IP/N/1/EU/T/2  
 
15 April 2013  
(13-1994)  Page: 1/44  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
 MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
EUROPEAN UNION 
This document reproduces the text1 of Council Regulation (EC) No 207/2009 of 26 February 2009 
on the Community trade mark (codified version), as notified by the European Union on 20 March 2013 under Article 63.2 of the Agreement (see document IP/N/1/EU/1). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
UNION EUROPÉENNE  
Le présent document contient le texte1 du Règlement (CE) n° 207/2009 du Conseil du 
26 février 2009 sur la marque communautaire, notifié par l'Union européenne le 20 mars 2013 au titre de l'article 63:2 de l'Accord (voir le document IP/N/1/EU/1). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
UNIÓN EUROPEA  
En el presente documento se reproduce el texto1 del Reglamento (CE) Nº 207/2009 del Consejo, 
de 26 de febrero de 2009, sobre la marca comunitari a (versión codificada), notificado por la Unión 
Europea el 20 de marzo de 2013 en virtud de lo dispuesto en el párrafo 2 del artículo 63 del 
Acuerdo (véase el documento IP/N/1/EU/1).  
                                               
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/EU/T/2 
 
- 2 - 
 
  PP 3-44 - Offset (Pdf file attached) 
PP 3 à 44 - Offset (fichier Pdf joint) PP 3-44 - Offset (fichero Pdf adjunto) I
(Acts adopted under the EC Treaty/Euratom Treaty whose publication is obligatory)
REGULATIONS
COUNCIL REGULATION (EC) No 207/2009
of 26 February 2009
on the Community trade mark
(codified version)
(Text with EEA relevance)
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Commu-
nity, and in particular Article 308 thereof,
Having regard to the proposal from the Commission,
Having regard to the opinion of the European Parliament (1),
Whereas:
(1) Council Regulation (EC) No 40/94 of 20 December 1993
on the Community trade mark (2) has been substantially
amended several times (3). In the interests of clarity and
rationality the said Regulation should be codified.
(2) It is desirable to promote throughout the Community a
harmonious development of economic activities and a
continuous and balanced expansion by completing aninternal market which functions properly and offersconditions which are similar to those obtaining in anational market. In order to create a market of this kind andmake it increasingly a single market, not only must barriers
to free movement of goods and services be removed and
arrangements be instituted which ensure that competitionis not distorted, but, in addition, legal conditions must becreated which enable undertakings to adapt their activitiesto the scale of the Community, whether in manufacturingand distributing goods or in providing services. For thosepurposes, trade marks enabling the products and services ofundertakings to be distinguished by identical meansthroughout the entire Community, regardless of frontiers,should feature amongst the legal instruments whichundertakings have at their disposal.
(3) For the purpose of pursuing the Community's said
objectives it would appear necessary to provide forCommunity arrangements for trade marks whereby under-
takings can by means of one procedural system obtainCommunity trade marks to which uniform protection isgiven and which produce their effects throughout the entirearea of the Community. The principle of the unitarycharacter of the Community trade mark thus stated shouldapply unless otherwise provided for in this Regulation.
(4) The barrier of territoriality of the rights conferred on
proprietors of trade marks by the laws of the Member
States cannot be removed by approximation of laws. Inorder to open up unrestricted economic activity in thewhole of the internal market for the benefit of under-takings, trade marks should be created which are governedby a uniform Community law directly applicable in allMember States.
(5) Since the Treaty has not provided the specific powers to
establish such a legal instrument, Article 308 of the Treaty
should be applied.
(6) The Community law relating to trade marks nevertheless
does not replace the laws of the Member States on trade
marks. It would not in fact appear to be justified to requireundertakings to apply for registration of their trade marksas Community trade marks. National trade marks continueto be necessary for those undertakings which do not wantprotection of their trade marks at Community level.
(7) The rights in a Community trade mark should not be
obtained otherwise than by registration, and registration
should be refused in particular if the trade mark is notdistinctive, if it is unlawful or if it conflicts with earlierrights.24.3.2009 EN Official Journal of the European Union L 78/1
(1) OJ C 146 E, 12.6.2008, p. 79.
(2) OJ L 11, 14.1.1994, p. 1.
(3) See Annex I.
IP/N/1/EU/T/2 
        - 3 -(8) The protection afforded by a Community trade mark, the
function of which is in particular to guarantee the trade
mark as an indication of origin, should be absolute in thecase of identity between the mark and the sign and thegoods or services. The protection should apply also in casesof similarity between the mark and the sign and the goodsor services. An interpretation should be given of theconcept of similarity in relation to the likelihood ofconfusion. The likelihood of confusion, the appreciation ofwhich depends on numerous elements and, in particular, onthe recognition of the trade mark on the market, theassociation which can be made with the used or registeredsign, the degree of similarity between the trade mark andthe sign and between the goods or services identified,should constitute the specific condition for such protection.
(9) It follows from the principle of free movement of goods
that the proprietor of a Community trade mark must not be
entitled to prohibit its use by a third party in relation togoods which have been put into circulation in theCommunity, under the trade mark, by him or with hisconsent, save where there exist legitimate reasons for theproprietor to oppose further commercialisation of thegoods.
(10) There is no justification for protecting Community trade
marks or, as against them, any trade mark which has been
registered before them, except where the trade marks areactually used.
(11) A Community trade mark is to be regarded as an object of
property which exists separately from the undertakings
whose goods or services are designated by it. Accordingly, itshould be capable of being transferred, subject to theoverriding need to prevent the public being misled as aresult of the transfer. It should also be capable of beingcharged as security in favour of a third party and of beingthe subject matter of licences.
(12) Administrative measures are necessary at Community level
for implementing in relation to every trade mark the trade
mark law created by this Regulation. It is therefore essential,while retaining the Community's existing institutionalstructure and balance of powers, to provide for an Officefor Harmonisation in the Internal Market (trade marks anddesigns) which is independent in relation to technicalmatters and has legal, administrative and financialautonomy. To this end it is necessary and appropriate thatthat Office should be a body of the Community having legalpersonality and exercising the implementing powers whichare conferred on it by this Regulation, and that it shouldoperate within the framework of Community law withoutdetracting from the competencies exercised by the Com-munity institutions.
(13) It is necessary to ensure that parties who are affected by
decisions made by the Office are protected by the law in a
manner which is suited to the special character of trademark law. To that end provision is made for an appeal to liefrom decisions of the examiners and of the variousdivisions of the Office. If the department whose decisionis contested does not rectify its decision it is to remit theappeal to a Board of Appeal of the Office, which is todecide on it. Decisions of the Boards of Appeal are, in turn,amenable to actions before the Court of Justice of theEuropean Communities, which has jurisdiction to annul orto alter the contested decision.
(14) Under the first subparagraph of Article 225(1) of the EC
Treaty the Court of First Instance of the European
Communities has jurisdiction to hear and determine atfirst instance the actions referred to in particular inArticle 230 of the EC Treaty with the exception of thoseassigned to a judicial panel and those reserved in the Statuteto the Court of Justice. The jurisdiction which thisRegulation confers on the Court of Justice to cancel andalter decisions of the Boards of Appeal should accordingly
be exercised at first instance by the Court.
(15) In order to strengthen the protection of Community trade
marks the Member States should designate, having regard
to their own national system, as limited a number aspossible of national courts of first and second instancehaving jurisdiction in matters of infringement and validityof Community trade marks.
(16) Decisions regarding the validity and infringement of
Community trade marks must have effect and cover the
entire area of the Community, as this is the only way ofpreventing inconsistent decisions on the part of the courtsand the Office and of ensuring that the unitary character ofCommunity trade marks is not undermined. The provisionsof Council Regulation (EC) No 44/2001 of 22 December2000 on jurisdiction and the recognition and enforcementof judgments in civil and commercial matters (
1) should
apply to all actions at law relating to Community trademarks, save where this Regulation derogates from thoserules.
(17) Contradictory judgments should be avoided in actions
which involve the same acts and the same parties and
which are brought on the basis of a Community trade markand parallel national trade marks. For this purpose, whenthe actions are brought in the same Member State, the wayin which this is to be achieved is a matter for nationalprocedural rules, which are not prejudiced by thisRegulation, whilst when the actions are brought in differentMember States, provisions modelled on the rules on lis
pendens and related actions of Regulation (EC) No 44/2001
appear appropriate.
(18) In order to guarantee the full autonomy and independence
of the Office, it is considered necessary to grant it an
autonomous budget whose revenue comes principally from
fees paid by the users of the system. However, the
Community budgetary procedure remains applicable asfar as any subsidies chargeable to the general budget of theEuropean Communities are concerned. Moreover, theauditing of accounts should be undertaken by the Courtof Auditors.
(19) Measures necessary for the implementation of this
Regulation should be adopted, particularly as regards fees
regulations and an Implementing Regulation, in accordancewith Council Decision 1999/468/EC of 28 June 1999L 78/2 EN Official Journal of the European Union 24.3.2009
(1) OJ L 12, 16.1.2001, p. 1.
IP/N/1/EU/T/2 
        - 4 -laying down the procedures for the exercise of implement-
ing powers conferred on the Commission (1),
HAS ADOPTED THIS REGULATION:
TITLE I
GENERAL PROVISIONS
Article 1
Community trade mark
1. A trade mark for goods or services which is registered inaccordance with the conditions contained in this Regulation andin the manner herein provided is hereinafter referred to as a‘Community trade mark’.
2. A Community trade mark shall have a unitary character. It
shall have equal effect throughout the Community: it shall not beregistered, transferred or surrendered or be the subject of adecision revoking the rights of the proprietor or declaring itinvalid, nor shall its use be prohibited, save in respect of thewhole Community. This principle shall apply unless otherwiseprovided in this Regulation.
Article 2
Office
An Office for Harmonisation in the Internal Market (trade marksand designs), hereinafter referred to as ‘the Office’, is hereby
established.
Article 3
Capacity to act
For the purpose of implementing this Regulation, companies orfirms and other legal bodies shall be regarded as legal persons if,under the terms of the law governing them, they have thecapacity in their own name to have rights and obligations of allkinds, to make contracts or accomplish other legal acts and tosue and be sued.
TITLE II
THE LAW RELATING TO TRADE MARKS
SECTION 1
Definition of a Community trade mark and obtaining a
Community trade mark
Article 4
Signs of which a Community trade mark may consist
A Community trade mark may consist of any signs capable ofbeing represented graphically, particularly words, includingpersonal names, designs, letters, numerals, the shape of goodsor of their packaging, provided that such signs are capable ofdistinguishing the goods or services of one undertaking fromthose of other undertakings.
Article 5
Persons who can be proprietors of Community trade marks
Any natural or legal person, including authorities established
under public law, may be the proprietor of a Community trademark.
Article 6
Means whereby a Community trade mark is obtained
A Community trade mark shall be obtained by registration.
Article 7
Absolute grounds for refusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of
Article 4;
(b) trade marks which are devoid of any distinctive character;(c) trade marks which consist exclusively of signs or indica-
tions which may serve, in trade, to designate the kind,
quality, quantity, intended purpose, value, geographicalorigin or the time of production of the goods or ofrendering of the service, or other characteristics of thegoods or service;
(d) trade marks which consist exclusively of signs or indica-
tions which have become customary in the currentlanguage or in the bona fide and established practices ofthe trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods
themselves;
(ii) the shape of goods which is necessary to obtain a
technical result;
(iii) the shape which gives substantial value to the goods;
(f) trade marks which are contrary to public policy or to
accepted principles of morality;
(g) trade marks which are of such a nature as to deceive the
public, for instance as to the nature, quality or geographicalorigin of the goods or service;
(h) trade marks which have not been authorised by the
competent authorities and are to be refused pursuant toArticle 6ter of the Paris Convention for the Protection of
Industrial Property, hereinafter referred to as the ‘Paris
Convention’;24.3.2009 EN Official Journal of the European Union L 78/3
(1) OJ L 184, 17.7.1999, p. 23.
IP/N/1/EU/T/2 
        - 5 -(i) trade marks which include badges, emblems or escutcheons
other than those covered by Article 6ter of the Paris
Convention and which are of particular public interest,
unless the consent of the competent authority to theirregistration has been given;
(j) trade marks for wines which contain or consist of a
geographical indication identifying wines or for spiritswhich contain or consist of a geographical indicationidentifying spirits with respect to such wines or spirits nothaving that origin;
(k) trade marks which contain or consist of a designation of
origin or a geographical indication registered in accordancewith Council Regulation (EC) No 510/2006 of 20 March2006 on the protection of geographical indications anddesignations of origin for agricultural products and food-stuffs (
1) when they correspond to one of the situations
covered by Article 13 of the said Regulation and regardingthe same type of product, on condition that the applicationfor registration of the trade mark has been submitted afterthe date of filing with the Commission of the applicationfor registration of the designation of origin or geographical
indication.
2. Paragraph 1 shall apply notwithstanding that the grounds of
non-registrability obtain in only part of the Community.
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark
has become distinctive in relation to the goods or services forwhich registration is requested in consequence of the use whichhas been made of it.
Article 8
Relative grounds for refusal
1. Upon opposition by the proprietor of an earlier trade mark,
the trade mark applied for shall not be registered:
(a) if it is identical with the earlier trade mark and the goods or
services for which registration is applied for are identical
with the goods or services for which the earlier trade markis protected;
(b) if because of its identity with, or similarity to, the earlier
trade mark and the identity or similarity of the goods orservices covered by the trade marks there exists a likelihoodof confusion on the part of the public in the territory inwhich the earlier trade mark is protected; the likelihood ofconfusion includes the likelihood of association with theearlier trade mark.
2. For the purposes of paragraph 1, ‘earlier trade marks ’means:
(a) trade marks of the following kinds with a date of
application for registration which is earlier than the dateof application for registration of the Community trademark, taking account, where appropriate, of the prioritiesclaimed in respect of those trade marks:
(i) Community trade marks;(ii) trade marks registered in a Member State, or, in the
case of Belgium, the Netherlands or Luxembourg, at
the Benelux Office for Intellectual Property;
(iii) trade marks registered under international arrange-
ments which have effect in a Member State;
(iv) trade marks registered under international arrange-
ments which have effect in the Community;
(b) applications for the trade marks referred to in subpara-
graph (a), subject to their registration;
(c) trade marks which, on the date of application for
registration of the Community trade mark, or, whereappropriate, of the priority claimed in respect of theapplication for registration of the Community trade mark,are well known in a Member State, in the sense in which thewords ‘well known’ are used in Article 6bis of the Paris
Convention.
3. Upon opposition by the proprietor of the trade mark, atrade mark shall not be registered where an agent orrepresentative of the proprietor of the trade mark applies forregistration thereof in his own name without the proprietor'sconsent, unless the agent or representative justifies his action.
4. Upon opposition by the proprietor of a non-registered trade
mark or of another sign used in the course of trade of more thanmere local significance, the trade mark applied for shall not beregistered where and to the extent that, pursuant to theCommunity legislation or the law of the Member State governingthat sign:
(a) rights to that sign were acquired prior to the date of
application for registration of the Community trade mark,
or the date of the priority claimed for the application forregistration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the
use of a subsequent trade mark.
5. Furthermore, upon opposition by the proprietor of anearlier trade mark within the meaning of paragraph 2, the trademark applied for shall not be registered where it is identical with,or similar to, the earlier trade mark and is to be registered forgoods or services which are not similar to those for which theearlier trade mark is registered, where, in the case of an earlierCommunity trade mark, the trade mark has a reputation in theCommunity and, in the case of an earlier national trade mark, thetrade mark has a reputation in the Member State concerned andwhere the use without due cause of the trade mark applied forwould take unfair advantage of, or be detrimental to, thedistinctive character or the repute of the earlier trade mark.L 78/4 EN Official Journal of the European Union 24.3.2009
(1) OJ L 93, 31.3.2006, p. 12.
IP/N/1/EU/T/2 
        - 6 -SECTION 2
Effects of Community trade marks
Article 9
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor
exclusive rights therein. The proprietor shall be entitled toprevent all third parties not having his consent from using in thecourse of trade:
(a) any sign which is identical with the Community trade mark
in relation to goods or services which are identical with
those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to,
the Community trade mark and the identity or similarity ofthe goods or services covered by the Community trademark and the sign, there exists a likelihood of confusion onthe part of the public; the likelihood of confusion includesthe likelihood of association between the sign and the trademark;
(c) any sign which is identical with, or similar to, the
Community trade mark in relation to goods or serviceswhich are not similar to those for which the Communitytrade mark is registered, where the latter has a reputation inthe Community and where use of that sign without duecause takes unfair advantage of, or is detrimental to, thedistinctive character or the repute of the Community trademark.
2. The following, inter alia, may be prohibited under para-
graph 1:
(a) affixing the sign to the goods or to the packaging thereof;(b) offering the goods, putting them on the market or stocking
them for these purposes under that sign, or offering or
supplying services thereunder;
(c) importing or exporting the goods under that sign;
(d) using the sign on business papers and in advertising.
