been filed until the required
fee has been paid. If the fee is not paid or is not paid in full, the Office
shall so notify the applicant.
(5) It shall constitute sufficient proof of transfer under paragraph 1 (d):
(a) that the application for registration of the transfer is signed by the
registered proprietor or his representative and by the successor in title or
his representative; or,
(b) that the application, if submitted by the successor in title, is
accompanied by a declaration, signed by the registered proprietor or his
representative, that he agrees to the registration of the successor in title;
or
(c) that the application is accompanied by a completed transfer form or
document, as specified in Rule 83 (1) (d), signed by the registered proprietor
or his representative and by the successor in title or his representative.
(6) Where the conditions applicable to the registration of a transfer, as laid
down in Article 17 (1) to (4) of the Regulation, in paragraphs 1 to 4 above,
and in other applicable Rules are not fulfilled, the Office shall notify the
applicant of the deficiencies. If the deficiencies are not remedied within a
period specified by the Office, it shall reject the application for
registration of the transfer.
(7) A single application for registration of a transfer may be submitted for
two or more marks, provided that the registered proprietor and the successor in
title are the same in each case.
(8) Paragraphs 1 to 7 shall apply mutatis mutandis to applications for
Community trade marks. The transfer shall be recorded in the files kept by the
Office concerning the Community trade mark application.
Rule 32
Partial Transfers
(1) Where the application for registration of a transfer relates only to some
of the goods and services for which the mark is registered, the application shall
contain an indication of the goods and services to which the partial transfer
relates.
(2) The goods and services in the original registration shall be distributed
between the remaining registration and the new registration so that the goods
and services in the remaining registration and the new registration shall not
overlap.
(3) Rule 31 shall apply mutatis mutandis to applications for registrations of a
partial transfer.
(4) The Office shall establish a separate file for the new registration, which
shall consist of a complete copy of the file of the original registration and
the application for registration of the partial transfer; a copy of that
application shall be included in the file of the remaining registration. The
Office shall also assign a new registration number to the new registration.
(5) Any application made by the original proprietor pending with regard to the
original registration shall be deemed to be pending with regard to the
remaining registration and the new registration. Where such application is
subject to the payment of fees and these fees have been paid by the original
proprietor, the new proprietor shall not be liable to pay any additional fees
with regard to such application.
Rule 33
Registration of licences and other rights
(1) Rule 31 (1) (a) (b) and (c), (2), (4) and (7) shall apply mutatis mutandis
to the registration of the grant or transfer of a licence, to registration of
the creation or transfer of a right in rem in respect of a Community trade
mark, and to registration of enforcement measures. However where a Community
trade mark is involved in bankruptcy or like proceedings, the request of the
competent national authority for an entry in the register to this effect shall
not be subject to payment of a fee.
(2) Where the Community trade mark is licensed for only part of the goods and
services for which the mark is registered, or for only a part of the Community,
or for a limited period of time, the application for registration shall
indicate the goods and services or the part of the Community or the time period
for which the licence is granted.
(3) Where the conditions applicable to registration, as laid down in Articles
19, 20 or 22 of the Regulation, in paragraphs 1 and 2 above, and the other
applicable Rules are not fulfilled, the Office shall notify the applicant of
the irregularity. If the irregularity is not corrected within a period
specified by the Office, it shall reject the application for registration.
(4) Paragraphs 1, 2 and 3 shall apply mutatis mutandis to applications for
Community trade marks. Licences, rights in rem and enforcement measures shall
be recorded in the files kept by the Office concerning the Community trade mark
application.
Rule 34
Special provisions for the registration of a licence
( 1 ) A licence in respect of a Community trade mark shall be recorded in the
Register as an exclusive licence if the proprietor of the trade mark or the
licensee so request.
(2) A licence in respect of a Community trade mark shall be recorded in the Register
as a sub-licence where it is granted by a licensee whose licence is recorded in
the Register.
(3) A licence in respect of a Community trade mark shall be recorded in the
Register as a licence limited as to the goods and services or-as a territorially
limited licence if it is granted for only a part of the goods or services for
which the mark is registered or if it is granted only for a part of the
Community.
(4) A licence in respect of a Community trade mark shall be recorded in the
Register as a temporary licence if it is granted for a limited period of time.
Rule 35
Cancellation or modification of the registration of
licences and other rights
(1) A registration effected under Rule 33 (1) shall be cancelled at the request
of one of the persons concerned.
(2) The application shall contain:
(a) the registration number of the Community trade mark; and
(b) particulars of the right whose registration is to be cancelled.
(3) Application for cancellation of the registration of a licence or another
right shall not be deemed to have been filed until the required fee has been
paid. If the fee is not paid or is not paid in full, the Office-shall so notify
the applicant. However, the request of the competent national authority for the
cancellation of an entry where a Community trade mark is involved in bankruptcy
or like proceedings shall not be subject to payment of a fee.
(4) The application shall be accompanied by documents showing that the
registered right no longer exists or by a statement by the licensee or the
holder of another right, to the effect that he consents to cancellation of the
registration.
(5) Where the requirements for cancellation of the registration are not
satisfied, the Office shall notify the applicant of the irregularity. If the
irregularity is not corrected within a period specified by the Office, it shall
reject the application for cancellation of the registration.
(6) Paragraphs 1, 2, 4 and 5 shall apply mutatis mutandis to a request for the
modification of a registration effected under Rule 33 (1).
(7) Paragraphs 1 to 6 shall apply mutatis mutandis to entries made in the files
pursuant to Rule 33 (4).
TITLE VI
SURRENDER
Rule 36
Surrender
(1) A declaration of surrender pursuant to Article 49 of the Regulation shall
contain:
(a) the registration number of the Community trade mark;
(b) the name and address of the proprietor in accordance with Rule 1 (1) (b);
(c) where a representative has been appointed, the name and business address of
the representative in accordance with Rule 1 (1) (e);
(d) where surrender is declared only for some of the goods and services for
which the mark is registered, the goods and services for which the surrender is
declared or the goods and services for which the mark is to remain registered.
(2) Where a right of a third party relating to the Community trade mark is
entered in the register, it shall be sufficient proof of his agreement to the
surrender that a declaration of consent to the surrender is signed by the
proprietor of that right or his representative. Where a licence has been
registered, surrender shall be registered three months after the date on which
the proprietor of the Community trade mark satisfies the Office that he has
informed the licensee of his intention to surrender it. If the proprietor
proves to the Office before the expiry of that period that the licensee has
given his consent, the surrender shall be registered forthwith.
(3) If the requirements governing surrender are not fulfilled, the Office shall
communicate the deficiencies to the declarant. If the deficiencies are not
remedied within a period to be specified by the Office, the Office shall reject
the entry of the surrender in the Register.
TITLE VII
REVOCATION AND INVALIDITY
Rule 37
Application for revocation or for a declaration of
invalidity
An application to the Office for revocation or for a declaration of invalidity
pursuant to Article 55 of the Regulation shall contain:
(a) as concerns the registration in respect of -which revocation or a
declaration of invalidity is sought;
(i) the registration number of the Community trade
mark in respect of which revocation or a
declaration of invalidity is sought;
(ii) the name and address of the proprietor of the
Community trade mark in respect of which
revocation or a declaration of invalidity is
sought;
(iii) a statement of the registered goods and services
in respect of which revocation or a declaration of
invalidity is sought;
(b) as regards the grounds on which the application is
based,
(i) in the case of an application pursuant to Article
50 or Article 51 of the Regulation, a statement
of the grounds on which the application for
revocation or a declaration of invalidity is
based;
(ii) in the case of an application pursuant to Article
52 (1) of the Regulation, particulars of the right
on which the application for a declaration of
invalidity is based and if necessary particulars
showing that the applicant is entitled to adduce
the earlier right as grounds for invalidity;
(iii) in the case of an application pursuant to Article
52 (2) of the Regulation, particulars of the right
on which the application for a declaration of
invalidity is based and particulars showing that
the applicant is the proprietor of an earlier right
as referred to in Article 52 (2) of the Regulation
or that he is entitled under the national law
applicable to lay claim to that right;
(iv) an indication of the facts, evidence and
arguments presented in support of those
grounds;
(c) as concerns the applicant,
(i) his name and address in accordance with Rule 1
- (1) (b);
(ii) if the applicant has appointed a representative,
the name and the business address of the
representative, in accordance with Rule 1 (1)
(e).
Rule 38
Languages used in revocation or invalidity proceedings
(1) Where the application for revocation or for a declaration of invalidity is
not filed in the language of the application for the registration of the
Community trade mark, if that language is one of the languages of the Office,
or in the second language indicated when the application was filed, the
applicant for revocation or for a declaration of invalidity shall file a
translation of his application in one of those two languages within a period of
one month from the filing of his application.
(2) Where the evidence in support of the application is not filed in the
language of the revocation or invalidity proceedings, the applicant shall file
a translation of that evidence into that language within a period of two months
after the filing of such evidence.
(3) Where the applicant for revocation or for a declaration of invalidity or
the proprietor of the Community trade mark inform the Office before the expiry
of a period of two months from receipt by the Community trade mark proprietor
of the communication referred to in Rule 40 (1), that they have agreed on a
different language of proceedings pursuant to Article 115 (7) of the
Regulation, the applicant shall, where the application was not filed in that
language, file a translation of the application in that language within a
period of one month from the said date.
Rule 39
Rejection of the application for revocation or for
declaration of invalidity as inadmissible
(1) If the Office finds that the application does not comply with Article 55 of
the Regulation, Rule 37 or any other provision of the Regulation or these
Rules, it shall inform the applicant accordingly and shall call upon him to
remedy the deficiencies found within such period as it may specify. If the
deficiencies are not remedied before expiry of the time limit, the Office shall
reject the application as inadmissible.