3. The rights conferred by a Community trade mark shall
prevail against third parties from the date of publication ofregistration of the trade mark. Reasonable compensation may,however, be claimed in respect of acts occurring after the date ofpublication of a Community trade mark application, which actswould, after publication of the registration of the trade mark, beprohibited by virtue of that publication. The court seized of thecase may not decide upon the merits of the case until theregistration has been published.Article 10
Reproduction of Community trade marks in dictionaries
If the reproduction of a Community trade mark in a dictionary,encyclopaedia or similar reference work gives the impression thatit constitutes the generic name of the goods or services for whichthe trade mark is registered, the publisher of the work shall, atthe request of the proprietor of the Community trade mark,ensure that the reproduction of the trade mark at the latest in thenext edition of the publication is accompanied by an indicationthat it is a registered trade mark.
Article 11
Prohibition on the use of a Community trade mark
registered in the name of an agent or representative
Where a Community trade mark is registered in the name of theagent or representative of a person who is the proprietor of thattrade mark, without the proprietor's authorisation, the latter shallbe entitled to oppose the use of his mark by his agent orrepresentative if he has not authorised such use, unless the agentor representative justifies his action.
Article 12
Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle the proprietor toprohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production
of the goods or of rendering of the service, or othercharacteristics of the goods or service;
(c) the trade mark where it is necessary to indicate the intended
purpose of a product or service, in particular as accessoriesor spare parts,
provided he uses them in accordance with honest practices inindustrial or commercial matters.
Article 13
Exhaustion of the rights conferred by a Community trade
mark
1. A Community trade mark shall not entitle the proprietor toprohibit its use in relation to goods which have been put on themarket in the Community under that trade mark by theproprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate
reasons for the proprietor to oppose further commercialisationof the goods, especially where the condition of the goods ischanged or impaired after they have been put on the market.24.3.2009 EN Official Journal of the European Union L 78/5
IP/N/1/EU/T/2 
        - 7 -Article 14
Complementary application of national law relating to
infringement
1. The effects of Community trade marks shall be governed
solely by the provisions of this Regulation. In other respects,infringement of a Community trade mark shall be governed bythe national law relating to infringement of a national trade markin accordance with the provisions of Title X.
2. This Regulation shall not prevent actions concerning a
Community trade mark being brought under the law of MemberStates relating in particular to civil liability and unfaircompetition.
3. The rules of procedure to be applied shall be determined in
accordance with the provisions of Title X.
SECTION 3
Use of Community trade marks
Article 15
Use of Community trade marks
1. If, within a period of five years following registration, theproprietor has not put the Community trade mark to genuineuse in the Community in connection with the goods or servicesin respect of which it is registered, or if such use has beensuspended during an uninterrupted period of five years, theCommunity trade mark shall be subject to the sanctions providedfor in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the
first subparagraph:
(a) use of the Community trade mark in a form differing in
elements which do not alter the distinctive character of the
mark in the form in which it was registered;
(b) affixing of the Community trade mark to goods or to the
packaging thereof in the Community solely for exportpurposes.
2. Use of the Community trade mark with the consent of theproprietor shall be deemed to constitute use by the proprietor.
SECTION 4
Community trade marks as objects of property
Article 16
Dealing with Community trade marks as national trade
marks
1. Unless Articles 17 to 24 provide otherwise, a Communitytrade mark as an object of property shall be dealt with in itsentirety, and for the whole area of the Community, as a nationaltrade mark registered in the Member State in which, according tothe Register of Community trade marks:
(a) the proprietor has his seat or his domicile on the relevant
date;
(b) where point (a) does not apply, the proprietor has an
establishment on the relevant date.
2. In cases which are not provided for by paragraph 1, the
Member State referred to in that paragraph shall be the MemberState in which the seat of the Office is situated.
3. If two or more persons are mentioned in the Register of
Community trade marks as joint proprietors, paragraph 1 shallapply to the joint proprietor first mentioned; failing this, it shallapply to the subsequent joint proprietors in the order in whichthey are mentioned. Where paragraph 1 does not apply to any ofthe joint proprietors, paragraph 2 shall apply.
Article 17
Transfer
1. A Community trade mark may be transferred, separatelyfrom any transfer of the undertaking, in respect of some or all ofthe goods or services for which it is registered.
2. A transfer of the whole of the undertaking shall include the
transfer of the Community trade mark except where, inaccordance with the law governing the transfer, there isagreement to the contrary or circumstances clearly dictateotherwise. This provision shall apply to the contractualobligation to transfer the undertaking.
3. Without prejudice to paragraph 2, an assignment of the
Community trade mark shall be made in writing and shallrequire the signature of the parties to the contract, except when itis a result of a judgment; otherwise it shall be void.
4. Where it is clear from the transfer documents that because
of the transfer the Community trade mark is likely to mislead thepublic concerning the nature, quality or geographical origin ofthe goods or services in respect of which it is registered, theOffice shall not register the transfer unless the successor agreesto limit registration of the Community trade mark to goods orservices in respect of which it is not likely to mislead.
5. On request of one of the parties a transfer shall be entered in
the Register and published.
6. As long as the transfer has not been entered in the Register,
the successor in title may not invoke the rights arising from theregistration of the Community trade mark.
7. Where there are time limits to be observed vis-à-vis the
Office, the successor in title may make the correspondingstatements to the Office once the request for registration of thetransfer has been received by the Office.L 78/6 EN Official Journal of the European Union 24.3.2009
IP/N/1/EU/T/2 
        - 8 -8. All documents which require notification to the proprietor
of the Community trade mark in accordance with Article 79shall be addressed to the person registered as proprietor.
Article 18
Transfer of a trade mark registered in the name of an agent
Where a Community trade mark is registered in the name of the
agent or representative of a person who is the proprietor of thattrade mark, without the proprietor's authorisation, the latter shallbe entitled to demand the assignment in his favour of the saidregistration, unless such agent or representative justifies hisaction.
Article 19
Rights in rem
1. A Community trade mark may, independently of theundertaking, be given as security or be the subject of rights in
rem.
2. On request of one of the parties, rights mentioned in
paragraph 1 shall be entered in the Register and published.
Article 20
Levy of execution
1. A Community trade mark may be levied in execution.
2. As regards the procedure for levy of execution in respect of a
Community trade mark, the courts and authorities of theMember States determined in accordance with Article 16 shallhave exclusive jurisdiction.
3. On request of one the parties, levy of execution shall be
entered in the Register and published.
Article 21
Insolvency proceedings
1. The only insolvency proceedings in which a Communitytrade mark may be involved are those opened in the MemberState in the territory of which the debtor has his centre of maininterests.
However, where the debtor is an insurance undertaking or a
credit institution as defined in Directive 2001/17/EC of theEuropean Parliament and of the Council of 19 March 2001 onthe reorganisation and winding-up of insurance undertakings (
1)
and Directive 2001/24/EC of the European Parliament and of theCouncil of 4 April 2001 on the reorganisation and winding upof credit institutions (
2), respectively, the only insolvency
proceedings in which a Community trademark may be involvedare those opened in the Member State where that undertaking orinstitution has been authorised.2. In the case of joint proprietorship of a Community trademark, paragraph 1 shall apply to the share of the jointproprietor.
3. Where a Community trade mark is involved in insolvency
proceedings, on request of the competent national authority anentry to this effect shall be made in the Register and published inthe Community Trade Marks Bulletin referred to in Article 89.
Article 22
Licensing
1. A Community trade mark may be licensed for some or all ofthe goods or services for which it is registered and for the wholeor part of the Community. A licence may be exclusive or non-exclusive.
2. The proprietor of a Community trade mark may invoke the
rights conferred by that trade mark against a licensee who
contravenes any provision in his licensing contract with regardto:
(a) its duration;(b) the form covered by the registration in which the trade
mark may be used;
(c) the scope of the goods or services for which the licence is
granted;
(d) the territory in which the trade mark may be affixed; or(e) the quality of the goods manufactured or of the services
provided by the licensee.
3. Without prejudice to the provisions of the licensing
contract, the licensee may bring proceedings for infringementof a Community trade mark only if its proprietor consentsthereto. However, the holder of an exclusive licence may bringsuch proceedings if the proprietor of the trade mark, after formalnotice, does not himself bring infringement proceedings withinan appropriate period.
4. A licensee shall, for the purpose of obtaining compensation
for damage suffered by him, be entitled to intervene ininfringement proceedings brought by the proprietor of theCommunity trade mark.
5. On request of one of the parties the grant or transfer of a
licence in respect of a Community trade mark shall be entered inthe Register and published.
Article 23
Effects vis-à-vis third parties
1. Legal acts referred to in Articles 17, 19 and 22 concerning aCommunity trade mark shall have effects vis-à-vis third parties inall the Member States only after entry in the Register.Nevertheless, such an act, before it is so entered, shall have24.3.2009 EN Official Journal of the European Union L 78/7
(1) OJ L 110, 20.4.2001, p. 28.
(2) OJ L 125, 5.5.2001, p. 15.
IP/N/1/EU/T/2 
        - 9 -effect vis-à-vis third parties who have acquired rights in the trade
mark after the date of that act but who knew of the act at thedate on which the rights were acquired.
2. Paragraph 1 shall not apply in the case of a person who
acquires the Community trade mark or a right concerning theCommunity trade mark by way of transfer of the whole of theundertaking or by any other universal succession.
3. The effects vis-à-vis third parties of the legal acts referred to
in Article 20 shall be governed by the law of the Member Statedetermined in accordance with Article 16.
4. Until such time as common rules for the Member States in
the field of bankruptcy enter into force, the effects vis-à-vis thirdparties of bankruptcy or like proceedings shall be governed bythe law of the Member State in which such proceedings are firstbrought within the meaning of national law or of conventionsapplicable in this field.
Article 24
The application for a Community trade mark as an object of
property
Articles 16 to 23 shall apply to applications for Communitytrade marks.
TITLE III
APPLICATION FOR COMMUNITY TRADE MARKS
SECTION 1
Filing of applications and the conditions which govern them
Article 25
Filing of applications
1. An application for a Community trade mark shall be filed, atthe choice of the applicant:
(a) at the Office;
(b) at the central industrial property office of a Member State
or at the Benelux Office for Intellectual Property. An
application filed in this way shall have the same effect as ifit had been filed on the same date at the Office.
2. Where the application is filed at the central industrialproperty office of a Member State or at the Benelux Office forIntellectual Property, that office shall take all steps to forward theapplication to the Office within two weeks after filing. It maycharge the applicant a fee which shall not exceed theadministrative costs of receiving and forwarding the application.3. Applications referred to in paragraph 2 which reach theOffice more than two months after filing shall be deemed to havebeen filed on the date on which the application reached theOffice.
4. Ten years after the entry into force of Regulation (EC)
No 40/94, the Commission shall draw up a report on theoperation of the system of filing applications for Communitytrade marks, together with any proposals for modifying thissystem.
Article 26
Conditions with which applications must comply
1. An application for a Community trade mark shall contain:
(a) a request for the registration of a Community trade mark;(b) information identifying the applicant;
(c) a list of the goods or services in respect of which the
registration is requested;
(d) a representation of the trade mark.
2. The application for a Community trade mark shall be subject
to the payment of the application fee and, when appropriate, ofone or more class fees.
3. An application for a Community trade mark must comply
with the conditions laid down in the Implementing Regulationreferred to in Article 162(1), hereinafter referred to as the‘Implementing Regulation’.
Article 27
Date of filing
The date of filing of a Community trade mark application shallbe the date on which documents containing the informationspecified in Article 26(1) are filed with the Office by theapplicant or, if the application has been filed with the centraloffice of a Member State or with the Benelux Office forIntellectual Property, with that office, subject to payment of theapplication fee within a period of one month of filing theabovementioned documents.
Article 28
Classification
Goods and services in respect of which Community trade marksare applied for shall be classified in conformity with the systemof classification specified in the Implementing Regulation.L 78/8 EN Official Journal of the European Union 24.3.2009
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        - 10 -SECTION 2
Priority
Article 29
Right of priority
1. A person who has duly filed an application for a trade mark
in or in respect of any State party to the Paris Convention or tothe Agreement establishing the World Trade Organisation, or hissuccessors in title, shall enjoy, for the purpose of filing aCommunity trade mark application for the same trade mark inrespect of goods or services which are identical with or containedwithin those for which the application has been filed, a right ofpriority during a period of six months from the date of filing ofthe first application.
2. Every filing that is equivalent to a regular national filing
under the national law of the State where it was made or underbilateral or multilateral agreements shall be recognised as giving
rise to a right of priority.
3. By a regular national filing is meant any filing that is
sufficient to establish the date on which the application was filed,whatever may be the outcome of the application.
4. A subsequent application for a trade mark which was the
subject of a previous first application in respect of the samegoods or services and which is filed in or in respect of the sameState shall be considered as the first application for the purposesof determining priority, provided that, at the date of filing of thesubsequent application, the previous application has beenwithdrawn, abandoned or refused, without being open to publicinspection and without leaving any rights outstanding, and hasnot served as a basis for claiming a right of priority. The previousapplication may not thereafter serve as a basis for claiming aright of priority.
5. If the first filing has been made in a State which is not a
party to the Paris Convention or to the Agreement establishingthe World Trade Organisation, paragraphs 1 to 4 shall apply onlyin so far as that State, according to published findings, grants, onthe basis of the first filing made at the Office and subject toconditions equivalent to those laid down in this Regulation, aright of priority having equivalent effect.
Article 30
Claiming priority
An applicant desiring to take advantage of the priority of aprevious application shall file a declaration of priority and a copyof the previous application. If the language of the latter is notone of the languages of the Office, the applicant shall file atranslation of the previous application in one of those languages.
Article 31
Effect of priority right
The right of priority shall have the effect that the date of priorityshall count as the date of filing of the Community trade markapplication for the purposes of establishing which rights takeprecedence.
Article 32
Equivalence of Community filing with national filing
A Community trade mark application which has been accorded adate of filing shall, in the Member States, be equivalent to aregular national filing, where appropriate with the priorityclaimed for the Community trade mark application.
SECTION 3
Exhibition priority
Article 33
Exhibition priority
1. If an applicant for a Community trade mark has displayedgoods or services under the mark applied for, at an official orofficially recognised international exhibition falling within theterms of the Convention on International Exhibitions signed atParis on 22 November 1928 and last revised on 30 November1972, he may, if he files the application within a period of sixmonths from the date of the first display of the goods or servicesunder the mark applied for, claim a right of priority from thatdate within the meaning of Article 31.
2. An applicant who wishes to claim priority pursuant to
paragraph 1 must file evidence of the display of goods or servicesunder the mark applied for under the conditions laid down inthe Implementing Regulation.
3. An exhibition priority granted in a Member State or in a
third country does not extend the period of priority laid down inArticle 29.
SECTION 4
Claiming the seniority of a national trade mark
Article 34
Claiming the seniority of a national trade mark
1. The proprietor of an earlier trade mark registered in aMember State, including a trade mark registered in the Beneluxcountries, or registered under international arrangements havingeffect in a Member State, who applies for an identical trade markfor registration as a Community trade mark for goods or serviceswhich are identical with or contained within those for which theearlier trade mark has been registered, may claim for theCommunity trade mark the seniority of the earlier trade mark inrespect of the Member State in or for which it is registered.24.3.2009 EN Official Journal of the European Union L 78/9
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        - 11 -2. Seniority shall have the sole effect under this Regulation
that, where the proprietor of the Community trade marksurrenders the earlier trade mark or allows it to lapse, he shall bedeemed to continue to have the same rights as he would havehad if the earlier trade mark had continued to be registered.
3. The seniority claimed for the Community trade mark shall
lapse if the earlier trade mark the seniority of which is claimed is
declared to have been revoked or to be invalid or if it is
surrendered prior to the registration of the Community trademark.
Article 35
Claiming seniority after registration of the Community
trade mark
1. The proprietor of a Community trade mark who is theproprietor of an earlier identical trade mark registered in aMember State, including a trade mark registered in the Beneluxcountries or of an earlier identical trade mark, with aninternational registration effective in a Member State, for goodsor services which are identical to those for which the earlier trademark has been registered, or contained within them, may claimthe seniority of the earlier trade mark in respect of the MemberState in or for which it was registered.
2. Article 34(2) and (3) shall apply.
TITLE IV
REGISTRATION PROCEDURE
SECTION 1
Examination of applications
Article 36
Examination of the conditions of filing
1. The Office shall examine whether:(a) the Community trade mark application satisfies the
requirements for the accordance of a date of filing in
accordance with Article 27;
(b) the Community trade mark application complies with the
conditions laid down in this Regulation and with theconditions laid down in the Implementing Regulation;
(c) where appropriate, the class fees have been paid within the
prescribed period.
2. Where the Community trade mark application does notsatisfy the requirements referred to in paragraph 1, the Officeshall request the applicant to remedy the deficiencies or thedefault on payment within the prescribed period.3. If the deficiencies or the default on payment establishedpursuant to paragraph 1(a) are not remedied within this period,the application shall not be dealt with as a Community trademark application. If the applicant complies with the Office'srequest, the Office shall accord as the date of filing of theapplication the date on which the deficiencies or the default onpayment established are remedied.
4. If the deficiencies established pursuant to paragraph 1(b) are
not remedied within the prescribed period, the Office shall refusethe application.