(2) Where the Office finds that the required fees have not been paid, it shall
inform the applicant accordingly and shall inform him that the application will
be deemed not to have been filed if the required fees are not paid within a
period specified by the Office. If the required fees are paid after expiry of
the period specified by the Office, they shall be refunded to the applicant.
(3) Any decision to reject an application for revocation or for a declaration
of invalidity under paragraph 1 shall be communicated to the applicant. Where
the application is considered not to have been filed pursuant to paragraph 2,
the applicant shall be informed accordingly.
Rule 40
Examination of the application for revocation or for a
declaration of invalidity
(1) If the Office does not reject the application in accordance with Rule 39,
it shall communicate such application to the proprietor of the Community trade
mark and shall request him to file his observations within such period as it
may specify.
(2) If the proprietor of the Community trade mark files no observations, the
Office may decide on the revocation or invalidity on the basis of the evidence
before it.
(3) Any observations filed by the proprietor of the Community trade mark shall
be communicated to the applicant, who shall be requested by the Office, if it
sees fit, to reply within a period specified by the Office.
(4) All communications under Article 56 (1) of the Regulation and all
observations filed in this respect shall be sent to the parties concerned.
(5) If the applicant, under Article 56 (2) or (3) of the Regulation, has to
furnish proof of use or proof that there are proper reasons for non-use, Rule
22 shall apply mutatis mutandis .
Rule 41
Multiple applications for revocation or for a declaration
of invalidity
(1) Where a number of applications for revocation or for a declaration of
invalidity have been filed relating to the same Community trade mark, the
Office may deal with them in one set of proceedings. The Office may
subsequently decide no longer to deal with them in this way.
(2) Rule 21 (2) (3) and (4) shall apply mutatis mutandis.
TITLE VIII
COMMUNIIY COLLECTIVE MARKS
Rule 42
Application of provisions
The provisions of these Rules shall apply to Community collective marks,
subject to Rule 43.
Rule 43
Regulation governing Community collective marks
(1) Where the application for a Community collective trade mark does not
contain the regulations governing its use pursuant to Article 65 of the
Regulation, those regulations shall be submitted to the Office within a period
of two months after the date of filing.
(2) The regulations governing Community collective marks shall specify:
(a) the name of the applicant and his office address;
(b) the object of the association or the object for which the legal person
governed by public law is constituted;
(c) the bodies authorized to represent the association or the said legal
person;
(d) the conditions for membership;
(e) the persons authorized to use the mark;
(f) where appropriate, the conditions governing use of the mark, including
sanctions;
(g) where appropriate, the authorization referred to in the second sentence of
Article 65 (2) of the Regulation.
TITLE IX
CONVERSION
Rule 44
Application for conversion
(1) An application for conversion of a Community trade mark application or a
registered Community trade mark into a national trademark application pursuant
to Article 108 of the Regulation shall contain:
(a) the name and the address of the applicant for conversion in accordance with
Rule 1 (1) (b);
(b) where the applicant for conversion has appointed a representative, the name
and the business address of the representative in accordance with Rule 1 (1) (e);
(c) the filing number of the Community trade mark application or the
registration number of the Community trade mark;
(d) the date of filing of the Community trade mark application or the Community
trade mark and, where applicable, particulars of the claim to priority for the
Community trade mark application or the Community trade mark pursuant to
Articles 30 and 33 of the Regulation and particulars of the claim to seniority
pursuant to Articles 34 and 3S of the Regulation;
(e) a representation of the mark as contained in the application or as
registered;
(f) the specification of the Member State or the Member States in respect of
which conversion is requested;
(g) where the request does not relate to all of the goods and services for
which the application has been filed or for which the trade mark has been
registered, an indication of the goods and services for which conversion is
requested, and, where conversion is requested in respect of more than one
Member State and the list of goods and services is not the same for all Member
States, an indication of the respective goods and services for each Member
State;
(h) where conversion is requested pursuant to Article 108 (4) of the
Regulation, an indication to that effect;
(i) where conversion is requested pursuant to Article 108 (5) of the Regulation
following a withdrawal of an application for registration, an indication to
that effect, and the date on which the application for registration was
withdrawn;
(j) where conversion is requested pursuant to Article 108 (5) of the Regulation
following a failure to renew the registration, an indication to that effect,
and the date on which the period of protection has expired, the period of three
months provided for in Article 108 (5) of the Regulation shall begin to run on
the day following the last day on which the request for renewal can be
presented pursuant to Article 47 (3) of the Regulation;
(k) where conversion is requested pursuant to article 108 (6) of the
Regulation, an indication to that effect, the date on which the decision of the
national court has become final, and a copy of that decision.
(2) Where a copy of a court decision pursuant to paragraph 1 (k) is required,
that copy may be submitted in the language in which the decision was given.
Rule 45
Examination of application for conversion
( 1 ) Where the application for conversion does not comply with the
requirements of Article 108 (1) of the Regulation or was not filed within the
relevant period of three months, the Office shall reject it.
(2) Where the conversion fee has not been paid within the relevant period of
three months, the Office shall inform the applicant that the application for
conversion shall be deemed not to have been filed;
(3) Where the other requirements governing conversion as provided for in Rule
44 and in other Rules governing such applications are not fulfilled, the Office
shall inform the applicant accordingly and invite him to remedy the deficiency
within a period specified by the Office. If the deficiencies are not remedied
within that period, the Office shall reject the application for conversion.
Rule 46
Publication of application for conversion
(1) Where the application for conversion relates to a Community trade mark
application which has already been published in the Community Trade Mark
Bulletin pursuant to Article 40 of the Regulation or where the application for
conversion relates to a Community trade mark, the application for conversion
shall be published in the Community Trade Marks Bulletin.
(2) The publication of the application for conversion shall contain:
(a) the filing number or the registration number of the trade mark in respect
of which conversion is requested;
(b) a reference to the previous publication of the application or the
registration in the Community Trade marks Bulletin;
(c) an indication of the Member State or Member States in respect of which
conversion has been requested;
(d) where the request does not relate to all of the goods and services for
which the application has been filed or for which the trade mark has been
registered, an indication of the goods and services for which conversion is
requested;
(e) where conversion is requested in respect of more than one Member State and
the list of goods and services is not the same for all Member States, an
indication of the respective goods and services for each Member State;
(f) the date of the application for conversion.
Rule 47
Transmission to central industrial property offices of the
Member States
Where the application for conversion complies with the requirements- of the
Regulation and these Rules, the Office shall transmit without delay the
application for conversion to the central industrial property offices of the
Member States specified therein, including the Benelux Trade Mark Office. The
Office shall inform the applicant of the date of transmission.
TITLE X
APPEALS
Rule 48
Content of the notice of appeal
(1) The notice of appeal shall contain:
(a) the name and address of the appellant in accordance with rule 1 (1) (b);
(b) where the appellant has appointed a representative, the name and the
business address of the representative in accordance with Rule 1 (1) (e);
(c) a statement identifying the decision which is contested and the extent to
which amendment or cancellation of the decision is requested.
(2) The notice of appeal shall be filed in the language of the proceedings in
which the decision subject to the appeal was taken.
Rule 49
Rejection of the appeal as inadmissible
(1) If the appeal does not comply with Articles 57, 58 and 59 of the Regulation
and Rule 48 (1) (c) and (2), the Board of Appeal shall reject it as
inadmissible, unless each deficiency has been remedied before the relevant time
limit laid down in Article 59 of the Regulation has expired.
(2) If the Board of Appeal finds that the appeal does not comply with other
provisions of the Regulation or other provisions of these Rules, in particular
Rule 48 (1) (a) and (b), it shall inform the appellant accordingly and shall
request him to remedy the deficiencies noted within such period as it may
specify. If the appeal is not corrected in good time, the Board of Appeal shall
reject it as inadmissible.
(3) If the fee for appeal has been paid after expiry of the period for the
filing of appeal pursuant to Article 59 of the Regulation, the appeal shall be
deemed not to have been filed and the appeal fee shall be refunded to the
appellant.
Rule 50
Examination of appeals
(1) Unless otherwise provided, the provisions relating to proceedings before the
department which has made the decision against which the appeal is brought
shall be applicable to appeal proceedings mutatis mutandis .
(2) The Board of Appeal's decision shall contain:
(a) a statement that it is delivered by the Board;
(b) the date when the decision was taken;
(c) the names of the Chairman and of the other members of the Board of Appeal
taking part;
(d) the name of the competent employee of the registry;
(e) the names of the parties and of their representatives;
(f) a statement of the issues to be decided;
(g) a summary of the facts;
(h) the reasons;
(i) the order of the Board of Appeal, including, where necessary, a decision on
costs.
(3) The decision shall be signed by the Chairman and the other members of the
Board of Appeal and by the employee of the registry of the Board of Appeal.
Rule 51
Reimbursement of appeal fees
The reimbursement of appeal fees shall be ordered in the event of interlocutory
revision or where the Board of Appeal deems an appeal to be allowable, if such
reimbursement is equitable by reason of a substantial procedural violation. In
the event of interlocutory revision, reimbursement shall be ordered by the
department whose decision has been impugned, and in other cases by the Board of
Appeal.
TITLE XI
GENERAL PROVISIONS
Part A
Decisions and communications of the Office
Rule 52
Form of decisions
(1) Decisions of the Office shall be in writing and shall state the reasons on
which they are based. Where oral proceedings are held before the Office, the
decision may be given orally. Subsequently, the decision in writing shall be
notified to the parties.
(2) Decisions of the Office which are open to appeal shall be accompanied by a
written communication indicating that notice of appeal must be filed in writing
at the Office within two months of the date of notification of the decision
from which appeal is to be made. The communications shall also draw' the
attention of the parties to the provisions laid down in Articles 57, 58 and 59
of the Regulation. The parties may not plead any failure to communicate the
availability proceedings.
Rule 53
Correction of errors in decisions
In decisions of the Office, only linguistic errors, errors of transcription and
obvious mistakes my be corrected. They shall be corrected by the department
which took the decision, acting of its own motion or at the request of an
interested party.
Rule 54
Noting of loss of rights
(1) If the Office finds that the loss of any rights results from the Regulation
or these Rules without any decision having been taken, it shall communicate
this to the person concerned in accordance with Article 77 of the Regulation,
and shall draw his attention to the substance of paragraph 2 of this Rule.
(2) If the person concerned considers that the finding of the Office is
inaccurate, he may, within two months after notification of the communication
referred to in paragraph 1, apply for a decision on the matter by the Office.
Such decision shall be given only if the Office disagrees with the person requesting
it; otherwise the Office shall amend its finding and inform the person
requesting the decision.
Rule 55
Signature, name, seal
(1) Any decision, communication or notice from the'. Office shall indicate the
department or division of the Office as well as the name or the names of the
official or officials responsible. They shall be signed by the official or
officials, or, instead of a signature, carry a printed or stamped seal of the
Office.
(2) The President of the Office may determine that other means of identifying
the department or division of the Office and the name of the official or
officials responsible or an identification other than a seal may be used where
decisions, communications or notices are transmitted by telecopier or any other
technical means of communication.
Part B
Oral proceedings and taking of evidence
Rule 56
Summons to oral proceedings
(1) The parties shall be summoned to oral proceedings provided for in Article
75 of the Regulation and their attention shall be drawn to paragraph 3 of this
Rule. At least one month's, notice of the summons shall be given unless the
parties agree to a shorter period.
(2) When issuing the summons, the Office shall draw attention to the points
which in its opinion need to be discussed in order for the decision to be
taken.
(3) If a party who has been duly summoned to oral proceedings before the Office
does not appear as summoned, the proceedings may continue without him. Official
Journal of the European Communities
Rule 57
Taking of evidence by the Office
(1) Where the Office considers it necessary to hear the oral evidence of
parties, of witnesses or of experts or to carry out an inspection it shall take
a decision to that end, stating the means by which it intends to obtain
evidence, the relevant facts to be proved and the date, time and place of
hearing or inspection. If oral evidence of witnesses and experts is requested
by a party, the decision of the Office shall determine the period of time
within which the party filing the request must make known to the Office the
names and addresses of the witnesses and experts whom the party wishes to be
heard.
(2) The period of notice given in the summons of a party, witness or expert to
give evidence shall be at least one month, unless they agree to a shorter
period. The summons shall contain:
(a) an extract from the decision mentioned in paragraph 1, indicating in
particular the date, time and place of the hearing ordered and stating the
facts regarding which the parties, witnesses and experts are to be heard;
(b) the names of the parties to proceedings and particulars of the rights which
the witnesses or experts may invoke under Rule 59 (2) to (5). Rule 58
Commissioning of experts
(1) The Office shall decide in what form the report made by an expert whom it
appoints shall be submitted.
(2) The terms of reference of the expert shall include:
(a) a precise description of his task;
(b) the time limit laid down for the submission of the expert report;
(c) the names of the parties to the proceedings;
(d) particulars of the claims which he may invoke under Rule 59 (2J, (3) and
(4).
(3) A copy of any written report shall be submitted to the parties.
(4) The parties may object to an expert on grounds of incompetence or on the
same grounds as those on which objection may be made to an examiner or to a
member of a Division or Board of Appeal pursuant to Article 132 (1) and (3) of
the Regulation. The department of the Office concerned shall rule on the
objection.
Rule 59
Costs of taking of evidence
(1) The taking of evidence by the Office may be made conditional upon deposit
with it, by the party who has requested the evidence to be taken, of a sum
which shall be fixed by reference to an estimate of the costs.
(2) Witnesses and experts who are summoned by and appear before the Office
shall be entitled to reimbursement of reasonable expenses for travel and
subsistence. An advance for these expenses may be granted to them by the
Office. The first sentence shall apply also to witnesses and experts who appear
before the Office without being summoned by it and are heard as witnesses or
experts.
(3) Witnesses entitled to reimbursement under paragraph 2 shall also be
entitled to appropriate compensation for loss of earnings, and experts to fees
for their work. These payments shall be made to the witnesses and experts after
they have fulfilled their duties or tasks, where such witnesses and experts
have been summoned by the Office of its own initiative.
(4) The amounts and the advances for expenses to be paid pursuant to paragraphs
1, 2 and 3 shall be determined by the President of the Office and shall be
published in the Official Journal of the Office. The amounts shall be
calculated on the same basis as the compensation and salaries received by
officials in grades A4 to A8 as laid down in the Staff Regulations of Officials
of the European Communities and Annex VII thereto.
(5) Final liability for the amounts due or paid pursuant to paragraphs 1 to 4
shall lie with:
(a) the Office where the Office, at its own initiative, considered it necessary
to hear the oral evidence of witnesses or experts;
(b) the party concerned where that party requested the giving of oral evidence
by witnesses or experts, subject to the decision on apportionment and fixing of
costs pursuant to Articles &1 and 82 of the Regulation and Rule 94. Such
party shall reimburse the Office for any advances duly paid.
Rule 60
Minutes of oral proceedings and of evidence
(1) Minutes of oral proceedings or the taking of evidence shall be drawn up,
containing the essentials of the oral proceedings or of the taking of evidence,
the relevant statements made by the parties, the testimony of the parties,
witnesses or experts and the result of any inspection.
(2) The minutes of the testimony of a witness, expert or party shall be read
out or submitted to him so that he may examine them. It shall be noted in the
minutes that this formality has been carried out and that the person who gave
the testimony approved the minutes. Where his approval is not given, his
objections shall be noted.
(3) The minutes shall be signed by the employee who drew them up and by the
employee who conducted the oral proceedings or taking of evidence.
(4) The parties shall be provided with a copy of the minutes.
(5) Upon request, the Office shall make available to the parties transcripts of
recordings of the oral proceedings, in typescript or in any other
machine-readable form. The release under the first sentence of the oral
proceedings shall be subject to the payment of the costs incurred by the Office
in making such transcript. The amount to be charged shall be determined by the
President of the Office.
Part C
Notifications
Rule 61
General provisions on notifications
(1) In proceedings before the Office, any notifications to be made by the
Office shall take the form of the original document, of a copy thereof
certified by, or bearing the seal of, the Office or of a computer print-out
bearing such seal. Copies of documents emanating from the parties themselves
shall not require such certification.
(2) Notifications shall be made
(a) by post in accordance with Rule 62;
(b) by hand delivery in accordance with Rule 63;
(c) by deposit in a post box at the Office in accordance with Rule 64;
(d) by telecopier and other technical means in accordance withal Rule 65;
(e) by public notification in accordance with Rule 66.
Rule 62
Notification by post
( 1 ) Decisions subject to a time limit for appeal, summonses and other
documents as determined by the President of the Office shall be notified by
registered letter with advice-- of delivery. Decisions and communications
subject to some other time limit shall be notified by registered letter, unless
the President of the Office determines otherwise. All other communications
shall be ordinary mail.
(2) Notifications in respect of addresses having neither their domicile nor
their principal place of business nor an establishment in the Community and who
have not appointed a representative in accordance with Article 88 (2) of the
Regulation shall be effected by posting the document requiring notification by
ordinary mail to the last address of the addressee known to the Office.
Notification shall be deemed to have been effected when the posting has taken
place.
(3) Where notification is effected by registered letter, whether or not with
advice of delivery, this shall be deemed to be delivered to the addressee on
the 10th day following that of its posting, unless the letter has failed to
reach the addressee or has reached him at a later date. In the event of any
dispute, it shall be for the Office to establish that the letter has reached
its destination or to establish the date on which it was delivered to the
addressee, as the case may be.
(4) Notification by registered letter, with or without advice of delivery,
shall be deemed to have been effected even if the addressee refuses to accept
the letter.
(5) To the extent that notification by post is not covered by paragraphs 1 to
4, the law of the State on the territory of which notification is made shall
apply.
Rule 63
Notification by hand delivery
Notification may be effected on the premises of the Office by hand delivery of
the document to the addressee, who shall on delivery acknowledge its receipt.
Rule 64
Notification by deposit in a post box at the Office
Notification may also be effected to addressees who have been provided with a
post box at the Office, by depositing the document therein. A written
notification of deposit shall be inserted in the files. The date of deposit
shall be recorded on the document. Notification shall be deemed to have taken
place on the fifth day following deposit of the document in the post box at the
Office.
Rule 65
Notification by telecopier and other technical means
( 1 ) Notification by telecopier shall be effected by transmitting either the
original or a copy, as provided for in Rule 61 (1), of the document to be
notified. The details of such transmission shall be determined by the President
of the Office.
(2) Details of notification by other technical means of communication shall be
determined by the President of the Office.
Rule 66
Public notification
(1) If the address of the addressee cannot be established, or if notification
in accordance with Rule 62 (1) has proved to be impossible even after a second
attempt by the Office, notification shall be effected by public notice. Such
notice shall be published at least in the Community Trade Marks Bulletin.
(2) The President of the Office shall determine how the public notice is to be
given and shall fix the beginning of the one-month period on the expiry of
which the document shall be deemed to have been notified.
Rule 67
Notification to representatives
(1) If a representative has been appointed or where the applicant first named
in a common application is considered to be the common representative pursuant
to Rule 75 (1), notifications shall be addressed to that appointed or common
representative.
(2) If several representatives have been appointed for a single interested
party, notification to any one of them shall be sufficient, unless a specific
address for service has been indicated in accordance with Rule 1(1) (e).
(3) If several interested parties have appointed a common representative,
notification of a single document to the common representative shall be
sufficient.