5. If the default on payment established pursuant to para-
graph 1(c) is not remedied within the prescribed period, theapplication shall be deemed to be withdrawn unless it is clearwhich categories of goods or services the amount paid isintended to cover.
6. Failure to satisfy the requirements concerning the claim to
priority shall result in loss of the right of priority for theapplication.
7. Failure to satisfy the requirements concerning the claiming
of seniority of a national trade mark shall result in loss of thatright for the application.
Article 37
Examination as to absolute grounds for refusal
1. Where, under Article 7, a trade mark is ineligible forregistration in respect of some or all of the goods or servicescovered by the Community trade mark application, theapplication shall be refused as regards those goods or services.
2. Where the trade mark contains an element which is not
distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of protection ofthe trade mark, the Office may request, as a condition forregistration of said trade mark, that the applicant state that hedisclaims any exclusive right to such element. Any disclaimershall be published together with the application or theregistration of the Community trade mark, as the case may be.
3. The application shall not be refused before the applicant has
been allowed the opportunity of withdrawing or amending theapplication or of submitting his observations.
SECTION 2
Search
Article 38
Search
1. Once the Office has accorded a date of filing, it shall draw upa Community search report citing those earlier Community trademarks or Community trade mark applications discovered whichL 78/10 EN Official Journal of the European Union 24.3.2009
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        - 12 -may be invoked under Article 8 against the registration of the
Community trade mark applied for.
2. Where, at the time of filing a Community trade mark
application, the applicant requests that a search report also beprepared by the central industrial property offices of the MemberStates and where the appropriate search fee has been paid withinthe time limit for the payment of the filing fee, the Office shall, assoon as a Community trade mark application has been accordeda date of filing, transmit a copy thereof to the central industrialproperty office of each Member State which has informed theOffice of its decision to operate a search in its own register oftrade marks in respect of Community trade mark applications.
3. Each of the central industrial property offices referred to in
paragraph 2 shall communicate to the Office within two monthsas from the date on which it received the Community trade markapplication a search report which shall either cite those earliernational trade marks or trade mark applications discoveredwhich may be invoked under Article 8 against the registration ofthe Community trade mark applied for, or state that the searchhas revealed no such rights.
4. The search reports referred to in paragraph 3 shall be
prepared on a standard form drawn up by the Office, afterconsulting the Administrative Board provided for in Arti-cle 126(1), hereinafter referred to as ‘the Administrative Board’.
The essential contents of this form shall be set out in theImplementing Regulation.
5. An amount shall be paid by the Office to each central
industrial property office for each search report provided by thatoffice in accordance with paragraph 3. The amount, which shallbe the same for each office, shall be fixed by the BudgetCommittee by means of a decision adopted by a majority ofthree-quarters of the representatives of the Member States.
6. The Office shall transmit without delay to the applicant for
the Community trade mark the Community search report andany requested national search reports received within the timelimit laid down in paragraph 3.
7. Upon publication of the Community trade mark application,
which may not take place before the expiry of a period of onemonth as from the date on which the Office transmits the searchreports to the applicant, the Office shall inform the proprietorsof any earlier Community trade marks or Community trade markapplications cited in the Community search report of thepublication of the Community trade mark application.
SECTION 3
Publication of the application
Article 39
Publication of the application
1. If the conditions which the application for a Communitytrade mark must satisfy have been fulfilled and if the periodreferred to in Article 38(7) has expired, the application shall bepublished to the extent that it has not been refused pursuant toArticle 37.
2. Where, after publication, the application is refused under
Article 37, the decision that it has been refused shall bepublished upon becoming final.
SECTION 4
Observations by third parties and opposition
Article 40
Observations by third parties
1. Following the publication of the Community trade markapplication, any natural or legal person and any group or bodyrepresenting manufacturers, producers, suppliers of services,traders or consumers may submit to the Office writtenobservations, explaining on which grounds under Article 7, inparticular, the trade mark shall not be registered ex officio. They
shall not be parties to the proceedings before the Office.
2. The observations referred to in paragraph 1 shall be
communicated to the applicant who may comment on them.
Article 41
Opposition
1. Within a period of three months following the publicationof a Community trade mark application, notice of opposition toregistration of the trade mark may be given on the grounds thatit may not be registered under Article 8:
(a) by the proprietors of earlier trade marks referred to in
Article 8(2) as well as licensees authorised by the
proprietors of those trade marks, in respect of Arti-
cle 8(1) and (5);
(b) by the proprietors of trade marks referred to in Article 8(3);
(c) by the proprietors of earlier marks or signs referred to in
Article 8(4) and by persons authorised under the relevant
national law to exercise these rights.
2. Notice of opposition to registration of the trade mark mayalso be given, subject to the conditions laid down in paragraph 1,in the event of the publication of an amended application inaccordance with the second sentence of Article 43(2).24.3.2009 EN Official Journal of the European Union L 78/11
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        - 13 -3. Opposition must be expressed in writing and must specify
the grounds on which it is made. It shall not be treated as dulyentered until the opposition fee has been paid. Within a periodfixed by the Office, the opponent may submit in support of hiscase facts, evidence and arguments.
Article 42
Examination of opposition
1. In the examination of the opposition the Office shall invitethe parties, as often as necessary, to file observations, within aperiod set them by the Office, on communications from theother parties or issued by itself.
2. If the applicant so requests, the proprietor of an earlier
Community trade mark who has given notice of opposition shallfurnish proof that, during the period of five years preceding thedate of publication of the Community trade mark application,the earlier Community trade mark has been put to genuine use inthe Community in connection with the goods or services inrespect of which it is registered and which he cites as justificationfor his opposition, or that there are proper reasons for non-use,provided the earlier Community trade mark has at that date beenregistered for not less than five years. In the absence of proof tothis effect, the opposition shall be rejected. If the earlierCommunity trade mark has been used in relation to part onlyof the goods or services for which it is registered it shall, for thepurposes of the examination of the opposition, be deemed to beregistered in respect only of that part of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks
referred to in Article 8(2)(a), by substituting use in the MemberState in which the earlier national trade mark is protected for usein the Community.
4. The Office may, if it thinks fit, invite the parties to make a
friendly settlement.
5. If examination of the opposition reveals that the trade mark
may not be registered in respect of some or all of the goods orservices for which the Community trade mark application hasbeen made, the application shall be refused in respect of thosegoods or services. Otherwise the opposition shall be rejected.
6. The decision refusing the application shall be published
upon becoming final.
SECTION 5
Withdrawal, restriction, amendment and division of the
application
Article 43
Withdrawal, restriction and amendment of the application
1. The applicant may at any time withdraw his Communitytrade mark application or restrict the list of goods or servicescontained therein. Where the application has already beenpublished, the withdrawal or restriction shall also be published.
2. In other respects, a Community trade mark application may
be amended, upon request of the applicant, only by correctingthe name and address of the applicant, errors of wording or ofcopying, or obvious mistakes, provided that such correction doesnot substantially change the trade mark or extend the list ofgoods or services. Where the amendments affect the representa-tion of the trade mark or the list of goods or services and are
made after publication of the application, the trade mark
application shall be published as amended.
Article 44
Division of the application
1. The applicant may divide the application by declaring thatsome of the goods or services included in the original applicationwill be the subject of one or more divisional applications. Thegoods or services in the divisional application shall not overlapwith the goods or services which remain in the originalapplication or those which are included in other divisionalapplications.
2. The declaration of division shall not be admissible:
(a) if, where an opposition has been entered against the
original application, such a divisional application has the
effect of introducing a division amongst the goods orservices against which the opposition has been directed,until the decision of the Opposition Division has becomefinal or the opposition proceedings are finally terminatedotherwise;
(b) during the periods laid down in the Implementing
Regulation.
3. The declaration of division must comply with the provisionsset out in the Implementing Regulation.
4. The declaration of division shall be subject to a fee. The
declaration shall be deemed not to have been made until the feehas been paid.
5. The division shall take effect on the date on which it is
recorded in the files kept by the Office concerning the originalapplication.
6. All requests and applications submitted and all fees paid
with regard to the original application prior to the date on whichthe Office receives the declaration of division are deemed also tohave been submitted or paid with regard to the divisionalapplication or applications. The fees for the original applicationwhich have been duly paid prior to the date on which the
declaration of division is received shall not be refunded.
7. The divisional application shall preserve the filing date and
any priority date and seniority date of the original application.L 78/12 EN Official Journal of the European Union 24.3.2009
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        - 14 -SECTION 6
Registration
Article 45
Registration
Where an application meets the requirements of this Regulation
and where no notice of opposition has been given within theperiod referred to in Article 41(1) or where opposition has beenrejected by a definitive decision, the trade mark shall beregistered as a Community trade mark, provided that theregistration fee has been paid within the period prescribed. If thefee is not paid within this period the application shall be deemedto be withdrawn.
TITLE V
DURATION, RENEWAL, ALTERATION AND DIVISION OF
COMMUNITY TRADE MARKS
Article 46
Duration of registration
Community trade marks shall be registered for a period of 10years from the date of filing of the application. Registration maybe renewed in accordance with Article 47 for further periods of10 years.
Article 47
Renewal
1. Registration of the Community trade mark shall be renewedat the request of the proprietor of the trade mark or any personexpressly authorised by him, provided that the fees have beenpaid.
2. The Office shall inform the proprietor of the Community
trade mark, and any person having a registered right in respect ofthe Community trade mark, of the expiry of the registration ingood time before the said expiry. Failure to give such informationshall not involve the responsibility of the Office.
3. The request for renewal shall be submitted within a period
of six months ending on the last day of the month in whichprotection ends. The fees shall also be paid within this period.Failing this, the request may be submitted and the fees paidwithin a further period of six months following the day referred
to in the first sentence, provided that an additional fee is paid
within this further period.
4. Where the request is submitted or the fees paid in respect of
only some of the goods or services for which the Communitytrade mark is registered, registration shall be renewed for thosegoods or services only.
5. Renewal shall take effect from the day following the date on
which the existing registration expires. The renewal shall beregistered.Article 48
Alteration
1. The Community trade mark shall not be altered in theRegister during the period of registration or on renewal thereof.
2. Nevertheless, where the Community trade mark includes the
name and address of the proprietor, any alteration thereof notsubstantially affecting the identity of the trade mark as originallyregistered may be registered at the request of the proprietor.
3. The publication of the registration of the alteration shall
contain a representation of the Community trade mark asaltered. Third parties whose rights may be affected by thealteration may challenge the registration thereof within a period
of three months following publication.
Article 49
Division of the registration
1. The proprietor of the Community trade mark may divide the
registration by declaring that some of the goods or servicesincluded in the original registration will be the subject of one ormore divisional registrations. The goods or services in thedivisional registration shall not overlap with the goods orservices which remain in the original registration or those which
are included in other divisional registrations.
2. The declaration of division shall not be admissible:(a) if, where an application for revocation of rights or for a
declaration of invalidity has been entered at the Office
against the original registration, such a divisional declara-tion has the effect of introducing a division amongst thegoods or services against which the application forrevocation of rights or for a declaration of invalidity isdirected, until the decision of the Cancellation Division hasbecome final or the proceedings are finally terminatedotherwise;
(b) if, where a counterclaim for revocation or for a declaration
of invalidity has been entered in a case before a Communitytrade mark court, such a divisional declaration has the effectof introducing a division amongst the goods or servicesagainst which the counterclaim is directed, until themention of the Community trade mark court's judgmentis recorded in the Register pursuant to Article 100(6).
3. The declaration of division must comply with the provisionsset out in the Implementing Regulation.
4. The declaration of division shall be subject to a fee. The
declaration shall be deemed not to have been made until the feehas been paid.
5. The division shall take effect on the date on which it is
entered in the Register.
6. All requests and applications submitted and all fees paid
with regard to the original registration prior to the date on whichthe Office receives the declaration of division shall be deemed24.3.2009 EN Official Journal of the European Union L 78/13
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        - 15 -also to have been submitted or paid with regard to the divisional
registration or registrations. The fees for the original registrationwhich have been duly paid prior to the date on which thedeclaration of division is received shall not be refunded.
7. The divisional registration shall preserve the filing date and
any priority date and seniority date of the original registration.
TITLE VI
SURRENDER, REVOCATION AND INVALIDITY
SECTION 1
Surrender
Article 50
Surrender
1. A Community trade mark may be surrendered in respect ofsome or all of the goods or services for which it is registered.
2. The surrender shall be declared to the Office in writing by
the proprietor of the trade mark. It shall not have effect until ithas been entered in the Register.
3. Surrender shall be entered only with the agreement of the
proprietor of a right entered in the Register. If a licence has been
registered, surrender shall be entered in the Register only if the
proprietor of the trade mark proves that he has informed thelicensee of his intention to surrender; this entry shall be made onexpiry of the period prescribed by the Implementing Regulation.
SECTION 2
Grounds for revocation
Article 51
Grounds for revocation
1. The rights of the proprietor of the Community trade markshall be declared to be revoked on application to the Office or onthe basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark
has not been put to genuine use in the Community in
connection with the goods or services in respect of which itis registered, and there are no proper reasons for non-use;however, no person may claim that the proprietor's rightsin a Community trade mark should be revoked where,during the interval between expiry of the five-year periodand filing of the application or counterclaim, genuine use ofthe trade mark has been started or resumed; thecommencement or resumption of use within a period ofthree months preceding the filing of the application orcounterclaim which began at the earliest on expiry of thecontinuous period of five years of non-use shall, however,be disregarded where preparations for the commencementor resumption occur only after the proprietor becomesaware that the application or counterclaim may be filed;
(b) if, in consequence of acts or inactivity of the proprietor, the
trade mark has become the common name in the trade fora product or service in respect of which it is registered;
(c) if, in consequence of the use made of it by the proprietor of
the trade mark or with his consent in respect of the goodsor services for which it is registered, the trade mark is liableto mislead the public, particularly as to the nature, qualityor geographical origin of those goods or services.
2. Where the grounds for revocation of rights exist in respectof only some of the goods or services for which the Communitytrade mark is registered, the rights of the proprietor shall bedeclared to be revoked in respect of those goods or services only.
SECTION 3
Grounds for invalidity
Article 52
Absolute grounds for invalidity
1. A Community trade mark shall be declared invalid onapplication to the Office or on the basis of a counterclaim ininfringement proceedings:
(a) where the Community trade mark has been registered
contrary to the provisions of Article 7;
(b) where the applicant was acting in bad faith when he filed
the application for the trade mark.
2. Where the Community trade mark has been registered in
breach of the provisions of Article 7(1)(b), (c) or (d), it maynevertheless not be declared invalid if, in consequence of the usewhich has been made of it, it has after registration acquired adistinctive character in relation to the goods or services for whichit is registered.
3. Where the ground for invalidity exists in respect of only
some of the goods or services for which the Community trademark is registered, the trade mark shall be declared invalid asregards those goods or services only.L 78/14 EN Official Journal of the European Union 24.3.2009
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        - 16 -Article 53
Relative grounds for invalidity
1. A Community trade mark shall be declared invalid on
application to the Office or on the basis of a counterclaim in
infringement proceedings:
(a) where there is an earlier trade mark as referred to in
Article 8(2) and the conditions set out in paragraph 1 or
paragraph 5 of that Article are fulfilled;
(b) where there is a trade mark as referred to in Article 8(3) and
the conditions set out in that paragraph are fulfilled;
(c) where there is an earlier right as referred to in Article 8(4)
and the conditions set out in that paragraph are fulfilled.
2. A Community trade mark shall also be declared invalid onapplication to the Office or on the basis of a counterclaim ininfringement proceedings where the use of such trade mark maybe prohibited pursuant to another earlier right under theCommunity legislation or national law governing its protection,and in particular:
(a) a right to a name;(b) a right of personal portrayal;(c) a copyright;(d) an industrial property right.3. A Community trade mark may not be declared invalid where
the proprietor of a right referred to in paragraphs 1 or 2 consentsexpressly to the registration of the Community trade mark beforesubmission of the application for a declaration of invalidity orthe counterclaim.
4. Where the proprietor of one of the rights referred to in
paragraphs 1 or 2 has previously applied for a declaration that aCommunity trade mark is invalid or made a counterclaim ininfringement proceedings, he may not submit a new applicationfor a declaration of invalidity or lodge a counterclaim on thebasis of another of the said rights which he could have invokedin support of his first application or counterclaim.
5. Article 52(3) shall apply.
Article 54
Limitation in consequence of acquiescence
1. Where the proprietor of a Community trade mark has
acquiesced, for a period of five successive years, in the use of alater Community trade mark in the Community while beingaware of such use, he shall no longer be entitled on the basis ofthe earlier trade mark either to apply for a declaration that thelater trade mark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used, unless registration of the later Communitytrade mark was applied for in bad faith.
2. Where the proprietor of an earlier national trade mark as
referred to in Article 8(2) or of another earlier sign referred to inArticle 8(4) has acquiesced, for a period of five successive years,in the use of a later Community trade mark in the Member Statein which the earlier trade mark or the other earlier sign isprotected while being aware of such use, he shall no longer beentitled on the basis of the earlier trade mark or of the otherearlier sign either to apply for a declaration that the later trademark is invalid or to oppose the use of the later trade mark inrespect of the goods or services for which the later trade markhas been used, unless registration of the later Community trademark was applied for in bad faith.