Rule 68
Irregularities in notification
Where a document has reached the addressee, if the Office is unable to prove
that it has been duly notified, or if provisions relating to its notification have
not been observed, the document shall be deemed to have been notified on the
date established by the Office as the date of receipt.
Rule 69
Notification of documents in the case of several parties
Documents emanating from parties which contain substantive proposals, or a
declaration of withdrawal of a substantive proposal, shall be notified to the
other parties as a matter of course. Notification may be dispensed with where
the document contains no new pleadings and the matter is ready for decision.
Part D
Timelimits
Rule 70
Calculation of time limits
(1) Periods shall be laid down in terms of full years, months, weeks or days.
(2) Calculation shall start on the day following the day on which the relevant
event occurred, the event being either a procedural step or the expiry of
another period Where that procedural step is a notification, the event
considered shall be the receipt of the document notified, unless otherwise
provided.
(3) Where a period is expressed as one year or a certain number of years, it
shall expire in the relevant subsequent year in the month having the same name
and on the day having the same number as the month and the day on which the
said event occurred. Where the relevant month has no day with the same number
the period shall expire on the last day of that month.
(4) Where a period is expressed as one month or a certain number of months, it
shall expire in the relevant subsequent month on the day which has the same
number as the day on which the said event occurred. Where the day on which the
said event occurred was the last day of a month or where the relevant
subsequent month has no day with the same number the period shall expire on the
last day of that month.
(5) Where a period is expressed as one week or a certain number of weeks, it
shall expire in the relevant subsequent week on the day having the same name as
the day on which the said event occurred.
Rule 71
Duration of time limits
(1) Where the Regulation or these Rules provide for a period to be specified by
the Office, such period shall, when the party concerned has its domicile or its
principal place of business or an establishment within the Community, be not
less than one month, or, when those conditions are not fulfilled, not less than
two months, and no more than six months. The Office may, when this is
appropriate under the circumstances, grant an extension of a period specified
if such extension is requested by the party concerned and the request is
submitted before the original period expired.
(2) Where there are two or more parties, the Office may extend a period subject
to the agreement of the other parties.
Rule 72
Expiry of time limits in special cases
(1) If a time limit expires on a day on which the Office is not open for
receipt of documents or on which, for reasons other than those referred to in
paragraph 2, ordinary mail is not delivered in the locality in which the Office
is located, the time limit shall extend until the first day thereafter on which
the Office is open for receipt of documents and on which ordinary mail is
delivered. The days referred -to in the first sentence shall be as determined
by the President of the Office before the commencement of each calendar year.
(2) If a time limit expires on a day on which there is a general interruption
or subsequent dislocation in the delivery of mail in a Member State or between
a Member State and the Office, the time limit shall extend until the first day
following the end of the period of interruption or dislocation, for parties having
their residence or registered office in the State concerned or who have
appointed representatives with a place of business in that State. In the event
of the Member State concerned being the State in which the Office is located,
this provision shall apply to all parties. The duration of the abovementioned
period shall be as determined by the President of the Office.
(3) Paragraphs 1 and 2 shall apply mutatis mutandis to the time limits provided
for in the Regulation or these Rules in the case of transactions to be carried
out with the competent authority within the meaning of Article 25 (1) (b) of
the Regulation.
(4) If an exceptional occurrence such as natural disaster or strike interrupts
or dislocates the proper functioning of the Office so that any communication
from the Office to parties concerning the expiry of a time limit is delayed,
acts to be completed within such a time limit may still be validly completed
within one month after the notification of the delayed communication. The date
of commencement and the end of any such interruption or dislocation shall be as
determined by the President of the Office.
Part E
Interruption of proceedings
Rule 73
Interruption of proceedings
(1) Proceedings before the Office shall be interrupted:
(a) in the event of the death or legal incapacity of the applicant for or
proprietor of a Community trade mark or of the person authorized by national
law to act on his behalf. To the extent that the above events do not affect the
authorization of a representative appointed under Article 89 of the Regulation,
proceedings shall be interrupted only on application by such representative;
(b) in the event of the applicant for or proprietor of a Community trade mark,
as a result of some action taken against his property, being prevented for
legal reasons from continuing the proceedings before the Office;
(c) in the event of the death or legal incapacity of the representative of an
applicant for or proprietor of a Community trade mark or of his being prevented
for legal reasons resulting from action taken against his property from
continuing the proceedings before the Office.
(2) When, in the cases referred to in paragraph 1 (a) and (b), the Office has
been informed of the identity of the person authorized to continue the
proceedings before the Office, the Office shall communicate to such person and
to any interested third parties that the proceedings shall be resumed as from a
date to be fixed by the Office.
(3) In the case referred to in paragraph 1 (c), the proceedings shall be
resumed when the Office has been informed of the appointment of a new
representative of the applicant or when the Office has notified to the other
parties the communication of the appointment of a new representative of the
proprietor of the Community trade mark. If, three months after the beginning of
the interruption of the proceedings, the Office has not been informed of the
appointment of a new representative, it shall inform the applicant for or
proprietor of the Community trade mark:
(a) where Article 88 (2) of the Regulation is applicable, that the Community
trade mark application will be deemed to be withdrawn if the information is not
submitted within two months after this communication is notified; or
(b) where Article 88 (2) of the Regulation is not applicable, that the
proceedings will be resumed with the applicant for or proprietor of the
Community trade mark as from the date on which this communication is notified.
(4) The time limits, other than the time limit for paying the renewal fees, in
force as regards the applicant for or proprietor of the Community trade mark at
the date of interruption of the proceedings, shall begin again as from the day
on which the proceedings are resumed.
Part F
Waiving of enforced recovery procedures
Rule 74
Waiving of enforced recovery procedures
The President of the Office may waive action for the enforced recovery of any
sum due where the sum to be recovered is minimal or where such recovery is too
uncertain.
Part G
Representation
Rule 75
Appointment of a-common representative
(1) If there is more than one applicant and the application for a Community
trade mark does not name a common representative, the applicant first named in
the application shall be considered to be the common representative. However,
if one of the applicants is obliged to appoint a professional representative,
such representative shall be considered to be the common representative unless
the applicant named first in the application has appointed a professional
representative. The same shall apply mutatis mutandis to third parties acting
in common in filing notice of opposition or applying for revocation or for a
declaration of invalidity, and to joint proprietors of a Community trade mark.
(2) If, during the course of proceedings, transfer is made to more than one
person, and such persons have not appointed a common representative, paragraph
1 shall apply. If such application is not possible, the Office shall require
such persons to appoint a common representative within two months. If this
request is not complied with, the Office shall appoint the common
representative.
Rule76
Authorizations
(1) Representatives acting before the Office must file with it a signed
authorization for inclusion in the files. The authorization may cover one or
more applications or one or more registered trade marks.
(2) A general authorization enabling a representative to act in respect of all
trade mark transactions of the party giving the authorization may be filed.
(3) The authorization may be filed in any language of the Office and in the
language of the proceedings if that language is not one of the languages of the
Office.
(4) Where the appointment of a representative is communicated to the Office,
the necessary authorization shall be filed within a period specified by the
Office. If the authorization is not filed in due time, proceedings shall be
continued with the represented person. Any procedural steps other than the
filing of the application taken by the representative shall be deemed not to
have been taken if the represented person does not approve them. The
application of Article 88 (2) of the Regulation shall remain unaffected.
(5) Paragraphs 1 to 3 shall apply mutatis mutandis to a document withdrawing an
authorization.
(6) Any representative who has ceased to be authorized shall continue to be
regarded as the representative until the termination of his authorization has
been communicated to the Office.
(7) Subject to any provisions to the contrary contained therein, an authorization
shall not terminate vis-a-vis the Office upon the death of the person who gave
it.
(8) Where several representatives are appointed by the same party, they may,
notwithstanding any provisions to the contrary in their authorizations, act
either jointly or singly.
(9) The authorization of an association of representatives shall be deemed to
be an authorization of any representative who can establish that he practises
within that association.
Rule 77
Representation
Any notification or other communication addressed by the Office to the duly
authorized representative shall have the same effect as if it had been
addressed to the represented person. Any communication addressed to the Office
by the duly authorized representative shall have the same effect as if it
originated from the represented person.
Rule 78
Amendment of the list of professional representatives
(1) The entry of a professional representative in the list of professional
representatives, as referred to in Article 89 of the Regulation, shall be
deleted at his request.
(2) The entry of a professional representative shall be deleted automatically:
(a) in the event of the death or legal incapacity of the professional
representative;
(b) where the professional representative is no longer a national of a Member
State, unless the President of the Office has granted an exemption under
Article 89 (4) (b) of the Regulation;
(c) where the professional representative no longer has his place of business
or employment in the Community;
(d) where the professional representative no longer possesses the entitlement
referred to in the first sentence of Article 89 (2) (c) of the Regulation.
(3) The entry of a professional representative shall be suspended of the
Office's own motion where his entitlement to represent natural or legal persons
before the central industrial property office of the Member State as referred
to in the fist sentence of Article 89 (2) (c) has been suspended.
(4) A person whose entry has been deleted shall, upon request pursuant to
Article 89 (3) of the Regulation, be reinstated in the list of professional
representatives if the conditions for deletion no longer exist.
(5) The Benelux Trade Mark Office and the central industrial property offices
of the Member States concerned shall, where they are aware thereof, promptly
inform the Office of any 'relevant events under paragraphs 2 and 3.
(6) The amendments of the list of professional representatives shall be
published in the Official Journal of the Office.
Part H
Written communications and fo~7ns
Rule 79
Communication in writing or by other means
Applications for the registration of a Community trade mark as well as any
other application provided for in the Regulation and all other communications
addressed to the Office shall be submitted as follows:
(a) by submitting a signed original of the document in question at the Office,
such as by post, personal delivery, or by any other means; annexes to documents
submitted need not be signed;
(b) by transmitting a signed original by telecopier in accordance with Rule 80;
(c) by telex or telegram in accordance with Rule 81;
(d) by transmitting the contents of the communication by electronic means in
accordance with Rule 82.