3. In the cases referred to in paragraphs 1 and 2, the proprietor
of a later Community trade mark shall not be entitled to opposethe use of the earlier right, even though that right may no longerbe invoked against the later Community trade mark.
SECTION 4
Consequences of revocation and invalidity
Article 55
Consequences of revocation and invalidity
1. The Community trade mark shall be deemed not to havehad, as from the date of the application for revocation or of thecounterclaim, the effects specified in this Regulation, to theextent that the rights of the proprietor have been revoked. An
earlier date, on which one of the grounds for revocation
occurred, may be fixed in the decision at the request of one of theparties.
2. The Community trade mark shall be deemed not to have
had, as from the outset, the effects specified in this Regulation, tothe extent that the trade mark has been declared invalid.
3. Subject to the national provisions relating either to claims
for compensation for damage caused by negligence or lack ofgood faith on the part of the proprietor of the trade mark, or tounjust enrichment, the retroactive effect of revocation orinvalidity of the trade mark shall not affect:
(a) any decision on infringement which has acquired the
authority of a final decision and been enforced prior to the
revocation or invalidity decision;
(b) any contract concluded prior to the revocation or invalidity
decision, in so far as it has been performed before thatdecision; however, repayment, to an extent justified by thecircumstances, of sums paid under the relevant contract,may be claimed on grounds of equity.24.3.2009 EN Official Journal of the European Union L 78/15
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        - 17 -SECTION 5
Proceedings in the Office in relation to revocation or invalidity
Article 56
Application for revocation or for a declaration of invalidity
1. An application for revocation of the rights of the proprietor
of a Community trade mark or for a declaration that the trademark is invalid may be submitted to the Office:
(a) where Articles 51 and 52 apply, by any natural or legal
person and any group or body set up for the purpose of
representing the interests of manufacturers, producers,suppliers of services, traders or consumers, which under theterms of the law governing it has the capacity in its ownname to sue and be sued;
(b) where Article 53(1) applies, by the persons referred to in
Article 41(1);
(c) where Article 53(2) applies, by the owners of the earlier
rights referred to in that provision or by the persons whoare entitled under the law of the Member State concernedto exercise the rights in question.
2. The application shall be filed in a written reasonedstatement. It shall not be deemed to have been filed until thefee has been paid.
3. An application for revocation or for a declaration of
invalidity shall be inadmissible if an application relating to thesame subject matter and cause of action, and involving the sameparties, has been adjudicated on by a court in a Member Stateand has acquired the authority of a final decision.
Article 57
Examination of the application
1. On the examination of the application for revocation ofrights or for a declaration of invalidity, the Office shall invite theparties, as often as necessary, to file observations, within a period
to be fixed by the Office, on communications from the other
parties or issued by itself.
2. If the proprietor of the Community trade mark so requests,
the proprietor of an earlier Community trade mark, being a partyto the invalidity proceedings, shall furnish proof that, during theperiod of five years preceding the date of the application for adeclaration of invalidity, the earlier Community trade mark hasbeen put to genuine use in the Community in connection withthe goods or services in respect of which it is registered andwhich he cites as justification for his application, or that there areproper reasons for non-use, provided the earlier Communitytrade mark has at that date been registered for not less than fiveyears. If, at the date on which the Community trade markapplication was published, the earlier Community trade markhad been registered for not less than five years, the proprietor ofthe earlier Community trade mark shall furnish proof that, inaddition, the conditions contained in Article 42(2) were satisfiedat that date. In the absence of proof to this effect the applicationfor a declaration of invalidity shall be rejected. If the earlierCommunity trade mark has been used in relation to part only ofthe goods or services for which it is registered, it shall, for thepurpose of the examination of the application for a declarationof invalidity, be deemed to be registered in respect only of thatpart of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks
referred to in Article 8(2)(a), by substituting use in the MemberState in which the earlier national trade mark is protected for usein the Community.
4. The Office may, if it thinks fit, invite the parties to make a
friendly settlement.
5. If the examination of the application for revocation of rights
or for a declaration of invalidity reveals that the trade markshould not have been registered in respect of some or all of thegoods or services for which it is registered, the rights of theproprietor of the Community trade mark shall be revoked or itshall be declared invalid in respect of those goods or services.
Otherwise the application for revocation of rights or for a
declaration of invalidity shall be rejected.
6. A record of the Office's decision on the application for
revocation of rights or for a declaration of invalidity shall beentered in the Register once it has become final.
TITLE VII
APPEALS
Article 58
Decisions subject to appeal
1. An appeal shall lie from decisions of the examiners,Opposition Divisions, Administration of Trade Marks and LegalDivisions and Cancellation Divisions. It shall have suspensiveeffect.
2. A decision which does not terminate proceedings as regards
one of the parties can only be appealed together with the finaldecision, unless the decision allows separate appeal.
Article 59
Persons entitled to appeal and to be parties to appeal
proceedings
Any party to proceedings adversely affected by a decision mayappeal. Any other parties to the proceedings shall be parties tothe appeal proceedings as of right.
Article 60
Time limit and form of appeal
Notice of appeal must be filed in writing at the Office within twomonths after the date of notification of the decision appealedL 78/16 EN Official Journal of the European Union 24.3.2009
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        - 18 -from. The notice shall be deemed to have been filed only when
the fee for appeal has been paid. Within four months after thedate of notification of the decision, a written statement settingout the grounds of appeal must be filed.
Article 61
Revision of decisions in ex parte cases
1. If the party which has lodged the appeal is the sole party tothe procedure, and if the department whose decision is contestedconsiders the appeal to be admissible and well founded, thedepartment shall rectify its decision.
2. If the decision is not rectified within one month after receipt
of the statement of grounds, the appeal shall be remitted to theBoard of Appeal without delay, and without comment as to itsmerit.
Article 62
Revision of decisions in inter partes cases
1. Where the party which has lodged the appeal is opposed byanother party and if the department whose decision is contestedconsiders the appeal to be admissible and well founded, it shallrectify its decision.
2. The decision may be rectified only if the department whose
decision is contested notifies the other party of its intention torectify it, and that party accepts it within two months of the dateon which it received the notification.
3. If, within two months of receiving the notification referred
to in paragraph 2, the other party does not accept that thecontested decision is to be rectified and makes a declaration tothat effect or does not make any declaration within the periodlaid down, the appeal shall be remitted to the Board of Appeal
without delay, and without comment as to its merit.
4. However, if the department whose decision is contested does
not consider the appeal to be admissible and well founded withinone month after receipt of the statement of grounds, it shall,instead of taking the measures provided for in paragraphs 2 and3, remit the appeal to the Board of Appeal without delay, andwithout comment as to its merit.
Article 63
Examination of appeals
1. If the appeal is admissible, the Board of Appeal shall
examine whether the appeal is allowable.
2. In the examination of the appeal, the Board of Appeal shall
invite the parties, as often as necessary, to file observations,within a period to be fixed by the Board of Appeal, oncommunications from the other parties or issued by itself.Article 64
Decisions in respect of appeals
1. Following the examination as to the allowability of theappeal, the Board of Appeal shall decide on the appeal. TheBoard of Appeal may either exercise any power within thecompetence of the department which was responsible for thedecision appealed or remit the case to that department for
further prosecution.
2. If the Board of Appeal remits the case for further
prosecution to the department whose decision was appealed,that department shall be bound by the ratio decidendi of the Board
of Appeal, in so far as the facts are the same.
3. The decisions of the Boards of Appeal shall take effect only
as from the date of expiration of the period referred to inArticle 65(5) or, if an action has been brought before the Courtof Justice within that period, as from the date of dismissal of suchaction.
Article 65
Actions before the Court of Justice
1. Actions may be brought before the Court of Justice againstdecisions of the Boards of Appeal on appeals.
2. The action may be brought on grounds of lack of
competence, infringement of an essential procedural require-ment, infringement of the Treaty, of this Regulation or of anyrule of law relating to their application or misuse of power.
3. The Court of Justice has jurisdiction to annul or to alter the
contested decision.
4. The action shall be open to any party to proceedings before
the Board of Appeal adversely affected by its decision.
5. The action shall be brought before the Court of Justice
within two months of the date of notification of the decision ofthe Board of Appeal.
6. The Office shall be required to take the necessary measures
to comply with the judgment of the Court of Justice.
TITLE VIII
COMMUNITY COLLECTIVE MARKS
Article 66
Community collective marks
1. A Community collective mark shall be a Community trademark which is described as such when the mark is applied forand is capable of distinguishing the goods or services of themembers of the association which is the proprietor of the markfrom those of other undertakings. Associations of manufacturers,producers, suppliers of services, or traders which, under theterms of the law governing them, have the capacity in their ownname to have rights and obligations of all kinds, to make24.3.2009 EN Official Journal of the European Union L 78/17
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        - 19 -contracts or accomplish other legal acts and to sue and be sued,
as well as legal persons governed by public law, may apply forCommunity collective marks.
2. In derogation from Article 7(1)(c), signs or indications
which may serve, in trade, to designate the geographical origin ofthe goods or services may constitute Community collectivemarks within the meaning of paragraph 1. A collective markshall not entitle the proprietor to prohibit a third party fromusing in the course of trade such signs or indications, providedhe uses them in accordance with honest practices in industrial orcommercial matters; in particular, such a mark may not be
invoked against a third party who is entitled to use a
geographical name.
3. The provisions of this Regulation shall apply to Community
collective marks, unless Articles 67 to 74 provide otherwise.
Article 67
Regulations governing use of the mark
1. An applicant for a Community collective mark must submitregulations governing its use within the period prescribed.
2. The regulations governing use shall specify the persons
authorised to use the mark, the conditions of membership of theassociation and, where they exist, the conditions of use of the
mark, including sanctions. The regulations governing use of a
mark referred to in Article 66(2) must authorise any personwhose goods or services originate in the geographical areaconcerned to become a member of the association which is theproprietor of the mark.
Article 68
Refusal of the application
1. In addition to the grounds for refusal of a Community trademark application provided for in Articles 36 and 37, anapplication for a Community collective mark shall be refusedwhere the provisions of Articles 66 or 67 are not satisfied, orwhere the regulations governing use are contrary to public policyor to accepted principles of morality.
2. An application for a Community collective mark shall also
be refused if the public is liable to be misled as regards thecharacter or the significance of the mark, in particular if it islikely to be taken to be something other than a collective mark.
3. An application shall not be refused if the applicant, as a
result of amendment of the regulations governing use, meets therequirements of paragraphs 1 and 2.
Article 69
Observations by third parties
Apart from the cases mentioned in Article 40, any person, groupor body referred to in that Article may submit to the Officewritten observations based on the particular grounds on whichthe application for a Community collective mark should berefused under the terms of Article 68.Article 70
Use of marks
Use of a Community collective mark by any person who hasauthority to use it shall satisfy the requirements of thisRegulation, provided that the other conditions which thisRegulation imposes with regard to the use of Community trademarks are fulfilled.
Article 71
Amendment of the regulations governing use of the mark
1. The proprietor of a Community collective mark mustsubmit to the Office any amended regulations governing use.
2. The amendment shall not be mentioned in the Register if the
amended regulations do not satisfy the requirements of Article 67or involve one of the grounds for refusal referred to inArticle 68.
3. Article 69 shall apply to amended regulations governing use.4. For the purposes of applying this Regulation, amendments
to the regulations governing use shall take effect only from thedate of entry of the mention of the amendment in the Register.
Article 72
Persons who are entitled to bring an action for
infringement
1. The provisions of Article 22(3) and (4) concerning the rightsof licensees shall apply to every person who has authority to usea Community collective mark.
2. The proprietor of a Community collective mark shall be
entitled to claim compensation on behalf of persons who haveauthority to use the mark where they have sustained damage inconsequence of unauthorised use of the mark.
Article 73
Grounds for revocation
Apart from the grounds for revocation provided for in Article 51,the rights of the proprietor of a Community collective mark shallbe revoked on application to the Office or on the basis of acounterclaim in infringement proceedings, if:
(a) the proprietor does not take reasonable steps to prevent the
mark being used in a manner incompatible with the
conditions of use, where these exist, laid down in theregulations governing use, amendments to which have,where appropriate, been mentioned in the Register;
(b) the manner in which the mark has been used by the
proprietor has caused it to become liable to mislead thepublic in the manner referred to in Article 68(2);
(c) an amendment to the regulations governing use of the
mark has been mentioned in the Register in breach of theprovisions of Article 71(2), unless the proprietor of themark, by further amending the regulations governing use,complies with the requirements of those provisions.L 78/18 EN Official Journal of the European Union 24.3.2009
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        - 20 -Article 74
Grounds for invalidity
Apart from the grounds for invalidity provided for in Articles 52
and 53, a Community collective mark which is registered inbreach of the provisions of Article 68 shall be declared invalid onapplication to the Office or on the basis of a counterclaim ininfringement proceedings, unless the proprietor of the mark, byamending the regulations governing use, complies with therequirements of those provisions.
TITLE IX
PROCEDURE
SECTION 1
General provisions
Article 75
Statement of reasons on which decisions are based
Decisions of the Office shall state the reasons on which they arebased. They shall be based only on reasons or evidence on whichthe parties concerned have had on opportunity to present theircomments.
Article 76
Examination of the facts by the Office of its own motion
1. In proceedings before it the Office shall examine the facts ofits own motion; however, in proceedings relating to relativegrounds for refusal of registration, the Office shall be restricted inthis examination to the facts, evidence and arguments providedby the parties and the relief sought.
2. The Office may disregard facts or evidence which are not
submitted in due time by the parties concerned.
Article 77
Oral proceedings
1. If the Office considers that oral proceedings would beexpedient they shall be held either at the instance of the Office orat the request of any party to the proceedings.
2. Oral proceedings before the examiners, the Opposition
Division and the Administration of Trade Marks and LegalDivision shall not be public.
3. Oral proceedings, including delivery of the decision, shall be
public before the Cancellation Division and the Boards ofAppeal, in so far as the department before which the proceedingsare taking place does not decide otherwise in cases whereadmission of the public could have serious and unjustifieddisadvantages, in particular for a party to the proceedings.Article 78
Taking of evidence
1. In any proceedings before the Office, the means of giving orobtaining evidence shall include the following:
(a) hearing the parties;(b) requests for information;(c) the production of documents and items of evidence;(d) hearing witnesses;(e) opinions by experts;(f) statements in writing sworn or affirmed or having a similar
effect under the law of the State in which the statement is
drawn up.
2. The relevant department may commission one of itsmembers to examine the evidence adduced.
3. If the Office considers it necessary for a party, witness or
expert to give evidence orally, it shall issue a summons to theperson concerned to appear before it.
4. The parties shall be informed of the hearing of a witness or
expert before the Office. They shall have the right to be presentand to put questions to the witness or expert.
Article 79
Notification
The Office shall, as a matter of course, notify those concerned ofdecisions and summonses and of any notice or other commu-nication from which a time limit is reckoned, or of which thoseconcerned must be notified under other provisions of thisRegulation or of the Implementing Regulation, or of whichnotification has been ordered by the President of the Office.
Article 80
Revocation of decisions
1. Where the Office has made an entry in the Register or takena decision which contains an obvious procedural errorattributable to the Office, it shall ensure that the entry iscancelled or the decision is revoked. Where there is only oneparty to the proceedings and the entry or the act affects its rights,cancellation or revocation shall be determined even if the errorwas not evident to the party.
2. Cancellation or revocation as referred to in paragraph 1 shall
be determined, ex officio or at the request of one of the parties to
the proceedings, by the department which made the entry ortook the decision. Cancellation or revocation shall be determined24.3.2009 EN Official Journal of the European Union L 78/19
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        - 21 -within six months from the date on which the entry was made in
the Register or the decision was taken, after consultation with theparties to the proceedings and any proprietor of rights to theCommunity trade mark in question that are entered in theRegister.
3. This Article shall be without prejudice to the right of the
parties to submit an appeal under Articles 58 and 65, or to thepossibility, under the procedures and conditions laid down by
the Implementing Regulation, of correcting any linguistic errors
or errors of transcription and obvious errors in the Office'sdecisions or errors attributable to the Office in registering thetrade mark or in publishing its registration.
Article 81
Restitutio in integrum
1. The applicant for or proprietor of a Community trade markor any other party to proceedings before the Office who, in spiteof all due care required by the circumstances having been taken,was unable to comply with a time limit vis-à-vis the Office shall,upon application, have his rights re-established if the obstacle to
compliance has the direct consequence, by virtue of the
provisions of this Regulation, of causing the loss of any rightor means of redress.
2. The application must be filed in writing within two months
from the removal of the obstacle to compliance with the timelimit. The omitted act must be completed within this period. Theapplication shall only be admissible within the year immediatelyfollowing the expiry of the unobserved time limit. In the case ofnon-submission of the request for renewal of registration or ofnon-payment of a renewal fee, the further period of six monthsprovided in Article 47(3), third sentence, shall be deducted fromthe period of one year.
3. The application must state the grounds on which it is based
and must set out the facts on which it relies. It shall not bedeemed to be filed until the fee for re-establishment of rights hasbeen paid.