Rule 80
Communication by telecopier
(1) Where an application for registration of a trade mark is submitted to the
Office by telecopier and the application contains a reproduction of the mark
pursuant to Rule 3 (2) which does not satisfy the requirements of that Rule,
the required number of original reproductions shall be submitted to the Office
in accordance with Rule 79 (a). Where the reproductions are received by the
Office within a period of one month from the date of the receipt of the
telecopy by the Office, the application shall be deemed to have been received
by the Office on the date on which the telecopy was received by the Office.
Where the reproductions are received by the Office after the expiry of that
period and the reproduction is necessary for the obtaining of a filing date,
the application shall be deemed to have been received by the Office on the date
on which the reproductions were received by the Office.
(2) Where a communication received by telecopier is incomplete or illegible, or
where the Office has reasonable doubts as to the accuracy of the transmission,
the Office shall inform the sender accordingly and shall invite him, within a
period to be specified by the Office,' to retransmit the original by telecopy
or to submit the original in accordance with Rule 79 (a). Where this request is
complied with within the period specified, the date of the receipt of the
retransmission or of the original shall be deemed to be the date of the receipt
of the original communication, provided that where the deficiency concerns the
granting of a filing date for an application to register a trade mark, the
provisions on the filing date shall apply. Where the request is not complied
with within the period specified, the communication shall be deemed not to have
been received.
(3) Any communication submitted to the Office by telecopier shall be considered
to be duly signed if the reproduction of the signature appears on the printout
produced by the telecopier.
(4) The President of the Office may determine additional requirements of
communication by telecopier, such as the equipment to be used, technical
details of communication, and methods of identifying the sender.
Rule 81
Communication by telex or telegram
(1) Where an application for registration of a trade mark is submitted to the
Office by telex or by telegram and the application contains a reproduction of
the mark pursuant to Rule 3 (2), Rule 80 (1) shall apply mutatis mutandis.
(2) Where a communication is submitted by telex or telegram, Rule 80 (2) shall
apply mutatis mutandis .
(3) Where a communication is submitted by telex or telegram, the indication of
the name of the sender shall be deemed equivalent to the signature.
Rule 82
Communication by electronic means
(1) Where an application for registration of a trademark is submitted by electronic
means and the application contains a reproduction of the mark pursuant to Rule
3 (2), Rule 80 (1) shall apply mutatis mutandis .
(2) Where a communication is sent by electronic means, Rule 80 (2) shall apply
mutatis mutandis .
(3) Where a' communication is sent to the Office by electronic means, the
indication of the name of the sender shall be deemed to be equivalent to the
signature.
(4) The President of the Office shall determine the requirements as to
communication by electronic means, such as the equipment to be used, technical
details of communication, and methods of identifying the sender.
Rule 83
Forms
(1) The Office shall make available free of charge forms for the purpose of:
(a) filing an application for a Community trade mark;
(b) entering opposition to registration of a Community trade mark;
(c) applying for an amendment of an application or a registration, for
correction of names and addresses and of mistakes and errors;
(d) applying for the registration of a transfer and the transfer form and
transfer document provided for in Rule 31 (5);
(e) applying for the registration of a licence;
(f) applying for renewal of the registration of a Community trade mark;
(g) applying for revocation or for a declaration of invalidity of a Community
trade mark;
(h) applying for restitution in integrum;
(i) making an appeal;
(j) authorizing a representative, in the form of an individual authorization
and in the form of a general authorization.
(2) The Office may make other forms available free of charge.
(3) The Office shall make available the forms referred to in paragraphs 1 and 2
in all the official languages of the Community.
(4) The Office shall place the forms at the disposal of the Benelux Trade Mark
Office and the Member States' central industrial property offices free of
charge.
(5) The Office may also make available-the forms in machine-readable form.
(6) Parties to proceedings before the Office shall use the forms provided by
the Office, or copies of these forms, or forms with the same content and format
as these forms, such as forms generated by means of electronic data processing.
(7) Forms shall be completed in such a manner as to permit an automated input
of the content into a computer, such as by character recognition or scanning.
Part I
Information of the public
Rule 84
Register of Community Trade Marks
(1) The Register of Community Trade Marks may be maintained in the form of an
electronic database.
(2) The Register of Community Trade Marks shall contain the following entries:
(a) the date of filing the application;
(b) the file number of the application;
(c) the date of the publication of the application;
(d) the name, the address and the nationality of the applicant and the State in
which he is domiciled or has his seat or establishment;
(e) the name and business address of the representative, other than a
representative falling within the first sentence of Article 88 (3) of the
Regulation; where there is more than one representative, only the name and
business address of the first named representative, followed by the words and
others, shall be recorded; where an association of representatives is
appointed, only the name and address of the association shall be recorded;
(f) the reproduction of the mark, with indications as to its nature, unless it
is a mark falling under Rule 3 (1); where the registration of the mark is in
colour, the indication 'in colour' with an indication of the colour or colours
making up the mark; where applicable, a description of the mark;
(g) an indication of the goods and services by their names, grouped according
to the classes of the Nice Classification; each group shall be preceded by the
number of the class of that classification to which that group of goods and
services belongs and shall be presented in the order of the classes of that
classification
(h) particulars of claims of priority pursuant to Article 30 of the Regulation;
(i) particulars of claims of exhibition priority pursuant to Article 33 of the
Regulation;
(j) particulars of claims of seniority of an earlier registered trade mark as
referred to in Article 34 of the Regulation;
(k) a statement that the mark has become distinctive in consequence of the use
which has been made of it, pursuant to Article 7 (3) of the Regulation;
(l) a declaration by the applicant disclaiming any exclusive right to some
element of the mark pursuant to Article 38 (2) of the Regulation;
(m)an indication that the mark is a collective mark;
(n) the language in which the application was filed and the second language
which the applicant has indicated in his application, pursuant to Article 115
(3) of the Regulation;
(o) the date of registration of the mark in the Register and the registration
number.
(3) The Register of Community Trade Marks shall also contain the following
entries, each accompanied by the date of recording of such entry:
(a) changes in the name, the address or the nationality of the proprietor of a
Community trade mark or in the State in which he is domiciled or has his seat
or establishment;
(b) changes in the name or business address of the representative, other than a
representative falling within Article 88 (3), first sentence, of the
Regulation;
(c) when a new representative is appointed, the name and business address of
that representative;
(d) alterations of the mark pursuant to Article 48 of the Regulation and
corrections of mistakes and errors;
(e) notice of amendments to the regulations governing the use of the collective
mark pursuant to Article 69 of the Regulation;
(f) particulars of claims of seniority of an earlier registered trade mark as
referred to in Article 34 of the Regulation, pursuant to Article 35 of the
Regulation;
(g) total or partial transfers pursuant to Article 17 of the Regulation;
(h) the creation or transfer of a right in rem pursuant to Article 19 of the
Regulation and the nature of the right in rem;
(i) levy of execution pursuant to Article 20 of the Regulation and bankruptcy
or like proceedings pursuant to Article 21 of the regulation;
(j) the grant or transfer of a licence pursuant to Article 22 of the Regulation
and, where applicable, the type of licence pursuant to Rule 34;
(k) renewal of the registration pursuant to Article 47 of the Regulation, the
date from which it takes effect and any restrictions pursuant to Article 47 (4~
of the Regulation;
(I) a record of the determination of the expiry of the registration pursuant to
Article 47 of the Regulation;
(m)a declaration of surrender by the proprietor of the mark pursuant to Article
49 of the Regulation;
(n) the date of submission of an application pursuant to Article 55 of the
Regulation or of the filing of a counterclaim pursuant to Article 96 (4) of the
Regulation for revocation or for a declaration of invalidity;
(o) the date and content of the decision on the application or counterclaim
pursuant to Article 56 (6) or the third sentence of Article 96 (6) of the
Regulation;
(p) a record of the receipt of a' request for conversion pursuant to Article
109 (2) of the Regulation;
(q) the cancellation of the representative recorded - pursuant to paragraph 2
(e);
(r) the cancellation of the seniority of a national mark;
(s) the modification or cancellation from the Register of the items referred to
in subparagraphs (h), (i) and (i).
(4) The President of the Office may determine that items other than those
referred to in paragraphs 2 and 3 shall be entered in the Register.
(5) The proprietor of the trade mark shall be notified of any change in the
Register.
(6) The Office shall provide certified or uncertified extracts from the
Register on request, on payment of a fee.
Part J
Community Trade Marks Bulletin and Official Journal
of the Office
Rule 85
Community Trade Marks Bulletin
(1) The Community Trade Marks Bulletin shall be published in periodic editions.
The Office may make available to the public editions of the Bulletin on CD-ROM
or in any other machine-readable form.
(2) The Community Trade Marks Bulletin shall contain publications of
applications and of entries made in the Register as well as other particulars
relating to applications or registrations of trade marks whose publication is
prescribed by the Regulation or by these Rules.
(3) Where particulars whose publication is prescribed in the Regulation or in
these Rules are published in the Community Trade Marks Bulletin, the date of
issue shown on the Bulletin shall be taken as the date of publication of the
particulars.
(4) To the extent that the entries regarding the registration of a trade mark
contain no changes as compared to the publication of the application, the
publication of such entries shall be made by way of a reference to the
particulars contained in the publication of the application.
(5) The elements of the application for a Community trade mark, as set out in
Article 26 (1) of the Regulation as well as any other information the
publication of which is prescribed in Rule 12 shall, where appropriate, be
published in all the official languages of the Community.
(6) The Office shall take into account any translation submitted by the
applicant. If the language of the application is not one of the languages of
the Office, the translation into the second language indicated by the applicant
shall be communicated to the applicant. The applicant may propose changes to
the translation within a period to be specified by the Office. If the applicant
does not respond within this period or if the Office considers the proposed
changes to be inappropriate, the translation proposed by the Office shall be
published.
Rule 86
Official Journal of the Office
(1) The Official Journal of the Office shall be published in periodic editions.
The Office may make available to the public editions of the Official Journal on
CD-ROM or in any other machine-readable form.
(2) The Official Journal shall be published in the languages of the Office. The
President of the Office may determine that certain items shall be published in
all the official languages of the Community.
Rule 87
Data bank
(1) The Office shall maintain an electronic data bank with the particulars of
applications for registration of trade marks and entries in the Register. The
Office may also make available the contents of this data bank on CD-ROM or in
any other machine-readable form.
(2) The President of the Office shall determine the conditions of access to the
data bank and the manner in which the contents of this data bank may be made
available in machine-readable form, including the charges for these acts.
Part K
Inspection of files and keeping of files
Rule 88
Parts of the file excluded from inspection
The parts of the file which shall be excluded from inspection pursuant to
Article 84 (4) of the Regulation shall be:
(a) documents relating to exclusion or objection pursuant to Article 132 of the
Regulation;
(b) draft decisions and opinions, and all other internal documents used for the
preparation of decisions and opinions;
(c) parts of the file which the party concerned showed a special interest in
keeping confidential before the application for inspection of the files was
made, unless inspection of such part of the file is justified by overriding
legitimate interests of the party seeking inspection.
Rule 89
Procedures for the inspection of files
(1) Inspection of the files of Community trade mark applications and of
registered Community trade marks shall either be of the original document, or
of copies thereof, or of technical means of storage if the files are stored in
this way. The means of inspection shall be determined by the President of the Office.
The request for inspection of the files shall not be deemed to have been made
until the required fee has been paid.
(2) Where inspection of the files of a Community trade mark application is
requested, the request shall contain an indication and evidence to the effect
that the applicant
(a) has consented to the inspection; or
(b) has stated that after the trade mark has been registered he will invoke the
rights under it against the party requesting the inspection.
(3) Inspection of the files shall take place on the premises of the Office.
(4) On request, inspection of the files shall be effected by means of issuing
copies of file documents. Such copies shall incur fees.
(5) The office shall issue on request certified or uncertified copies of the
application for a Community trade mark or of those file documents of which
copies may be issued pursuant to paragraph 4 upon payment of a fee.
Rule 90
Communication of information contained in the files
Subject to the restrictions provided for in Article 84 of the Regulation and
Rule 88, the Office may, upon request, communicate information from any file of
a Community trade mark applied for or of a registered Community trade mark,
subject to payment of a fee. However, the Office may require the exercise of
the option to obtain inspection of the file itself should it deem this to be
appropriate in view of the quantity of information to be supplied.
Rule 91
Keeping of files
(1) The Office shall keep the files relating to Community trade mark applications
and registered Community trade marks for at least five years from the end of
the year in which:
(a) the application is rejected or withdrawn or is deemed to be withdrawn;
(b) the registration of the Community trade mark expires completely pursuant to
Article 47 of the Regulation;
(c) the complete surrender of the Community trade mark is registered pursuant
to Article 49 of the Regulation;
(d) the Community trade mark is completely removed from the Register pursuant
to Article 56 (6) or Article 96 (6) of the Regulation.
(2) The President of the Office shall determine-the form in which the files
shall be kept.
Part L
Administrative cooperation
Rule 92
Exchange of information and communications between
the Office and the authorities of the Member States
(1) The Office and the central industrial property offices of the Member States
shall, upon request, communicate to each other relevant information about the
filing of applications for Community trade marks or national marks and about
proceedings relating to such applications and the marks registered as a result
thereof. Such communications shall not be subject to the restrictions provided
for in Article 84 of the Regulation.
(2) Communications between the Office and the courts or authorities of the Member
States which arise out of the application of the Regulation or these Rules
shall be effected directly between these authorities. Such communication may
also be effected through the central industrial property offices of the Member
States.
(3) Expenditure in respect of communications under paragraphs 1 and 2 shall be
chargeable to the authority making the communications, which shall be exempt
from fees.
Rule 93
Inspection of files by or via courts or authorities of the
Member States
(1) Inspection of files relating to Community trade marks applied for or
registered Community trade marks by courts or authorities of the Member States
be of the original documents or of copies thereof, otherwise Rule 89 shall not
apply.
(2) Courts or Public Prosecutors'' Offices of the Member States may, in the
course of proceedings before them, open files or copies thereof transmitted by
the Office to inspection by third parties. Such inspection shall be subject to
Article 84 of the Regulation. The Office shall not charge any fee for such
inspection.
(3) The Office shall, at the time of transmission of the files or copies
thereof to the courts or Public Prosecutors' Offices of the Member States,
indicate the restrictions to which the inspection of files relating to Community
trade marks applied for or registered Community trade marks is subject pursuant
to Article 84 of the Regulation and Rule 88.
Part M
Costs
Rule 94
Apportionment and fixing of costs
(1) Apportionment of costs pursuant to Article 81 (1) and (2) of the Regulation
shall be dealt with in the decision on the opposition, the decision on the
application for revocation or for a declaration of invalidity of a Community
trade mark, or the decision on the appeal.
(2) Apportionment of costs pursuant to Article 81 (3) and (4) of the Regulation
shall be dealt with in a decision on costs by the Opposition Division, the
Cancellation Division or the Board of Appeal.
(3) A bill of costs, with supporting evidence, shall be attached to the request
for the fixing of costs provided for in the first sentence of Article 81 (6) of
the Regulation. The request shall be admissible only if the decision in respect
of which the fixing of costs is required has become final. Costs may be fixed
once their credibility is established.
(4) The request provided for in the second sentence of Article 81 (6) of the
Regulation for a review of the decision of the registry on the fixing of costs,
stating the reasons on which it is based, must be filed at the Office within
one month after the date of notification of the awarding of costs. It shall not
be deemed to be filed until the fee for reviewing the amount of the costs has
been paid.
(5) The Opposition Division, the Cancellation Division or the Board of Appeal,
as the case may be, shall take a decision on the request referred to in
paragraph 4 without oral proceedings.
(6) The fees to be borne by the losing party pursuant to Article 81 (1) of the
Regulation shall be limited to the fees incurred by the other party for
opposition, for an application for revocation or for a declaration of
invalidity of the Community trade mark and for appeal.
(7) Cost essential to the proceedings and actually incurred by the successful
party shall be borne by the losing party in accordance with Article 81 (1) of
the Regulation on the basis of the following maximum rates:
(a) travel expenses of one party for the outward and return journey between the
place of residence or the place of business and the place where oral
proceedings are held or where evidence is taken, as follows:
(i) the cost of the first-class rail-fare including usual
transport supplements where the total distance by
rail does not exceed 800 km;
(ii) the cost of the tourist-class air-fare where the total
distance by rail exceeds 800 km or the route
includes a sea-crossing;
(b) subsistence expenses by one party equal to the daily subsistence allowance
for officials in grades A4 to A8 as laid down in Article 13 of Annex VII to the
Staff Regulations of Officials of the European Communities;
(c) travel expenses of representatives within the meaning of Article 89 (1) of
the Regulation and of witnesses and of experts, at the rates provided for in
subparagraph (a);
(d) subsistence expenses of representatives within the meaning of Article 89
(1) of the Regulation and of witness and experts, at the rates provided for in
subparagraph (b);
(e) costs entailed in the taking of evidence in the form of examination of
witnesses, opinions by experts or inspection up to ECU 300 per proceedings;
f) cost of representation, within the meaning of Article 89 (1) of the
Regulation,
(i) of the opposing party in opposition
proceedings:
up to ECU 250;
(ii) of the applicant in opposition proceedings:
up to ECU 2S0;
(iii) of the applicant in proceedings relating to
revocation or invalidity of a Community trade
mark:
up to ECU 400;
(iv) of the proprietor of the trade mark in
proceedings relating to revocation or invalidity of
a Community trade mark:
up to ECU 400;
(v) of the appellant in appeal proceedings:
up to ECU 500;
(vi) of the defendant in appeal proceedings:
up to ECU 500;
Where the taking of evidence in any of the abovementioned proceedings involves
the examination of witnesses, opinions by experts or inspection, an additional
amount shall be granted for representation costs of up to ECU 600 per
proceedings;
(g) where the successful party is represented by more than one representative
within the meaning of Article 89 (1) of the Regulation, the losing party shall
bear the costs referred to in subparagraphs (c), (d) and (f) for one such
person only;
(h) the losing party shall not be obliged to reimburse the successful party for
any costs, expenses and fees other than those referred to in subparagraphs (a)
to (g).
Part N
Languages
Rule 95
Applications and declarations
Without prejudice to Article 115 (5) of the Regulation,
(a) any application or declaration relating to a Community trade mark
application may be filed in the language used for filing the application for a
Community trade mark or in the second language indicated by the applicant in
his application;
(b) any application or declaration relating to a registered Community trade
mark may be filed in one of the languages of the Office. However, when the
application is filed by using any of the forms provided by the Office pursuant
to Rule 83, such forms may be used in any of the official languages of the
Community, provided that the form is completed in one of the languages of the
Office, as far as textual elements are concerned.
Rule 96
Written proceedings
(1) Without prejudice to Article 115(4) and (7) of the Regulation, and unless
otherwise provided for in these Rules, in written proceedings before the Office
any party may use any language of the Office. If the language chosen is not the
language of the proceedings, the party shall supply a translation into that
language within one month from the date of the submission of the original
document. Where the applicant for a Community trade mark is the sole party to
proceedings before the Office and the language used for the filing of the
application for the Community trade mark is not one of the languages of the
Office, the translation may also be filed in the second language indicated by
the applicant in his application.