4. The department competent to decide on the omitted act
shall decide upon the application.
5. This Article shall not be applicable to the time limits referred
to in paragraph 2 of this Article, Article 41(1) and (3) andArticle 82.
6. Where the applicant for or proprietor of a Community trade
mark has his rights re-established, he may not invoke his rightsvis-à-vis a third party who, in good faith, has put goods on themarket or supplied services under a sign which is identical with,or similar to, the Community trade mark in the course of theperiod between the loss of rights in the application or in theCommunity trade mark and publication of the mention of re-establishment of those rights.
7. A third party who may avail himself of the provisions of
paragraph 6 may bring third party proceedings against thedecision re-establishing the rights of the applicant for orproprietor of a Community trade mark within a period of twomonths as from the date of publication of the mention of re-establishment of those rights.
8. Nothing in this Article shall limit the right of a Member
State to grant restitutio in integrum in respect of time limits
provided for in this Regulation and to be observed vis-à-vis theauthorities of such State.
Article 82
Continuation of proceedings
1. An applicant for or proprietor of a Community trade markor any other party to proceedings before the Office who hasomitted to observe a time limit vis-à-vis the Office may, uponrequest, obtain the continuation of proceedings, provided that atthe time the request is made the omitted act has been carried out.The request for continuation of proceedings shall be admissibleonly if it is presented within two months following the expiry of
the unobserved time limit. The request shall not be deemed to
have been filed until the fee for continuation of the proceedingshas been paid.
2. This Article shall not be applicable to the time limits laid
down in Article 25(3), Article 27, Article 29(1), Article 33(1),Article 36(2), Article 41, Article 42, Article 47(3), Article 60,Article 62, Article 65(5), Article 81, Article 112, or to the timelimits laid down in this Article or the time limits laid down bythe Implementing Regulation for claiming, after the applicationhas been filed, priority within the meaning of Article 30,
exhibition priority within the meaning of Article 33 or seniority
within the meaning of Article 34.
3. The department competent to decide on the omitted act
shall decide upon the application.
4. If the Office accepts the application, the consequences of
having failed to observe the time limit shall be deemed not tohave occurred.
5. If the Office rejects the application, the fee shall be refunded.
Article 83
Reference to general principles
In the absence of procedural provisions in this Regulation, the
Implementing Regulation, the fees regulations or the rules ofprocedure of the Boards of Appeal, the Office shall take into
account the principles of procedural law generally recognised in
the Member States.
Article 84
Termination of financial obligations
1. Rights of the Office to the payment of a fee shall beextinguished after four years from the end of the calendar year inwhich the fee fell due.
2. Rights against the Office for the refunding of fees or sums of
money paid in excess of a fee shall be extinguished after fouryears from the end of the calendar year in which the right arose.L 78/20 EN Official Journal of the European Union 24.3.2009
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        - 22 -3. The period laid down in paragraphs 1 and 2 shall be
interrupted, in the case covered by paragraph 1, by a request forpayment of the fee, and in the case covered by paragraph 2, by areasoned claim in writing. On interruption it shall begin againimmediately and shall end at the latest six years after the end ofthe year in which it originally began, unless, in the meantime,judicial proceedings to enforce the right have begun; in this casethe period shall end at the earliest one year after the judgmenthas acquired the authority of a final decision.
SECTION 2
Costs
Article 85
Costs
1. The losing party in opposition proceedings, proceedings forrevocation, proceedings for a declaration of invalidity or appealproceedings shall bear the fees incurred by the other party as
well as all costs, without prejudice to Article 119(6), incurred by
him essential to the proceedings, including travel and subsistenceand the remuneration of an agent, adviser or advocate, within thelimits of the scales set for each category of costs under theconditions laid down in the Implementing Regulation.
2. However, where each party succeeds on some and fails on
other heads, or if reasons of equity so dictate, the OppositionDivision, Cancellation Division or Board of Appeal shall decide adifferent apportionment of costs.
3. The party who terminates the proceedings by withdrawing
the Community trade mark application, the opposition, theapplication for revocation of rights, the application for adeclaration of invalidity or the appeal, or by not renewingregistration of the Community trade mark or by surrendering theCommunity trade mark, shall bear the fees and the costs incurredby the other party as stipulated in paragraphs 1 and 2.
4. Where a case does not proceed to judgment the costs shall
be at the discretion of the Opposition Division, CancellationDivision or Board of Appeal.
5. Where the parties conclude before the Opposition Division,
Cancellation Division or Board of Appeal a settlement of costsdiffering from that provided for in the preceding paragraphs, the
department concerned shall take note of that agreement.
6. The Opposition Division or Cancellation Division or Board
of Appeal shall fix the amount of the costs to be paid pursuant tothe preceding paragraphs when the costs to be paid are limited tothe fees paid to the Office and the representation costs. In allother cases, the registry of the Board of Appeal or a member ofthe staff of the Opposition Division or Cancellation Divisionshall fix the amount of the costs to be reimbursed on request.The request is admissible only within two months of the date onwhich the decision for which an application was made for thecosts to be fixed became final. The amount so determined maybe reviewed by a decision of the Opposition Division orCancellation Division or Board of Appeal on a request filedwithin the prescribed period.Article 86
Enforcement of decisions fixing the amount of costs
1. Any final decision of the Office fixing the amount of costsshall be enforceable.
2. Enforcement shall be governed by the rules of civil
procedure in force in the State in the territory of which it iscarried out. The order for its enforcement shall be appended tothe decision, without other formality than verification of theauthenticity of the decision, by the national authority which theGovernment of each Member State shall designate for thispurpose and shall make known to the Office and to the Court ofJustice.
3. When these formalities have been completed on application
by the party concerned, the latter may proceed to enforcement inaccordance with the national law, by bringing the matter directlybefore the competent authority.
4. Enforcement may be suspended only by a decision of the
Court of Justice. However, the courts of the country concernedshall have jurisdiction over complaints that enforcement is beingcarried out in an irregular manner.
SECTION 3
Information which may be made available to the public and of
the authorities of the Member States
Article 87
Register of Community trade marks
The Office shall keep a register to be known as the Register ofCommunity trade marks, which shall contain those particularsthe registration or inclusion of which is provided for by thisRegulation or by the Implementing Regulation. The Register shallbe open to public inspection.
Article 88
Inspection of files
1. The files relating to Community trade mark applicationswhich have not yet been published shall not be made availablefor inspection without the consent of the applicant.
2. Any person who can prove that the applicant for a
Community trade mark has stated that after the trade markhas been registered he will invoke the rights under it against himmay obtain inspection of the files prior to the publication of thatapplication and without the consent of the applicant.
3. Subsequent to the publication of the Community trade mark
application, the files relating to such application and the resultingtrade mark may be inspected on request.
4. However, where the files are inspected pursuant to
paragraphs 2 or 3, certain documents in the file may bewithheld from inspection in accordance with the provisions ofthe Implementing Regulation.24.3.2009 EN Official Journal of the European Union L 78/21
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        - 23 -Article 89
Periodical publications
The Office shall periodically publish:
(a) a Community Trade Marks Bulletin containing entries made
in the Register of Community trade marks as well as other
particulars the publication of which is prescribed by thisRegulation or by the Implementing Regulation;
(b) an Official Journal containing notices and information of a
general character issued by the President of the Office, aswell as any other information relevant to this Regulation orits implementation.
Article 90
Administrative cooperation
Unless otherwise provided in this Regulation or in national laws,the Office and the courts or authorities of the Member Statesshall on request give assistance to each other by communicatinginformation or opening files for inspection. Where the Officelays files open to inspection by courts, Public Prosecutors' Officesor central industrial property offices, the inspection shall not besubject to the restrictions laid down in Article 88.
Article 91
Exchange of publications
1. The Office and the central industrial property offices of theMember States shall despatch to each other on request and fortheir own use one or more copies of their respective publicationsfree of charge.
2. The Office may conclude agreements relating to the
exchange or supply of publications.
SECTION 4
Representation
Article 92
General principles of representation
1. Subject to the provisions of paragraph 2, no person shall becompelled to be represented before the Office.
2. Without prejudice to paragraph 3, second sentence, natural
or legal persons not having either their domicile or theirprincipal place of business or a real and effective industrial orcommercial establishment in the Community must be repre-sented before the Office in accordance with Article 93(1) in allproceedings established by this Regulation, other than in filingan application for a Community trade mark; the ImplementingRegulation may permit other exceptions.
3. Natural or legal persons having their domicile or principal
place of business or a real and effective industrial or commercialestablishment in the Community may be represented before theOffice by an employee. An employee of a legal person to whichthis paragraph applies may also represent other legal personswhich have economic connections with the first legal person,even if those other legal persons have neither their domicile northeir principal place of business nor a real and effective industrialor commercial establishment within the Community.
4. The Implementing Regulation shall specify whether and
under what conditions an employee must file with the Office asigned authorisation for insertion on the file.
Article 93
Professional representatives
1. Representation of natural or legal persons before the Officemay only be undertaken by:
(a) any legal practitioner qualified in one of the Member States
and having his place of business within the Community, to
the extent that he is entitled, within the said State, to act asa representative in trade mark matters;
(b) professional representatives whose names appear on the list
maintained for this purpose by the Office. The Implement-ing Regulation shall specify whether and under whatconditions the representatives before the Office must filewith the Office a signed authorisation for insertion on thefile.
Representatives acting before the Office must file with it a signedauthorisation for insertion on the files, the details of which areset out in the Implementing Regulation.
2. Any natural person who fulfils the following conditions may
be entered on the list of professional representatives:
(a) he must be a national of one of the Member States;(b) he must have his place of business or employment in the
Community;
(c) he must be entitled to represent natural or legal persons in
trade mark matters before the central industrial property
office of a Member State. Where, in that State, theentitlement is not conditional upon the requirement ofspecial professional qualifications, persons applying to beentered on the list who act in trade mark matters before thecentral industrial property office of the said State must havehabitually so acted for at least five years. However, personswhose professional qualification to represent natural orlegal persons in trade mark matters before the centralindustrial property office of one of the Member States isofficially recognised in accordance with the regulations laiddown by such State shall not be subject to the condition ofhaving exercised the profession.
3. Entry shall be effected upon request, accompanied by acertificate furnished by the central industrial property office ofthe Member State concerned, which must indicate that theconditions laid down in paragraph 2 are fulfilled.L 78/22 EN Official Journal of the European Union 24.3.2009
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        - 24 -4. The President of the Office may grant exemption from:
(a) the requirement of paragraph 2(c), second sentence, if the
applicant furnishes proof that he has acquired the requisite
qualification in another way;
(b) the requirement of paragraph 2(a) in special circumstances.
5. The conditions under which a person may be removed from
the list of professional representatives shall be laid down in theImplementing Regulation.
TITLE X
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS
RELATING TO COMMUNITY TRADE MARKS
SECTION 1
Application of Regulation (EC) No 44/2001
Article 94
Application of Regulation (EC) No 44/2001
1. Unless otherwise specified in this Regulation, Regulation(EC) No 44/2001 shall apply to proceedings relating toCommunity trade marks and applications for Community trademarks, as well as to proceedings relating to simultaneous andsuccessive actions on the basis of Community trade marks andnational trade marks.
2. In the case of proceedings in respect of the actions and
claims referred to in Article 96:
(a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and
Article 31 of Regulation (EC) No 44/2001 shall not apply;
(b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall
apply subject to the limitations in Article 97(4) of this
Regulation;
(c) the provisions of Chapter II of Regulation (EC) No 44/2001
which are applicable to persons domiciled in a MemberState shall also be applicable to persons who do not have adomicile in any Member State but have an establishmenttherein.
SECTION 2
Disputes concerning the infringement and validity of
Community trade marks
Article 95
Community trade mark courts
1. The Member States shall designate in their territories aslimited a number as possible of national courts and tribunals offirst and second instance, hereinafter referred to as ‘Community
trade mark courts’, which shall perform the functions assigned tothem by this Regulation.
2. Each Member State shall communicate to the Commission
within three years of the entry into force of Regulation (EC)No 40/94 a list of Community trade mark courts indicating theirnames and their territorial jurisdiction.
3. Any change made after communication of the list referred to
in paragraph 2 in the number, names or territorial jurisdiction ofthe courts shall be notified without delay by the Member Stateconcerned to the Commission.
4. The information referred to in paragraphs 2 and 3 shall be
notified by the Commission to the Member States and publishedin the Official Journal of the European Union.
5. As long as a Member State has not communicated the list asstipulated in paragraph 2, jurisdiction for any proceedingsresulting from an action or application covered by Article 96,and for which the courts of that State have jurisdiction underArticle 97, shall lie with that court of the State in question whichwould have jurisdiction ratione loci andratione materiae in the case
of proceedings relating to a national trade mark registered in thatState.
Article 96
Jurisdiction over infringement and validity
The Community trade mark courts shall have exclusive
jurisdiction:
(a) for all infringement actions and —if they are permitted
under national law —actions in respect of threatened
infringement relating to Community trade marks;
(b) for actions for declaration of non-infringement, if they are
permitted under national law;
(c) for all actions brought as a result of acts referred to in
Article 9(3), second sentence;
(d) for counterclaims for revocation or for a declaration of
invalidity of the Community trade mark pursuant to
Article 100.
Article 97
International jurisdiction
1. Subject to the provisions of this Regulation as well as to anyprovisions of Regulation (EC) No 44/2001 applicable by virtueof Article 94, proceedings in respect of the actions and claimsreferred to in Article 96 shall be brought in the courts of theMember State in which the defendant is domiciled or, if he is notdomiciled in any of the Member States, in which he has anestablishment.24.3.2009 EN Official Journal of the European Union L 78/23
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        - 25 -2. If the defendant is neither domiciled nor has an establish-
ment in any of the Member States, such proceedings shall bebrought in the courts of the Member State in which the plaintiffis domiciled or, if he is not domiciled in any of the MemberStates, in which he has an establishment.
3. If neither the defendant nor the plaintiff is so domiciled or
has such an establishment, such proceedings shall be brought inthe courts of the Member State where the Office has its seat.
4. Notwithstanding the provisions of paragraphs 1, 2 and 3:
(a) Article 23 of Regulation (EC) No 44/2001 shall apply if the
parties agree that a different Community trade mark court
shall have jurisdiction;
(b) Article 24 of Regulation (EC) No 44/2001 shall apply if the
defendant enters an appearance before a different Commu-nity trade mark court.
5. Proceedings in respect of the actions and claims referred toin Article 96, with the exception of actions for a declaration ofnon-infringement of a Community trade mark, may also bebrought in the courts of the Member State in which the act of
infringement has been committed or threatened, or in which an
act within the meaning of Article 9(3), second sentence, has beencommitted.
Article 98
Extent of jurisdiction
1. A Community trade mark court whose jurisdiction is basedon Article 97(1) to (4) shall have jurisdiction in respect of:
(a) acts of infringement committed or threatened within the
territory of any of the Member States;
(b) acts within the meaning of Article 9(3), second sentence,
committed within the territory of any of the Member States.
2. A Community trade mark court whose jurisdiction is based
on Article 97(5) shall have jurisdiction only in respect of actscommitted or threatened within the territory of the MemberState in which that court is situated.
Article 99
Presumption of validity —Defence as to the merits
1. The Community trade mark courts shall treat the Commu-nity trade mark as valid unless its validity is put in issue by thedefendant with a counterclaim for revocation or for a declarationof invalidity.
2. The validity of a Community trade mark may not be put in
issue in an action for a declaration of non-infringement.
3. In the actions referred to in Article 96(a) and (c) a plea
relating to revocation or invalidity of the Community trade marksubmitted otherwise than by way of a counterclaim shall beadmissible in so far as the defendant claims that the rights of theproprietor of the Community trade mark could be revoked forlack of use or that the Community trade mark could be declaredinvalid on account of an earlier right of the defendant.
Article 100
Counterclaims
1. A counterclaim for revocation or for a declaration ofinvalidity may only be based on the grounds for revocation orinvalidity mentioned in this Regulation.
2. A Community trade mark court shall reject a counterclaim
for revocation or for a declaration of invalidity if a decision takenby the Office relating to the same subject matter and cause ofaction and involving the same parties has already become final.
3. If the counterclaim is brought in a legal action to which the
proprietor of the trade mark is not already a party, he shall beinformed thereof and may be joined as a party to the action inaccordance with the conditions set out in national law.
4. The Community trade mark court with which a counter-
claim for revocation or for a declaration of invalidity of theCommunity trade mark has been filed shall inform the Office ofthe date on which the counterclaim was filed. The latter shallrecord this fact in the Register of Community trade marks.
5. Article 57(2) to (5) shall apply.6. Where a Community trade mark court has given a judgment
which has become final on a counterclaim for revocation or forinvalidity of a Community trade mark, a copy of the judgmentshall be sent to the Office. Any party may request informationabout such transmission. The Office shall mention the judgmentin the Register of Community trade marks in accordance withthe provisions of the Implementing Regulation.
7. The Community trade mark court hearing a counterclaim
for revocation or for a declaration of invalidity may stay the
proceedings on application by the proprietor of the Community
trade mark and after hearing the other parties and may requestthe defendant to submit an application for revocation or for adeclaration of invalidity to the Office within a time limit which itshall determine. If the application is not made within the timelimit, the proceedings shall continue; the counterclaim shall bedeemed withdrawn. Article 104(3) shall apply.
Article 101
Applicable law
1. The Community trade mark courts shall apply theprovisions of this Regulation.
2. On all matters not covered by this Regulation a Community
trade mark court shall apply its national law, including its privateinternational law.L 78/24 EN Official Journal of the European Union 24.3.2009
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        - 26 -3. Unless otherwise provided in this Regulation, a Community
trade mark court shall apply the rules of procedure governing thesame type of action relating to a national trade mark in theMember State in which the court is located.
Article 102
Sanctions
1. Where a Community trade mark court finds that thedefendant has infringed or threatened to infringe a Communitytrade mark, it shall, unless there are special reasons for not doingso, issue an order prohibiting the defendant from proceedingwith the acts which infringed or would infringe the Communitytrade mark. It shall also take such measures in accordance with
its national law as are aimed at ensuring that this prohibition is
complied with.
2. In all other respects the Community trade mark court shall
apply the law of the Member State in which the acts ofinfringement or threatened infringement were committed,including the private international law.
Article 103
Provisional and protective measures
1. Application may be made to the courts of a Member State,including Community trade mark courts, for such provisional,including protective, measures in respect of a Community trademark or Community trade mark application as may be availableunder the law of that State in respect of a national trade mark,even if, under this Regulation, a Community trade mark court ofanother Member State has jurisdiction as to the substance of the
matter.
2. A Community trade mark court whose jurisdiction is based
on Article 97(1), (2), (3) or (4) shall have jurisdiction to grantprovisional and protective measures which, subject to anynecessary procedure for recognition and enforcement pursuantto Title III of Regulation (EC) No 44/2001, are applicable in theterritory of any Member State. No other court shall have suchjurisdiction.
Article 104
Specific rules on related actions
1. A Community trade mark court hearing an action referredto in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds forcontinuing the hearing, of its own motion after hearing theparties or at the request of one of the parties and after hearing
the other parties, stay the proceedings where the validity of the
Community trade mark is already in issue before anotherCommunity trade mark court on account of a counterclaim orwhere an application for revocation or for a declaration ofinvalidity has already been filed at the Office.
2. The Office, when hearing an application for revocation or
for a declaration of invalidity shall, unless there are specialgrounds for continuing the hearing, of its own motion afterhearing the parties or at the request of one of the parties andafter hearing the other parties, stay the proceedings where thevalidity of the Community trade mark is already in issue onaccount of a counterclaim before a Community trade markcourt. However, if one of the parties to the proceedings beforethe Community trade mark court so requests, the court may,after hearing the other parties to these proceedings, stay theproceedings. The Office shall in this instance continue theproceedings pending before it.
3. Where the Community trade mark court stays the
proceedings it may order provisional and protective measuresfor the duration of the stay.
Article 105
Jurisdiction of Community trade mark courts of second
instance —Further appeal
1. An appeal to the Community trade mark courts of secondinstance shall lie from judgments of the Community trade markcourts of first instance in respect of proceedings arising from theactions and claims referred to in Article 96.
2. The conditions under which an appeal may be lodged with a
Community trade mark court of second instance shall bedetermined by the national law of the Member State in whichthat court is located.
3. The national rules concerning further appeal shall be
applicable in respect of judgments of Community trade markcourts of second instance.
SECTION 3
Other disputes concerning Community trade marks
Article 106
Supplementary provisions on the jurisdiction of national
courts other than Community trade mark courts
1. Within the Member State whose courts have jurisdictionunder Article 94(1) those courts shall have jurisdiction foractions other than those referred to in Article 96, which wouldhave jurisdiction ratione loci and ratione materiae in the case of
actions relating to a national trade mark registered in that State.
2. Actions relating to a Community trade mark, other than
those referred to in Article 96, for which no court hasjurisdiction under Article 94(1) and paragraph 1 of this Articlemay be heard before the courts of the Member State in which theOffice has its seat.
Article 107
Obligation of the national court
A national court which is dealing with an action relating to aCommunity trade mark, other than the action referred to inArticle 96, shall treat the trade mark as valid.24.3.2009 EN Official Journal of the European Union L 78/25
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        - 27 -SECTION 4
Transitional provision
Article 108
Transitional provision relating to the application of the
Convention on Jurisdiction and Enforcement
The provisions of Regulation (EC) No 44/2001 which are
rendered applicable by the preceding Articles shall have effect inrespect of any Member State solely in the text of the Regulationwhich is in force in respect of that State at any given time.
TITLE XI
EFFECTS ON THE LAWS OF THE MEMBER STATES
SECTION 1
Civil actions on the basis of more than one trade mark
Article 109
Simultaneous and successive civil actions on the basis of
Community trade marks and national trade marks
1. Where actions for infringement involving the same cause ofaction and between the same parties are brought in the courts ofdifferent Member States, one seized on the basis of a Communitytrade mark and the other seized on the basis of a national trademark:
(a) the court other than the court first seized shall of its own
motion decline jurisdiction in favour of that court where
the trade marks concerned are identical and valid foridentical goods or services. The court which would berequired to decline jurisdiction may stay its proceedings ifthe jurisdiction of the other court is contested;
(b) the court other than the court first seized may stay its
proceedings where the trade marks concerned are identicaland valid for similar goods or services and where the trademarks concerned are similar and valid for identical orsimilar goods or services.
2. The court hearing an action for infringement on the basis ofa Community trade mark shall reject the action if a finaljudgment on the merits has been given on the same cause ofaction and between the same parties on the basis of an identicalnational trade mark valid for identical goods or services.
3. The court hearing an action for infringement on the basis of
a national trade mark shall reject the action if a final judgment onthe merits has been given on the same cause of action andbetween the same parties on the basis of an identical Communitytrade mark valid for identical goods or services.
4. Paragraphs 1, 2 and 3 shall not apply in respect of
provisional, including protective, measures.SECTION 2
Application of national laws for the purpose of prohibiting the
use of Community trade marks
Article 110
Prohibition of use of Community trade marks
1. This Regulation shall, unless otherwise provided for, notaffect the right existing under the laws of the Member States toinvoke claims for infringement of earlier rights within themeaning of Article 8 or Article 53(2) in relation to the use of alater Community trade mark. Claims for infringement of earlierrights within the meaning of Article 8(2) and (4) may, however,no longer be invoked if the proprietor of the earlier right may nolonger apply for a declaration that the Community trade mark isinvalid in accordance with Article 54(2).
2. This Regulation shall, unless otherwise provided for, not
affect the right to bring proceedings under the civil, adminis-trative or criminal law of a Member Sate or under provisions ofCommunity law for the purpose of prohibiting the use of aCommunity trade mark to the extent that the use of a nationaltrade mark may be prohibited under the law of that MemberState or under Community law.
Article 111
Prior rights applicable to particular localities
1. The proprietor of an earlier right which only applies to aparticular locality may oppose the use of the Community trademark in the territory where his right is protected in so far as thelaw of the Member State concerned so permits.
2. Paragraph 1 shall cease to apply if the proprietor of the
earlier right has acquiesced in the use of the Community trademark in the territory where his right is protected for a period offive successive years, being aware of such use, unless theCommunity trade mark was applied for in bad faith.
3. The proprietor of the Community trade mark shall not be
entitled to oppose use of the right referred to in paragraph 1even though that right may no longer be invoked against theCommunity trade mark.
SECTION 3
Conversion into a national trade mark application
Article 112
Request for the application of national procedure
1. The applicant for or proprietor of a Community trade markmay request the conversion of his Community trade markapplication or Community trade mark into a national trade markapplication:L 78/26 EN Official Journal of the European Union 24.3.2009
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        - 28 -(a) to the extent that the Community trade mark application is
refused, withdrawn, or deemed to be withdrawn;
(b) to the extent that the Community trade mark ceases to have
effect.
2. Conversion shall not take place:
(a) where the rights of the proprietor of the Community trade
mark have been revoked on the grounds of non-use, unless
in the Member State for which conversion is requested theCommunity trade mark has been put to use which wouldbe considered to be genuine use under the laws of thatMember State;
(b) for the purpose of protection in a Member State in which,
in accordance with the decision of the Office or of thenational court, grounds for refusal of registration orgrounds for revocation or invalidity apply to the Commu-nity trade mark application or Community trade mark.
3. The national trade mark application resulting from the
conversion of a Community trade mark application or a
Community trade mark shall enjoy in respect of the MemberState concerned the date of filing or the date of priority of thatapplication or trade mark and, where appropriate, the seniorityof a trade mark of that State claimed under Articles 34 or 35.
4. In cases where a Community trade mark application is
deemed to be withdrawn, the Office shall send to the applicant acommunication fixing a period of three months from the date ofthat communication in which a request for conversion may befiled.
5. Where the Community trade mark application is withdrawn
or the Community trade mark ceases to have effect as a result ofa surrender being recorded or of failure to renew the registration,the request for conversion shall be filed within three monthsafter the date on which the Community trade mark applicationhas been withdrawn or on which the Community trade markceases to have effect.
6. Where the Community trade mark application is refused by
decision of the Office or where the Community trade markceases to have effect as a result of a decision of the Office or of aCommunity trade mark court, the request for conversion shall befiled within three months after the date on which that decisionacquired the authority of a final decision.
7. The effect referred to in Article 32 shall lapse if the request is
not filed in due time.
Article 113
Submission, publication and transmission of the request for
conversion
1. A request for conversion shall be filed with the Office andshall specify the Member States in which application of theprocedure for registration of a national trade mark is desired. Therequest shall not be deemed to be filed until the conversion feehas been paid.2. If the Community trade mark application has beenpublished, receipt of any such request shall be recorded in theRegister of Community trade marks and the request forconversion shall be published.
3. The Office shall check whether the conversion requested
fulfils the conditions set out in this Regulation, in particularArticle 112(1), (2), (4), (5) and (6), and paragraph 1 of thisArticle, together with the formal conditions laid down in theImplementing Regulation. If these conditions are fulfilled, theOffice shall transmit the request for conversion to the industrialproperty offices of the Member States specified therein.
Article 114
Formal requirements for conversion
1. Any central industrial property office to which the requestfor conversion is transmitted may obtain from the Office anyadditional information concerning the request enabling thatoffice to make a decision regarding the national trade markresulting from the conversion.
2. A Community trade mark application or a Community trade
mark transmitted in accordance with Article 113 shall not besubjected to formal requirements of national law which are
different from or additional to those provided for in this
Regulation or in the Implementing Regulation.
3. Any central industrial property office to which the request is
transmitted may require that the applicant shall, within not lessthan two months:
(a) pay the national application fee;
(b) file a translation in one of the official languages of the State
in question of the request and of the documents
accompanying it;
(c) indicate an address for service in the State in question;
(d) supply a representation of the trade mark in the number of
copies specified by the State in question.
TITLE XII
THE OFFICE
SECTION 1
General provisions
Article 115
Legal status
1. The Office shall be a body of the Community. It shall have
legal personality.24.3.2009 EN Official Journal of the European Union L 78/27
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        - 29 -2. In each of the Member States the Office shall enjoy the most
extensive legal capacity accorded to legal persons under theirlaws; it may, in particular, acquire or dispose of movable andimmovable property and may be a party to legal proceedings.
3. The Office shall be represented by its President.
Article 116
Staff
1. The Staff Regulations of officials of the European Commu-
nities, hereinafter referred to as ‘the Staff Regulations’, the
Conditions of Employment of other servants of the EuropeanCommunities, and the rules adopted by agreement between theInstitutions of the European Communities for giving effect tothose Staff Regulations and Conditions of Employment shallapply to the staff of the Office, without prejudice to the
application of Article 136 to the members of the Boards of
Appeal.
2. Without prejudice to Article 125, the powers conferred on
each Institution by the Staff Regulations and by the Conditions ofEmployment of other servants shall be exercised by the Office inrespect of its staff.
Article 117
Privileges and immunities
The Protocol on the Privileges and Immunities of the EuropeanCommunities shall apply to the Office.
Article 118
Liability
1. The contractual liability of the Office shall be governed bythe law applicable to the contract in question.
2. The Court of Justice shall be competent to give judgment
pursuant to any arbitration clause contained in a contractconcluded by the Office.
3. In the case of non-contractual liability, the Office shall, in
accordance with the general principles common to the laws ofthe Member States, make good any damage caused by itsdepartments or by its servants in the performance of their duties.
4. The Court of Justice shall have jurisdiction in disputes
relating to compensation for the damage referred to inparagraph 3.
5. The personal liability of its servants towards the Office shall
be governed by the provisions laid down in their Staff
Regulations or in the Conditions of Employment applicable tothem.
Article 119
Languages
1. The application for a Community trade mark shall be filed in
one of the official languages of the European Community.
2. The languages of the Office shall be English, French,
German, Italian and Spanish.3. The applicant must indicate a second language which shallbe a language of the Office the use of which he accepts as apossible language of proceedings for opposition, revocation orinvalidity proceedings.
If the application was filed in a language which is not one of the
languages of the Office, the Office shall arrange to have theapplication, as described in Article 26(1), translated into thelanguage indicated by the applicant.
4. Where the applicant for a Community trade mark is the sole
party to proceedings before the Office, the language ofproceedings shall be the language used for filing the applicationfor a Community trade mark. If the application was made in alanguage other than the languages of the Office, the Office maysend written communications to the applicant in the secondlanguage indicated by the applicant in his application.
5. The notice of opposition and an application for revocation
or invalidity shall be filed in one of the languages of the Office.
6. If the language chosen, in accordance with paragraph 5, for
the notice of opposition or the application for revocation orinvalidity is the language of the application for a trade mark or
the second language indicated when the application was filed,
that language shall be the language of the proceedings.
If the language chosen, in accordance with paragraph 5, for the
notice of opposition or the application for revocation orinvalidity is neither the language of the application for a trademark nor the second language indicated when the applicationwas filed, the opposing party or the party seeking revocation orinvalidity shall be required to produce, at his own expense, atranslation of his application either into the language of theapplication for a trade mark, provided that it is a language of theOffice, or into the second language indicated when theapplication was filed. The translation shall be produced withinthe period prescribed in the Implementing Regulation. Thelanguage into which the application has been translated shallthen become the language of the proceedings.
7. Parties to opposition, revocation, invalidity or appeal
proceedings may agree that a different official language of the
European Community is to be the language of the proceedings.
Article 120
Publication and entries in the Register
1. An application for a Community trade mark, as described inArticle 26(1), and all other information the publication of whichis prescribed by this Regulation or the Implementing Regulation,shall be published in all the official languages of the EuropeanCommunity.
2. All entries in the Register of Community trade marks shall
be made in all the official languages of the European Community.
3. In cases of doubt, the text in the language of the Office in
which the application for the Community trade mark was filedshall be authentic. If the application was filed in an officiallanguage of the European Community other than one of thelanguages of the Office, the text in the second language indicatedby the applicant shall be authentic.L 78/28 EN Official Journal of the European Union 24.3.2009
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        - 30 -Article 121
The translation services required for the functioning of the Office
shall be provided by the Translation Centre for the Bodies of theEuropean Union.
Article 122
Control of legality
1. The Commission shall check the legality of those acts of thePresident of the Office in respect of which Community law doesnot provide for any check on legality by another body and of actsof the Budget Committee attached to the Office pursuant toArticle 138.
2. It shall require that any unlawful acts as referred to in
paragraph 1 be altered or annulled.
3. Member States and any person directly and individually
concerned may refer to the Commission any act as referred to inparagraph 1, whether express or implied, for the Commission toexamine the legality of that act. Referral shall be made to theCommission within one month of the day on which the partyconcerned first became aware of the act in question. TheCommission shall take a decision within three months. If nodecision has been taken within this period, the case shall bedeemed to have been dismissed.
Article 123
Access to documents
1. Regulation (EC) No 1049/2001 of the European Parliamentand of the Council of 30 May 2001 regarding public access toEuropean Parliament, Council and Commission documents (
1)
shall apply to documents held by the Office.
2. The Administrative Board shall adopt the practical arrange-
ments for Implementing Regulation (EC) No 1049/2001 withregard to this Regulation.
3. Decisions taken by the Office pursuant to Article 8 of
Regulation (EC) No 1049/2001 may give rise to the lodging of acomplaint to the Ombudsman or form the subject of an actionbefore the Court of Justice, under the conditions laid down inArticles 195 and 230 of the Treaty respectively.
SECTION 2
Management of the Office
Article 124
Powers of the President
1. The Office shall be managed by the President.2. To this end the President shall have in particular thefollowing functions and powers:
(a) he shall take all necessary steps, including the adoption of
internal administrative instructions and the publication of
notices, to ensure the functioning of the Office;
(b) he may place before the Commission any proposal to
amend this Regulation, the Implementing Regulation, therules of procedure of the Boards of Appeal, the fees
regulations and any other rules applying to Community
trade marks after consulting the Administrative Board and,in the case of the fees regulations and the budgetaryprovisions of this Regulation, the Budget Committee;
(c) he shall draw up the estimates of the revenue and
expenditure of the Office and shall implement the budget;
(d) he shall submit a management report to the Commission,
the European Parliament and the Administrative Board eachyear;
(e) he shall exercise in respect of the staff the powers laid down
in Article 116(2);
(f) he may delegate his powers.