(2) Unless otherwise provided for in these Rules, documents to be used in
proceedings before the Office may be filed in any official language of the
Community. Where the language of such documents is not the language of the
proceedings the Office may require that a translation be supplied, within a
period specified by it, in that language or, at the choice of the party to the
proceeding, in any language of the Office.
Rule 97
Oral proceedings
(1) Any party to oral proceedings before the Office may, in place of the
language of proceedings, use one of the other official languages of the
Community, on condition that he makes provision for interpretation into the
language of proceedings. Where the oral proceedings are held in a proceeding
concerning the application for registration of a trade mark, the applicant may
use either the language of the application or the second language indicated by
him.
(2) In oral proceedings concerning the application for registration of a trade
mark, the staff of the Office may use either the language of the application or
the second language indicated by the applicant. In all other oral proceedings,
the staff of the Office may use, in place of the language of the proceedings,
one of the other languages of the Office, on condition that the party or parties
to the proceedings agree to such use.
(3) In the case of taking of evidence, any party to be heard, witness or expert
who is unable to express himself adequately in the language of proceedings, may
use any of the official languages of the Community. Should the taking of
evidence be decided upon following a request by a party to the proceedings,
parties to be heard, witnesses or experts who express themselves in languages
other than the language of proceedings may be heard only if the party who made the
request makes provision for interpretation into that language. In proceedings
concerning the application for registration of a trade mark, in place of the
language of the application, the second language indicated by the applicant may
be used. In any proceedings with only one party the Office may on request of
the party concerned permit derogations from the provisions in this paragraph.
(4) If the parties and Office so agree, any official language of the Community
may be used in oral proceedings.
(5) The Office shall, if necessary, make provision at its own expense for
interpretation into the language of proceedings, or, where appropriate, into
its other languages, unless this interpretation is the responsibility of one of
the parties to the proceedings.
(6) Statements by staff of the Office, by parties to the proceedings and by
witnesses and experts, made in one of the languages of the Office during oral
proceedings shall be entered in the minutes in the language employed.
Statements made in any other language shall be entered in the language of
proceedings. Amendments to the text of the application for or the registration
of a Community trade mark shall be entered in the minutes in the language of
proceedings.
Rule 98
Certification of translations
(1) When a translation of any document is to be filed, the Office may require
the filing, within a period to be specified by it, of a certificate that the
translation corresponds to the original text. Where the certificate relates to
the translation of a previous application pursuant to Article 30 of the
Regulation, such period shall not be less than three months after the date of
filing of the application. Where the certificate is not filed within that
period, the document shall be deemed not to have been received.
(2) The President of the Office may determine the manner in which translations
are certified.
Rule 99
Legal authenticity of translations
In the absence of evidence to the contrary, the Office may assume that a
translation corresponds to the relevant original text.
Part O
Organization of the Office
Rule 100
Allocation of duties
(1) The President of the Office shall determine the examiners and their number,
the members of the Opposition Divisions and Cancellation Divisions, and the
members of the Administration of Trade Marks and Legal Division. He shall
allocate duties to the examiners and the Divisions.
(2) The President of the Office may provide that examiners may also be members
of the Opposition Divisions, Cancellation Divisions, and the Administration of
Trade Marks and Legal Division, and that members of these Divisions may also be
examiners.
(3) In addition to the responsibilities vested in them under the Regulation,
the President of the Office may allocate further duties to the examiners and
the members of the Opposition Divisions, Cancellation Divisions and the
Administration of Trade Marks and Legal Division.
(4) The President of the Office may entrust to other members of the staff of
the Office who are not examiners or members of any of the Divisions mentioned
in paragraph 1 the execution of individual duties falling to the examiners,
Opposition Divisions, Cancellation Divisions or the Administration of Trade
Marks and Legal Division and involving no special difficulties.
TITEL XII
RECIPROCITIY
Rule 101
Publication of reciprocity
(1) If necessary, the President of the Office shall request the Commission to
enquire whether a State which is not party to the Paris Convention or to the
Agreement establishing the World Trade Organization accords reciprocal
treatment within the meaning of Article 5 (1) (d), Article 5 (3) and Article 29
(5) of the Regulation.
(2) If the Commission determines that reciprocal treatment in accordance with
paragraph 1 is accorded, it shall publish a communication to this effect in the
Official Journal of the European Communities.
(3) Article 5 (1) (d), Article 5 (3) and Article 29 (5) of the Regulation shall
take effect for the nationals of the States concerned from the date of
publication in the Official Journal of the European Communities of the
communication referred to in paragraph 2, unless the communications states an
earlier date from which it is applicable. They shall cease to be effective from
the date of publication in the Official Journal of the European Communities of
a communication of the Commission to the effect that reciprocal treatment is no
longer accorded, unless the communication states an earlier date from which it
is applicable.
(4) Communications referred to in paragraphs 2 and 3 shall also be published in
the Official Journal of the Office.
Article 2
Transitional Provisions
(1) Any application for registration of a Community trade mark filed within
three months prior to the date determined pursuant to Article 143 (3) of the
Regulation shall be marked by the Office with the filing date determined
pursuant to that provision and with the actual date of receipt of the
application.
(2) With regard to the application, the priority period of six months provided
for in Articles 29 and 33 of the Regulation shall be calculated from the date
determined pursuant to Article 143 (3) of the Regulation.
(3) The Office may issue a receipt to the applicant prior to the date
determined pursuant to Article 143 (3) of the Regulation.
(4) The Office may examine the applications prior to the date determined
pursuant to Article 143 (3) of the Regulation and communicate with the
applicant with a view to remedying any deficiencies prior to that date. Any
decisions with regard to such applications may be taken only after that date.
(5) With regard to the application, the Office shall not carry out any search
pursuant to Article 39 (1) of the Regulation, regardless of whether or not a
priority was claimed for such application pursuant to Articles 29 or 33 of the
Regulation.
(6) Where the date of receipt of an application for the registration of a
Community trade mark by the Office, by the central industrial property office
of a Member State or by the Benelux Trade Mark Office is before the
commencement of the three months period specified in Article 143 (4) of the
Regulation the application shall be deemed not to have been filed. The
application shall be informed accordingly and the application shall be sent
back to him.
Article 3
Entry into force
This Regulation shall enter into force on the seventh day following that of its
publication in the Official Journal of the European Communities.
This Regulation shall be binding in its entirety and directly applicable in all
Member States.
Done at Brussels, 13 December 1995.
For the Commission
Mario MONTI
Member of the Commission
COMMISSION REGULATION (EC) No 2869/95
of 13 December 1995
on the fees payable to the Office for Harmonization in the Internal Market
Trade Marks and
Designs")
THE COMMISSION OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European Community,
Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the
Community trade mark 4, as amended by Regulation (EC) No 3288/94 5 and in
particular Article 139 thereof,
Having regard to Commission Regulation (EC) No 2868195 of 13 December 1995,
implementing Council Regulation (EC) No 40/94 on the Community trade mark 6
Whereas Article 139 (3) of Regulation (EC) No 40/94 (hereinafter 'the
Regulation') provides that the fees regulations shall be adopted in accordance
with the procedure laid down in Article 141 of the Regulation;
Whereas Article 139 (1) of the Regulation provides that the fees regulations
shall determine in particular the amount of the fees and the ways in which they
are to be paid;
Whereas Article 139 (2) of the Regulation provides that 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 for Harmonization in
the Internal Market (trade marks and designs) ('the Office') to be balanced;
Whereas, however, in the Office's start-up phase, balance can be achieved only
if there is a subsidy from the general budget of the European Communities, in
accordance with Article 134 (3) of the Regulation;
Whereas the basic fee for the application for a Community trade mark shall
include the amount which the Office must pay to each central industrial
property office of the Member States for each search report provided by such
offices in accordance with Article 39 (4) of the Regulation;
Whereas to ensure the necessary flexibility, the President of the Office ('the
President') should be empowered, subject to certain conditions, to lay down the
charges which may be payable to the Office in respect of services it may
render, the charges for access to the Office's data bank and the making
available of the contents of this data bank in machine-readable form, and to
set charges for the sale of its publications;
Whereas, in order to facilitate the payment of fees and charges, the President
should be empowered to authorize methods of payment which are additional to
those explicitly provided for in this-Regulation;
Whereas it is appropriate that the fees and charges payable to the Office
should be fixed in the same currency unit as is used for the budget of the
Office;
Whereas the budget of the Office is fixed in ecus;
Whereas, moreover, the fixing of these amounts in ecus avoids discrepancies
that may result from exchange rate variations;
Whereas payments in cash should be made in the currency of the Member State
where the Office has its seat;
Whereas the measures envisaged in this Regulation are in accordance with the
opinion of the Committee established under Article 141 of the Regulation,
HAS ADOPTED THIS REGULATION:
Article 1
General
The following shall be levied in accordance with this Regulation:
(a) fees to be paid to the Office as provided for in the Regulation and in
Regulation (EC) No 2868/95;
(b) charges laid down by the President pursuant to Article 3 (1) and (2)
Article 2
Fees provided for in the Regulation and Regulation (EC) No 2868/9S
The fees to be paid to the Office under Article 1 (a) shall be as follows:
in ecus