3. The President shall be assisted by one or more Vice-
Presidents. If the President is absent or indisposed, the Vice-President or one of the Vice-Presidents shall take his place inaccordance with the procedure laid down by the Administrative
Board.
Article 125
Appointment of senior officials
1. The President of the Office shall be appointed by the Council
from a list of at most three candidates, which shall be preparedby the Administrative Board. Power to dismiss the President shalllie with the Council, acting on a proposal from theAdministrative Board.
2. The term of office of the President shall not exceed five
years. This term of office shall be renewable.
3. The Vice-President or Vice-Presidents of the Office shall be
appointed or dismissed as in paragraph 1, after consultation ofthe President.
4. The Council shall exercise disciplinary authority over the
officials referred to in paragraphs 1 and 3.24.3.2009 EN Official Journal of the European Union L 78/29
(1) OJ L 145, 31.5.2001, p. 43.
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        - 31 -SECTION 3
Administrative Board
Article 126
Creation and powers
1. An Administrative Board is hereby set up, attached to the
Office. Without prejudice to the powers attributed to the BudgetCommittee in Section 5 —budget and financial control —the
Administrative Board shall have the powers defined below.
2. The Administrative Board shall draw up the lists of
candidates provided for in Article 125.
3. It shall advise the President on matters for which the Office
is responsible.
4. It shall be consulted before adoption of the guidelines for
examination in the Office and in the other cases provided for inthis Regulation.
5. It may deliver opinions and requests for information to the
President and to the Commission where it considers that this isnecessary.
Article 127
Composition
1. The Administrative Board shall be composed of onerepresentative of each Member State and one representative ofthe Commission and their alternates.
2. The members of the Administrative Board may, subject to
the provisions of its rules of procedure, be assisted by advisers orexperts.
Article 128
Chairmanship
1. The Administrative Board shall elect a chairman and adeputy chairman from among its members. The deputy chair-man shall ex officio replace the chairman in the event of his being
prevented from attending to his duties.
2. The duration of the terms of office of the chairman and the
deputy chairman shall be three years. The terms of office shall berenewable.
Article 129
Meetings
1. Meetings of the Administrative Board shall be convened byits chairman.
2. The President of the Office shall take part in the
deliberations, unless the Administrative Board decides otherwise.
3. The Administrative Board shall hold an ordinary meeting
once a year; in addition, it shall meet on the initiative of itschairman or at the request of the Commission or of one-third ofthe Member States.
4. The Administrative Board shall adopt rules of procedure.5. The Administrative Board shall take its decisions by a simple
majority of the representatives of the Member States. However, amajority of three-quarters of the representatives of the MemberStates shall be required for the decisions which the Adminis-trative Board is empowered to take under Article 125(1) and (3).In both cases each Member State shall have one vote.
6. The Administrative Board may invite observers to attend its
meetings.
7. The Secretariat for the Administrative Board shall be
provided by the Office.
SECTION 4
Implementation of procedures
Article 130
Competence
For taking decisions in connection with the procedures laiddown in this Regulation, the following shall be competent:
(a) examiners;(b) Opposition Divisions;(c) an Administration of Trade Marks and Legal Division;(d) Cancellation Divisions;(e) Boards of Appeal.
Article 131
Examiners
An examiner shall be responsible for taking decisions on behalf
of the Office in relation to an application for registration of aCommunity trade mark, including the matters referred to inArticles 36, 37 and 68, except in so far as an OppositionDivision is responsible.
Article 132
Opposition Divisions
1. An Opposition Division shall be responsible for takingdecisions on an opposition to an application to register aCommunity trade mark.
2. The decisions of the Opposition Divisions shall be taken by
three-member groups. At least one member shall be legallyqualified. In certain specific cases provided for in theImplementing Regulation, the decisions shall be taken by asingle member.L 78/30 EN Official Journal of the European Union 24.3.2009
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        - 32 -Article 133
Administration of Trade Marks and Legal Division
1. The Administration of Trade Marks and Legal Division shall
be responsible for those decisions required by this Regulationwhich do not fall within the competence of an examiner, anOpposition Division or a Cancellation Division. It shall inparticular be responsible for decisions in respect of entries in theRegister of Community trade marks.
2. It shall also be responsible for keeping the list of professional
representatives which is referred to in Article 93.
3. A decision of the Division shall be taken by one member.
Article 134
Cancellation Divisions
1. A Cancellation Division shall be responsible for taking
decisions in relation to an application for the revocation ordeclaration of invalidity of a Community trade mark.
2. The decisions of the Cancellation Divisions shall be taken by
three-member groups. At least one member shall be legallyqualified. In certain specific cases provided for in theImplementing Regulation, the decisions shall be taken by asingle member.
Article 135
Boards of Appeal
1. The Boards of Appeal shall be responsible for deciding onappeals from decisions of the examiners, Opposition Divisions,Administration of Trade Marks and Legal Division andCancellation Divisions.
2. The decisions of the Boards of Appeal shall be taken by three
members, at least two of whom are legally qualified. In certainspecific cases, decisions shall be taken by an enlarged Boardchaired by the President of the Boards of Appeal or by a singlemember, who must be legally qualified.
3. In order to determine the special cases which fall under the
jurisdiction of the enlarged Board, account should be taken ofthe legal difficulty or the importance of the case or of specialcircumstances which justify it. Such cases may be referred to theenlarged Board:
(a) by the authority of the Boards of Appeal set up in
accordance with the rules of procedure of the Boards
referred to in Article 162(3); or
(b) by the Board handling the case.4. The composition of the enlarged Board and the rules on
referrals to it shall be laid down pursuant to the rules ofprocedure of the Boards referred to in Article 162(3).
5. To determine which specific cases fall under the authority of
a single member, account should be taken of the lack of difficultyof the legal or factual matters raised, the limited importance ofthe individual case or the absence of other specific circumstances.The decision to confer a case on one member in the casesreferred to shall be adopted by the Board handling the case.Further details shall be laid down in the rules of procedure of theBoards referred to in Article 162(3).
Article 136
Independence of the members of the Boards of Appeal
1. The President of the Boards of Appeal and the chairmen ofthe Boards shall be appointed, in accordance with the procedurelaid down in Article 125 for the appointment of the President ofthe Office, for a term of five years. They may not be removedfrom office during this term, unless there are serious grounds forsuch removal and the Court of Justice, on application by theinstitution which appointed them, takes a decision to this effect.
The term of office of the President of the Boards of Appeal and
the chairmen of the Boards may be renewed for additional five-year periods, or until retirement age if this age is reached duringthe new term of office.
The President of the Boards of Appeal shall, inter alia, have
managerial and organisational powers, principally to:(a) chair the authority of the Boards of Appeal responsible for
laying down the rules and organising the work of the
Boards, which authority is provided for in the rules ofprocedure of the Boards referred to in Article 162(3);
(b) ensure the implementation of the authority's decisions;
(c) allocate cases to a Board on the basis of objective criteria
determined by the authority of the Boards of Appeal;
(d) forward to the President of the Office the Boards'
expenditure requirements, with a view to drawing up the
expenditure estimates.
The President of the Boards of Appeal shall chair the enlargedBoard.
Further details shall be laid down in the rules of procedure of the
Boards referred to in Article 162(3).
2. The members of the Boards of Appeal shall be appointed by
the Administrative Board for a term of five years. Their term ofoffice may be renewed for additional five-year periods, or untilretirement age if that age is reached during the new term ofoffice.24.3.2009 EN Official Journal of the European Union L 78/31
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        - 33 -3. The members of the Boards of Appeal may not be removed
from office unless there are serious grounds for such removaland the Court of Justice, after the case has been referred to it bythe Administrative Board on the recommendation of thePresident of the Boards of Appeal, after consulting the chairmanof the Board to which the member concerned belongs, takes adecision to this effect.
4. The President of the Boards of Appeal and the chairmen and
members of the Boards of Appeal shall be independent. In their
decisions they shall not be bound by any instructions.
5. The President of the Boards of Appeal and the chairmen and
members of the Boards of Appeal may not be examiners ormembers of the Opposition Divisions, Administration of TradeMarks and Legal Division or Cancellation Divisions.
Article 137
Exclusion and objection
1. Examiners and members of the Divisions set up within theOffice or of the Boards of Appeal may not take part in anyproceedings if they have any personal interest therein, or if theyhave previously been involved as representatives of one of theparties. Two of the three members of an Opposition Divisionshall not have taken part in examining the application. Membersof the Cancellation Divisions may not take part in anyproceedings if they have participated in the final decision onthe case in the proceedings for registration or oppositionproceedings. Members of the Boards of Appeal may not take partin appeal proceedings if they participated in the decision underappeal.
2. If, for one of the reasons mentioned in paragraph 1 or for
any other reason, a member of a Division or of a Board ofAppeal considers that he should not take part in anyproceedings, he shall inform the Division or Board accordingly.
3. Examiners and members of the Divisions or of a Board of
Appeal may be objected to by any party for one of the reasonsmentioned in paragraph 1, or if suspected of partiality. Anobjection shall not be admissible if, while being aware of a reasonfor objection, the party has taken a procedural step. No objectionmay be based upon the nationality of examiners or members.
4. The Divisions and the Boards of Appeal shall decide as to the
action to be taken in the cases specified in paragraphs 2 and 3without the participation of the member concerned. For thepurposes of taking this decision the member who withdraws orhas been objected to shall be replaced in the Division or Board ofAppeal by his alternate.SECTION 5
Budget and financial control
Article 138
Budget Committee
1. A Budget Committee is hereby set up, attached to the Office.The Budget Committee shall have the powers assigned to it inthis Section and in Article 38(4).
2. Articles 126(6), 127, 128 and 129(1) to (4), (6) and (7) shall
apply to the Budget Committee mutatis mutandis.
3. The Budget Committee shall take its decisions by a simplemajority of the representatives of the Member States. However, amajority of three-quarters of the representatives of the MemberStates shall be required for the decisions which the BudgetCommittee is empowered to take under Articles 38(4), 140(3)and 143. In both cases each Member State shall have one vote.
Article 139
Budget
1. Estimates of all the Office's revenue and expenditure shall beprepared for each financial year and shall be shown in theOffice's budget, and each financial year shall correspond with thecalendar year.
2. The revenue and expenditure shown in the budget shall be in
balance.
3. Revenue shall comprise, without prejudice to other types of
income, total fees payable under the fees regulations, total feespayable under the Madrid Protocol referred to in Article 140 ofthis Regulation for an international registration designating theEuropean Community and other payments made to ContractingParties to the Madrid Protocol, total fees payable under theGeneva Act referred to in Article 106c of Council Regulation(EC) No 6/2002 of 12 December 2001 on Communitydesigns (
1) for an international registration designating the
European Community and other payments made to ContractingParties to the Geneva Act, and, to the extend necessary, a subsidyentered against a specific heading of the general budget of theEuropean Communities, Commission section.
Article 140
Preparation of the budget
1. The President shall draw up each year an estimate of theOffice's revenue and expenditure for the following year and shallsend it to the Budget Committee not later than 31 March in eachyear, together with a list of posts.L 78/32 EN Official Journal of the European Union 24.3.2009
(1) OJ L 3, 5.1.2002, p. 1.
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        - 34 -2. Should the budget estimates provide for a Community
subsidy, the Budget Committee shall immediately forward theestimate to the Commission, which shall forward it to the budgetauthority of the Communities. The Commission may attach anopinion on the estimate along with an alternative estimate.
3. The Budget Committee shall adopt the budget, which shall
include the Office's list of posts. Should the budget estimatescontain a subsidy from the general budget of the Communities,the Office's budget shall, if necessary, be adjusted.
Article 141
Audit and control
1. An internal audit function shall be set up within the Office,to be performed in compliance with the relevant internationalstandards. The internal auditor, appointed by the President, shallbe responsible to him for verifying the proper operation ofbudget implementation systems and procedures of the Office.
2. The internal auditor shall advise the President on dealing
with risks, by issuing independent opinions on the quality ofmanagement and control systems and by issuing recommenda-tions for improving the conditions of implementation ofoperations and promoting sound financial management.
3. The responsibility for putting in place internal control
systems and procedures suitable for carrying out his tasks shalllie with the authorising officer.
Article 142
Auditing of accounts
1. Not later than 31 March in each year the President shalltransmit to the Commission, the European Parliament, theBudget Committee and the Court of Auditors accounts of theOffice's total revenue and expenditure for the preceding financialyear. The Court of Auditors shall examine them in accordancewith Article 248 of the Treaty.
2. The Budget Committee shall give a discharge to the President
of the Office in respect of the implementation of the budget.
Article 143
Financial provisions
The Budget Committee shall, after consulting the Court ofAuditors of the European Communities and the Commission,adopt internal financial provisions specifying, in particular, theprocedure for establishing and implementing the Office's budget.As far as is compatible with the particular nature of the Office,the financial provisions shall be based on the financialregulations adopted for other bodies set up by the Community.Article 144
Fees regulations
1. The fees regulations shall determine in particular the
amounts of the fees and the ways in which they are to be paid.
2. The amounts of the fees shall be fixed at such a level as to
ensure that the revenue in respect thereof is in principle sufficientfor the budget of the Office to be balanced.
3. The fees regulations shall be adopted and amended in
accordance with the procedure referred to in Article 163(2).
TITLE XIII
INTERNATIONAL REGISTRATION OF MARKS
SECTION I
General provisions
Article 145
Application of provisions
Unless otherwise specified in this title, this Regulation and itsImplementing Regulations shall apply to applications forinternational registrations under the Protocol relating to theMadrid Agreement concerning the international registration ofmarks, adopted at Madrid on 27 June 1989 (hereafter referred toas‘international applications ’and ‘the Madrid Protocol’ respec-
tively), based on an application for a Community trade mark oron a Community trade mark and to registrations of marks in theinternational register maintained by the International Bureau ofthe World Intellectual Property Organisation (hereafter referredto as ‘international registrations’ and ‘the International Bureau’,
respectively) designating the European Community.
SECTION 2
International registration on the basis of applications for a
Community trade mark and of Community trade marks
Article 146
Filing of an international application
1. International applications pursuant to Article 3 of theMadrid Protocol based on an application for a Community trademark or on a Community trade mark shall be filed at the Office.
2. Where an international application is filed before the mark
on which the international registration is to be based has beenregistered as a Community trade mark, the applicant for theinternational registration must indicate whether the internationalregistration is to be based on a Community trade markapplication or registration. Where the international registrationis to be based on a Community trade mark once it is registered,24.3.2009 EN Official Journal of the European Union L 78/33
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        - 35 -the international application shall be deemed to have been
received at the Office on the date of registration of theCommunity trade mark.
Article 147
Form and contents of the international application
1. The international application shall be filed in one of theofficial languages of the European Community, using a formprovided by the Office. Unless otherwise specified by theapplicant on that form when he files the internationalapplication, the Office shall correspond with the applicant inthe language of filing in a standard form.
2. If the international application is filed in a language which is
not one of the languages allowed under the Madrid Protocol, theapplicant must indicate a second language from among thoselanguages. This shall be the language in which the Office submitsthe international application to the International Bureau.
3. Where the international application is filed in a language
other than one of the languages allowed under the MadridProtocol for the filing of international applications, the applicantmay provide a translation of the list of goods or services in thelanguage in which the international application is to besubmitted to the International Bureau pursuant to paragraph 2.
4. The Office shall forward the international application to the
International Bureau as soon as possible.
5. The filing of an international application shall be subject to
the payment of a fee to the Office. In the cases referred to in thesecond sentence of Article 146(2), the fee shall be due on thedate of registration of the Community trade mark. Theapplication shall be deemed not to have been filed until therequired fee has been paid.
6. The international application must fulfil the relevant
conditions laid down in the Implementing Regulation.
Article 148
Recordal in the files and in the Register
1. The date and number of an international registration basedon a Community trade mark application, shall be recorded in thefiles of that application. When the application results in aCommunity trade mark, the date and number of theinternational registration shall be entered in the Register.
2. The date and number of an international registration based
on a Community trade mark shall be entered in the Register.Article 149
Request for territorial extension subsequent to the
international registration
A request for territorial extension made subsequent to theinternational registration pursuant to Article 3ter(2) of theMadrid Protocol may be filed through the intermediary of theOffice. The request must be filed in the language in which theinternational application was filed pursuant to Article 147.
Article 150
International fees
Any fees payable to the International Bureau under the MadridProtocol shall be paid direct to the International Bureau.
SECTION 3
International registrations designating the European
Community
Article 151
Effects of international registrations designating the
European Community
1. An international registration designating the EuropeanCommunity shall, from the date of its registration pursuant toArticle 3(4) of the Madrid Protocol or from the date of thesubsequent designation of the European Community pursuant toArticle 3ter(2) of the Madrid Protocol, have the same effect as anapplication for a Community trade mark.
2. If no refusal has been notified in accordance with Arti-
cle 5(1) and (2) of the Madrid Protocol or if any such refusal hasbeen withdrawn, the international registration of a markdesignating the European Community shall, from the datereferred to in paragraph 1, have the same effect as theregistration of a mark as a Community trade mark.
3. For the purposes of applying Article 9(3), publication of the
particulars of the international registration designating theEuropean Community pursuant to Article 152(1) shall take theplace of publication of a Community trade mark application, andpublication pursuant to Article 152(2) shall take the place ofpublication of the registration of a Community trade mark.
Article 152
Publication
1. The Office shall publish the date of registration of a markdesignating the European Community pursuant to Article 3(4) ofthe Madrid Protocol or the date of the subsequent designation ofthe European Community pursuant to Article 3ter(2) of theMadrid Protocol, the language of filing of the internationalapplication and the second language indicated by the applicant,L 78/34 EN Official Journal of the European Union 24.3.2009
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        - 36 -the number of the international registration and the date of
publication of such registration in the Gazette published by theInternational Bureau, a reproduction of the mark and thenumbers of the classes of the goods or services in respect ofwhich protection is claimed.
2. If no refusal of protection of an international registration
designating the European Community has been notified inaccordance with Article 5(1) and (2) of the Madrid Protocol or ifany such refusal has been withdrawn, the Office shall publish thisfact, together with the number of the international registrationand, where applicable, the date of publication of such registrationin the Gazette published by the International Bureau.
Article 153
Seniority
1. The applicant for an international registration designatingthe European Community may claim, in the internationalapplication, the seniority of an earlier trade mark registered ina Member State, including a trade mark registered in the Beneluxcountries, or registered under international arrangements havingeffect in a Member State, as provided for in Article 34.
2. The holder of an international registration designating the
European Community may, as from the date of publication ofthe effects of such registration pursuant to Article 152(2), claimat the Office the seniority of an earlier trade mark registered in aMember State, including a trade mark registered in the Beneluxcountries, or registered under international arrangements havingeffect in a Member State, as provided for in Article 35. The Officeshall notify the International Bureau accordingly.
Article 154
Examination as to absolute grounds for refusal
1. International registrations designating the European Com-munity shall be subject to examination as to absolute grounds forrefusal in the same way as applications for Community trademarks.
2. Protection of an international registration shall not be
refused before the holder of the international registration hasbeen allowed the opportunity to renounce or limit the protectionin respect of the European Community or of submitting hisobservations.
3. Refusal of protection shall take the place of refusal of a
Community trade mark application.
4. Where protection of an international registration is refused
by a decision under this Article which has become final or wherethe holder of the international registration has renounced theprotection in respect of the European Community pursuant toparagraph 2, the Office shall refund the holder of theinternational registration a part of the individual fee to be laiddown in the Implementing Regulation.Article 155
Search
1. Once the Office has received a notification of aninternational registration designating the European Community,it shall draw up a Community search report as provided for inArticle 38(1).
2. As soon as the Office has received a notification of an
international registration designating the European Community,the Office shall transmit a copy thereof to the central industrialproperty office of each Member State which has informed theOffice of its decision to operate a search in its own register oftrade marks as provided for in Article 38(2).
3. Article 38(3) to (6) shall apply mutatis mutandis.
4. The Office shall inform the proprietors of any earlier
Community trade marks or Community trade mark applicationscited in the Community search report of the publication of theinternational registration designating the European Communityas provided for in Article 152(1).
Article 156
Opposition
1. International registration designating the European Com-munity shall be subject to opposition in the same way aspublished Community trade mark applications.
2. Notice of opposition shall be filed within a period of three
months which shall begin six months following the date of thepublication pursuant to Article 152(1). The opposition shall notbe treated as duly entered until the opposition fee has been paid.
3. Refusal of protection shall take the place of refusal of a
Community trade mark application.
4. Where protection of an international registration is refused
by a decision under this Article which has become final or wherethe holder of the international registration has renounced theprotection in respect of the European Community prior to adecision under this Article which has become final, the Officeshall refund the holder of the international registration a part ofthe individual fee to be laid down in the Implementing
Regulation.
Article 157
Replacement of a Community trade mark by an
international registration
The Office shall, upon request, enter a notice in the Register that
a Community trade mark is deemed to have been replaced by aninternational registration in accordance with Article 4bis of the
Madrid Protocol.24.3.2009 EN Official Journal of the European Union L 78/35
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        - 37 -Article 158
Invalidation of the effects of an international registration
1. The effects of an international registration designating the
European Community may be declared invalid.
2. The application for invalidation of the effects of an
international registration designating the European Communityshall take the place of an application for a declaration ofrevocation as provided for in Article 51 or for a declaration ofinvalidity as provided for in Article 52 or Article 53.
Article 159
Conversion of a designation of the European Community
through an international registration into a national trade
mark application or into a designation of Member States
1. Where a designation of the European Community throughan international registration has been refused or ceases to haveeffect, the holder of the international registration may request the
conversion of the designation of the European Community:
(a) into a national trade mark application pursuant to
Articles 112, 113 and 114;
(b) into a designation of a Member State party to the Madrid
Protocol or the Madrid Agreement concerning the
international registration of marks, adopted at Madrid on14 April 1891, as revised and amended (hereafter referredto as the ‘Madrid Agreement’ ), provided that on the date
when conversion was requested it was possible to havedesignated that Member State directly under the MadridProtocol or the Madrid Agreement. Articles 112, 113 and114 shall apply.
2. The national trade mark application or the designation of aMember State party to the Madrid Protocol or the MadridAgreement resulting from the conversion of the designation ofthe European Community through an international registrationshall enjoy, in respect of the Member State concerned, the date ofthe international registration pursuant to Article 3(4) of theMadrid Protocol or the date of the extension to the EuropeanCommunity pursuant to Article 3ter(2) of the Madrid Protocol ifthe latter was made subsequently to the international registra-tion, or the date of priority of that registration and, whereappropriate, the seniority of a trade mark of that State claimedunder Article 153.
3. The request for conversion shall be published.
Article 160
Use of a mark subject of an international registration
For the purposes of applying Article 15(1), Article 42(2),
Article 51(1)(a) and Article 57(2), the date of publicationpursuant to Article 152(2) shall take the place of the date ofregistration for the purpose of establishing the date as fromwhich the mark which is the subject of an internationalregistration designating the European Community must be putto genuine use in the Community.
Article 161
Transformation
1. Subject to paragraph 2, the provisions applicable toCommunity trade mark applications shall apply mutatis mutandis
to applications for transformation of an international registrationinto a Community trade mark application pursuant toArticle 9quinquies of the Madrid Protocol.
2. When the application for transformation relates to aninternational registration designating the European Community
the particulars of which have been published pursuant to
Article 152(2), Articles 37 to 42 shall not apply.
TITLE XIV
FINAL PROVISIONS
Article 162
Community implementing provisions
1. The rules implementing this Regulation shall be adopted inan Implementing Regulation.
2. In addition to the fees provided for in the preceding Articles,
fees shall be charged, in accordance with the detailed rules ofapplication laid down in the Implementing Regulation, in thecases listed below:
(a) late payment of the registration fee;
(b) issue of a copy of the certificate of registration;(c) registration of a licence or another right in respect of a
Community trade mark;
(d) registration of a licence or another right in respect of an
application for a Community trade mark;
(e) cancellation of the registration of a licence or another right;
(f) alteration of a registered Community trade mark;
(g) issue of an extract from the Register;(h) inspection of the files;(i) issue of copies of file documents;(j) issue of certified copies of the application;
(k) communication of information in a file;
(l) review of the determination of the procedural costs to be
refunded.L 78/36 EN Official Journal of the European Union 24.3.2009
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        - 38 -3. The Implementing Regulation and the rules of procedure of
the Boards of Appeal shall be adopted and amended inaccordance with the procedure referred to in Article 163(2).
Article 163
Establishment of a committee and procedure for the
adoption of implementing regulations
1. The Commission shall be assisted by a committee referred toas the ‘Committee on Fees, Implementation Rules and the
Procedure of the Boards of Appeal of the Office for Harmonisa-tion in the Internal Market (trade marks and designs)’.
2. Where reference is made to this paragraph, Articles 5 and 7
of Decision 1999/468/EC shall apply.
The period laid down in Article 5(6) of Decision 1999/468/EC
shall be set at three months.
Article 164
Compatibility with other Community legal provisions
This Regulation shall not affect Council Regulation (EC) No 510/2006, and in particular Article 14 thereof.
Article 165
Provisions relating to the enlargement of the Community
1. As from the date of accession of Bulgaria, the CzechRepublic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta,Poland, Romania, Slovenia and Slovakia (hereinafter referred toas‘new Member State(s)’), a Community trade mark registered or
applied for pursuant to this Regulation before the respectivedates of accession shall be extended to the territory of thoseMember States in order to have equal effect throughout theCommunity.
2. The registration of a Community trade mark which is under
application at the date of accession may not be refused on thebasis of any of the absolute grounds for refusal listed in Arti-cle 7(1), if these grounds became applicable merely because ofthe accession of a new Member State.
3. Where an application for the registration of a Community
trade mark has been filed during the six months prior to the dateof accession, notice of opposition may be given pursuant toArticle 41 where an earlier trade mark or another earlier rightwithin the meaning of Article 8 was acquired in a new MemberState prior to accession, provided that it was acquired in goodfaith and that the filing date or, where applicable, the prioritydate or the date of acquisition in the new Member State of theearlier trade mark or other earlier right precedes the filing dateor, where applicable, the priority date of the Community trademark applied for.
4. A Community trade mark as referred to in paragraph 1 may
not be declared invalid:
(a) pursuant to Article 52 if the grounds for invalidity became
applicable merely because of the accession of a new
Member State;
(b) pursuant to Article 53(1) and (2) if the earlier national right
was registered, applied for or acquired in a new MemberState prior to the date of accession.
5. The use of a Community trade mark as referred to inparagraph 1 may be prohibited pursuant to Articles 110 and111, if the earlier trade mark or other earlier right was registered,applied for or acquired in good faith in the new Member Stateprior to the date of accession of that State; or, where applicable,has a priority date prior to the date of accession of that State.
Article 166
Repeal
Regulation (EC) No 40/94, as amended by the instruments setout in Annex I, is repealed.
References to the repealed Regulation shall be construed as
references to this Regulation and shall be read in accordance withthe correlation table in Annex II.
Article 167
Entry into force
1. This Regulation shall enter into force on the 20th dayfollowing its publication in the Official Journal of the European
Union.
2. The Member States shall within three years following entry
into force of Regulation (EC) No 40/94 take the necessarymeasures for the purpose of implementing Articles 95 and 114.
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 26 February 2009.
For the Council
The President
I. LANGER24.3.2009 EN Official Journal of the European Union L 78/37
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        - 39 -ANNEX I
Repealed Regulation with list of its successive amendments
(referred to in Article 166)
Council Regulation (EC) No 40/94
(OJ L 11, 14.1.1994, p. 1)
Council Regulation (EC) No 3288/94
(OJ L 349, 31.12.1994, p. 83)
Council Regulation (EC) No 807/2003
(OJ L 122, 16.5.2003, p. 36)Only point 48 of Annex III
Council Regulation (EC) No 1653/2003
(OJ L 245, 29.9.2003, p. 36)
Council Regulation (EC) No 1992/2003
(OJ L 296, 14.11.2003, p. 1)
Council Regulation (EC) No 422/2004
(OJ L 70, 9.3.2004, p. 1)
Council Regulation (EC) No 1891/2006
(OJ L 386, 29.12.2006, p. 14)Only Article 1
Annex II, Part 4 (C)(I) of the 2003 Act of Accession(OJ L 236, 23.9.2003, p. 342)
Annex III, Point 1.I of the 2005 Act of Accession
(OJ L 157, 21.6.2005, p. 231)L 78/38 EN Official Journal of the European Union 24.3.2009
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        - 40 -ANNEX II
Correlation Table
Regulation (EC) No 40/94 This Regulation
Articles 1 to 14 Articles 1 to 14
Article 15(1) Article 15(1), first subparagraph
Article 15(2), introductory words Article 15(1), second subparagraph, introductory words
Article 15(2), point a Article 15(1), second subparagraph, point a
Article 15(2), point b Article 15(1), second subparagraph, point b
Article 15(3) Article 15(2)
Articles 16 to 36 Articles 16 to 36
Article 37 —
Article 38 Article 37
Article 39 Article 38
Article 40 Article 39
Article 41 Article 40
Article 42 Article 41
Article 43 Article 42
Article 44 Article 43
Article 44a Article 44
Articles 45 to 48 Articles 45 to 48
Article 48a Article 49
Article 49 Article 50
Article 50 Article 51
Article 51 Article 52
Article 52 Article 53
Article 53 Article 54
Article 54 Article 55
Article 55 Article 56
Article 56 Article 57
Article 57 Article 58
Article 58 Article 59
Article 59 Article 60
Article 60 Article 61
Article 60a Article 62
Article 61 Article 63
Article 62 Article 64
Article 63 Article 65
Article 64 Article 66
Article 65 Article 67
Article 66 Article 68
Article 67 Article 69
Article 68 Article 70
Article 69 Article 71
Article 70 Article 72
Article 71 Article 73
Article 72 Article 7424.3.2009 EN Official Journal of the European Union L 78/39
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        - 41 -Regulation (EC) No 40/94 This Regulation
Article 73 Article 75
Article 74 Article 76
Article 75 Article 77
Article 76 Article 78
Article 77 Article 79
Article 77a Article 80
Article 78 Article 81
Article 78a Article 82
Article 79 Article 83
Article 80 Article 84
Article 81 Article 85
Article 82 Article 86
Article 83 Article 87
Article 84 Article 88
Article 85 Article 89
Article 86 Article 90
Article 87 Article 91
Article 88 Article 92
Article 89 Article 93
Article 90 Article 94
Article 91 Article 95
Article 92 Article 96
Article 93 Article 97
Article 94(1), introductory wording Article 98(1), introductory wording
Article 94(1), first indent Article 98(1)(a)
Article 94(1), second indent Article 98(1)(b)
Article 94(2) Article 98(2)
Article 95 Article 99
Article 96 Article 100
Article 97 Article 101
Article 98 Article 102
Article 99 Article 103
Article 100 Article 104
Article 101 Article 105
Article 102 Article 106
Article 103 Article 107
Article 104 Article 108
Article 105 Article 109
Article 106 Article 110
Article 107 Article 111
Article 108 Article 112
Article 109 Article 113
Article 110 Article 114
Article 111 Article 115
Article 112 Article 116
Article 113 Article 117
Article 114 Article 118L 78/40 EN Official Journal of the European Union 24.3.2009
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        - 42 -Regulation (EC) No 40/94 This Regulation
Article 115 Article 119
Article 116 Article 120
Article 117 Article 121Article 118 Article 122
Article 118a Article 123
Article 119 Article 124
Article 120 Article 125Article 121(1) and (2) Article 126(1) and (2)Article 121(3) —
Article 121(4) Article 126(3)Article 121(5) Article 126(4)Article 121(6) Article 126(5)Article 122 Article 127Article 123 Article 128Article 124 Article 129Article 125 Article 130Article 126 Article 131Article 127 Article 132Article 128 Article 133Article 129 Article 134Article 130 Article 135Article 131 Article 136Article 132 Article 137
Article 133 Article 138
Article 134 Article 139Article 135 Article 140Article 136 Article 141Article 137 Article 142Article 138 Article 143Article 139 Article 144Article 140 Article 145Article 141 Article 146Article 142 Article 147Article 143 Article 148Article 144 Article 149Article 145 Article 150Article 146 Article 151Article 147 Article 152Article 148 Article 153Article 149 Article 154Article 150 Article 155
Article 151 Article 156
Article 152 Article 157Article 153 Article 158Article 154 Article 159Article 155 Article 160Article 156 Article 16124.3.2009 EN Official Journal of the European Union L 78/41
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        - 43 -Regulation (EC) No 40/94 This Regulation
Article 157(1) Article 162(1)
Article 157(2), introductory wording Article 162(2), introductory wording
Article 157(2)(2) Article 162(2)(a)
Article 157(2)(3) Article 162(2)(b)
Article 157(2)(5) Article 162(2)(c)
Article 157(2)(6) Article 162(2)(d)
Article 157(2)(7) Article 162(2)(e)
Article 157(2)(8) Article 162(2)(f)
Article 157(2)(9) Article 162(2)(g)
Article 157(2)(10) Article 162(2)(h)
Article 157(2)(11) Article 162(2)(i)
Article 157(2)(12) Article 162(2)(j)
Article 157(2)(13) Article 162(2)(k)
Article 157(2)(14) Article 162(2)(l)
Article 157(3) Article 162(3)
Article 158 Article 163
Article 159 Article 164
Article 159a(1), (2) and (3) Article 165(1), (2) and (3)
Article 159a(4), initial wording Article 165(4), initial wording
Article 159a(4), first indent Article 165(4)(a)
Article 159a(4), second indent Article 165(4)(b)
Article 159a(5) Article 165(5)
— Article 166
Article 160(1) Article 167(1)
Article 160(2) Article 167(2)
Article 160(3) and (4) —
— Annex I
— Annex IIL 78/42 EN Official Journal of the European Union 24.3.2009
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        - 44 -