1. Basic fee for the application for an individual mark (Article 26 (2); Rule 4
(a))
975
2. Fee for each class of goods and services exceeding three for an individual
mark (Article 26 (2); Rule 4 (b))
200
3. Basic fee for the application for a collective mark (Articles 26 (2) and 64
(3); Rules 4 (a) and 42)
1675
4. Fee for each class of goods and services exceeding three for a collective
mark (Article 26 (2) and 64 (3); Rules 4 (b) and 42)
400
5. Opposition fee (Article 42 (3); Rule 18 (1))
350
6. Fee for the alteration of the representation of a trade mark (point 1 of
Article 140 (2) and Article 44 (2); Rule 13 (2))
200
7. Basic fee for the registration of an individual mark (Article 45; Rule 23
(1) (a))
1100
8. Fee for each class of goods and services exceeding three for an individual
mark (Article 45; Rule 23 (1) (b))
200
9. Basic fee for the registration of a collective mark (Articles 45 and 64 (3);
Rules 23 (1) (a) and 42)
2200
10. Fee for each class of goods and services exceeding three for a collective
mark (Articles 45 and 64 (3), Rules 23 (1) (b) and 42)
400
11. Additional fee for the late payment of the registration fee (point 2 of
Article 140 (2), Rule 23 (3))
25 %
of the belated
registration fee, subject
to a maximum of 750
12. Basic fee for the renewal for an individual mark (Article 47 (1), Rule 30
(2) (a))
2500
13. Fee for each class of goods and services exceeding three for an individual
mark (Article 47 (1), Rule 30 (2) (b))
500
14. Basic fee for the renewal for a collective mark (Articles 47 (1) and 64 (3),
Rules 30 (2) (a) and 42)
5000
15. Fee for each class of goods and services exceeding three for a collective
mark (Articles 47 (1) and 64 (3), Rules 30 (2) (b) and 42)
1000
(in ecus)
16. Additional fee for the late payment of the renewal fee or the late
submission of the request for renewal (Article 47 (3), Rule 30 (2) (c))
25%
of the belated renewal
fee, subject to a
maximum of 1500
17. Fee for the application for revocation or for a declaration of invalidity
(Article 55 (2), Rule 39 (2))
700
18. Appeal fee (Article 59, Rule 49 (1))
800
19. Fee for restitutio in integrum (Article 78 (3)) 200
20. Fee for the conversion of a mark into a national trade mark application
(Article 109 (1), Rule 45 (2))
200
21. Fee for the recording of the whole or partial transfer of an application
for a Community trade mark (Article 24 and point 4 of Article 140 (2); Rule-31
(4) and (8))
200 per entry, but, where
multiple requests are submitted in the same application or at the same time,
not to exceed a total of 1 000
22. Fee for the registration of the whole or partial transfer of a registered
Community trade mark (point 4 of Article 140 (2); Rule 31 (4))
200 per registration, but, where multiple requests are submitted in the same
application or at the same time, not to exceed a total of 1000
23. Fee for the registration of a licence or another right in respect of a
registered Community trade mark (point S of Article 140 (2), Rule 33 (1)) or an
application for a Community trade mark (point 6 of Article 140 (2), Rule 33 (4):
a) grant of a licence
b) transfer of a licence
c) creation of a right in rem
d) transfer of a right in rem
e) levy of execution
200 per registration, but, where multiple requests are submitted in the same
application or at the same time, not to exceed a total of 1 000
24. Fee for the cancellation of the registration of a licence or other right
(point 7 of Article 140 (2), Rule 35 (3))
200 per cancellation, but, where multiple requests are submitted in the same
application or at the same time, not to exceed a total of 1 000
(in ecus)
25. Fee for the alteration of a registered Community trade mark (point 8 of
Article 140 (2), Rule 25 (2))
200
26. Fee for the issue of a copy of the application for a Community trade mark
(point 12 of Article 140 (2), Rule 89 (5)), a copy of the certificate of
registration (point 3 of Article 140 (2), Rule 24 (2), or an extract from the
register (point 9 of Article 140 (2), Rule 84 (6))
a) uncertified copy or extract
b) certified copy or extract
10
30
27. Fee for the inspection of the files (point 10 of Article 140 (2) No
10, Rule 89 (1))
30
28. Fee for the issue of copies of file documents (point 11 of Article 140
(2) n° 11, Rule 89 (5)
a) uncertified copy
b) certified copy
plus per page, exceeding 10
10
30
1
29. Fee for the communication of information in a file (point 13 of Article 140
(2), Rule 90)
plus per page, exceeding 10
10
1
30. Fee for the review of the determination of the procedural costs to be
refunded (point 14 of Article 140 (2), Rule 94 (4))
100
Article 3
Charges laid down by the President
1. The President shall lay down the amount to be charged for any
services-rendered by the Office other than those specified in Article 2.
2. The President shall lay down the amount to be charged for the Community
Trade Marks Bulletin and the Official Journal of the Office as well as any
other publications issued by the Office.
3. The amounts of the charges shall be laid down in ecus.
4. The amounts of the charges laid down by the President in accordance with paragraphs
1 and 2 shall be published in the Official Journal of the Office.
Article 4
Due date for fees and charges
1. Fees and charges in respect of which the due date is not specified in the
Regulation or in Regulation No 2868195 shall be due on the date of receipt of
the request for the service for which the fee or the charge is incurred.
2. The President may decide not to make services mentioned in paragraph 1
dependent upon the advance payment of the corresponding fees or charges.
Article 5 .
Payment of fees and charges
1. Fees and charges due to the Office shall be paid
(a) by payment or transfer to a bank account held by the Office,
(b) by delivery or remittance of cheques made payable to the Office, or
(c) in cash.
2. The President may allow methods of payment other than those set out in
paragraph 1, in particular by means of deposits in current accounts held with
the Office.
3. Determinations made pursuant to paragraph 2 shall be published in the
Official Journal of the Office.
Article 6
Currencies
1. Payments or transfers to a bank account referred to in Article 5 (1) (a), by
delivery or remittance of cheques referred to in Article 5 (1) (b) or any other
method of payment allowed by the President pursuant to Article 5 (2) shall be
made in ecus.
2. The payments in cash referred to in Article 5 (1) (c) shall be made in the
currency of the Member State where the Office has its seat. The President shall
determine the ecus equivalents in that currency on the basis of the exchange
rate in force, which are fixed daily by the Commission and published in the
Official Journal of the European Communities in accordance with Council
Regulation (EC) No 3320/94 (1).
Article 7
Particulars concerning payment
1. Every payment must indicate the name of the person making the payment and
must contain the necessary information to enable the Office to establish
immediately the purpose of the payment. In particular, the following
information shall be provided:
(a) when the application fee is paid, the purpose of the payment, namely
'application fee';
(b) when the registration fee is paid, the file number of the application which
is the basis for the registration and the purpose of the payment, namely
'registration fee';
(c) when the opposition fee is paid, the file number of the application and the
name of the applicant for the Community trade mark against which opposition is
entered, and the purpose of the payment, namely 'opposition fee';
(d) when the revocation fee and the invalidity fee are paid the registration
number and the name of the proprietor of the Community trade mark against which
the application is directed, and the purpose of the payment, namely 'revocation
fee' or 'invalidity fee'.
2. If the purpose of the payment cannot immediately be established, the Office
shall require the person making the payment to notify it in writing of this
purpose within such period as it may specify. If the person does not comply
with this request in due time, the payment shall be considered not to have been
made. The amount which has been paid shall be refunded.
Article 8
Deemed date of payment
1. The date on which any payment shall be considered to have been made to the
Office shall be as follows:
(a) in the cases referred to in Article 5 (1) (a), the date on which the amount
of the payment or of the transfer is actually entered in a bank account held by
the Office;
(b) in the case referred to in Article S (1) (b), the date of the receipt of
the cheque at the Office, provided that the cheque is met;
(c) in the cases referred to in Article 5 (1) (c), the date of receipt of the
amount of the cash payment.
2. Where the President allows, in accordance with the provisions of Article 5
(2), other methods of paying fees than those set out in Article 5 (1), he shall
also lay down the date on which such payments shall be considered to have been
made.
3. Where, under the provisions of paragraphs 1 and 2, payment of a fee is not
considered to have been made until after the expiry of the period in which it
was due, it shall be considered that this period has been observed if evidence
is provided to the Office that the person who made the payment-
(a) in a Member State, within the period within which the payment should have
been made:
(i) effected the payment through a banking
establishment;
(ii) duly gave an order to a banking establishment to
transfer the amount of the payment; or
(iii) dispatched at a post office or otherwise a letter
bearing the address of the Office and containing
a cheque within the meaning of Article 5 (1) (b),
provided that the cheque is met;
(b) paid a surcharge of 10 % on the relevant fee or fees, but not exceeding ECU
200; no surcharge is payable if a condition according to sub-paragraph (a) has
been fulfilled not later than 10 days before the expiry of the period for
payment.
4. The Office may request the person who made the payment to produce evidence
as to the date on which a condition according to paragraph 3 (a) was fulfilled
and, where required, to pay the surcharge referred to in paragraph 3 (b),
within a period to be specified by it. If the person fails to comply with this
request or if the evidence is insufficient, or if the required surcharge is not
paid in due time, the period for payment shall be considered not to have been
observed.
Article 9
Insufficiency of the amount paid
1. A time limit for payment shall, in principle, be considered to have been
observed only if the full amount of the fee has been paid in due time. If the
fee is not paid in full, the amount which has been paid shall be refunded after
the period for payment has expired.
2. The Office may, however, in so far as this is possible within the time
remaining before the end of the period, give the person making the payment the
opportunity to pay the amount lacking or, where this is considered justified,
overlook any small amounts lacking without prejudice to the rights of the
person making the payment.
Article 10
Refund of insignificant amoünts
1. Where an excessive sum is paid to cover a fee or a charge, the excess shall
not be refunded if the amount is insignificant and the party concerned has not
expressly requested a refund. The President shall determine what constitutes an
insignificant amount.
2. Determinations by the President pursuant to paragraph 1 shall be published
in the Official Journal of the Office.
Article 11
Entry into force
This Regulation shall enter into force on the seventh day following its
publication in the Official Journal of the European Communities.
This Regulation shall be binding in is entirety and directly applicable in all
Member States.
Done at Brussels, 13 December 1995.
For the Commission
MARIO MONTI
Member of the Commission