REGUL ATION (EU) 2015/2424 OF THE EUR OPEAN PARLIAMENT AND OF THE COUNCIL 
of 16 December 2015 
amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission 
Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community 
trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the 
Office for Har monization in the Inter nal Mark et (Trade Marks and Designs) 
(Text with EEA relevance) 
THE EUR OPEAN PARLIAMENT AND THE COUNCIL OF THE EUR OPEAN UNION, 
Having regar d to the Treaty on the Functioning of the European Union, and in particular Article 118, first paragraph, 
thereof, 
Having regar d to the proposal from the European Commission, 
After transmission of the draf t legislative act to the national parliaments, 
Acting in accordance with the ordinar y legislative procedure (1), 
Whereas: 
(1)  Council Regulation (EC) No 40/94 (2), whic h was codif ied in 2009 as Council Regulation (EC) No 207/2009 (3), 
creat ed a system of trade mark prot ection specifi c to the European Union which provided for the prot ection of 
trade marks at the level of the Union, in parallel to the prot ection of trade marks available at the level of the 
Member States according to the national trade mark systems, harmonised by Council Directive 89/104/EEC (4), 
whic h was codif ied as Directive 2008/95/EC of the European Parliament and of the Council (5). 
(2)  As a consequence of the entr y into force of the Lisbon Treaty , the terminology of Regulation (EC) No 207/2009 
should be update d. This entails the replacement of ‘Community trade mark’ by ‘European Union trade mark’ 
(‘EU trade mark’). In order to better reflect the actual work carried out by the Office for Harmonization in the 
Internal Mark et (trade marks and designs), its name should be replaced by ‘European Union Intellectua l Proper ty 
Offi ce’ (‘the Offi ce’). 
(3)  Further to the Commission's communication of 16 July 2008 on an industr ial proper ty rights strateg y for 
Europe, the Commission carried out a comprehensive evaluation of the overall functioning of the trade mark 
system in Europe as a whole, covering Union and national levels and the interrelatio n between the two. 
(4)  In its conclusions of 25 May 2010 on the future revision of the trade mark system in the European Union, the 
Council called on the Commission to present proposals for the revision of Regulation (EC) No 207/2009 and 
Directive 2008/95/EC. 
(5)  The exper ience acquired since the establishment of the Community trade mark system has shown that 
under takings from within the Union and from third countr ies have accept ed the syste m which has become a 
successful and viable compl ement and alternative to the prot ection of trade marks at the level of the Member 
States. 24.12.2015 L 341/21 Official Jour nal of the European Union EN     
(1)Position of the European Parliament of 25 Febr uary 2014 (not yet published in the Official Jour nal) and position of the Council at first 
reading of 10 November 2015 (not yet published in the Official Jour nal). Position of the European Parliament of 15 December 2015. 
(2)Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 14.1.1994, p. 1). 
(3)Council Regulation (EC) No 207/2009 of 26 Febr uary 2009 on the Community trade mark (OJ L 78, 24.3.2009, p. 1). 
(4)First Council Directive 89/104/EEC of 21 December 1988 to appro ximat e the laws of the Member States relating to trade mark s 
(OJ L 40, 11.2.1989, p. 1). 
(5)Directive 2008/95/EC of the European Parliament and of the Council of 22 Octo ber 2008 to appro ximat e the laws of the Member States 
relating to trade marks (OJ L 299, 8.11.2008, p. 25). (6)  National trade marks continue never theless to be necessar y for those under takings whic h do not want prot ection 
of their trade marks at Union level, or whic h are unable to obtain Union-wide prote ction while national 
prot ection does not face any obstacles. It should be left to each person seeking trade mark prote ction to decide 
whether the protect ion is sought only as a national trade mark in one or more Member States, or only as an EU 
trade mark, or both. 
(7)  While the evaluation of the overall functioning of the Community trade mark syste m conf irmed that many 
aspects of that system, including the fundamental principles on which it is based, have stood the test of time and 
continue to meet business needs and expectations, the Commission concluded in its communication ‘A Sing le 
Mark et for Intellectual Proper ty Rights ’ of 24 May 2011 that there is a need to moder nise the trade mark system 
in the Union by making it more effective, efficient and consistent as a whole and by adap ting it to the internet 
era. 
(8)  In parallel with the impro vements and amendments of the EU trade mark system, national trade mark laws and 
practices should be further harmonised and brought into line with the EU trade mark syste m to the extent 
appropr iate in order to creat e as far as possible equal conditions for the registration and protection of trade 
marks throughout the Union. 
(9)  In order to allow for more flexibility while also ensur ing greate r legal certainty with regar d to the means of 
representation of trade marks , the requirement of graphic representability should be deleted from the definit ion 
of an EU trade mark. A sign should be permitted to be represente d in any appropr iate form using generally 
available technology , and thus not necessar ily by graphic means, as long as the representation is clear , precise, 
self-contained, easily accessible, intelligible, durable and objective. 
(10)  Regulation (EC) No 207/2009 currently falls shor t of offering the same degree of prote ction to designations of 
origin and geographical indications as other instr uments of Union law. It is theref ore necessar y to clarify the 
absolute grounds for refusal concer ning designations of origin and geographical indications and to ensure that 
such grounds for refusal are fully consiste nt with relevant Union legislation and national law providing for 
prot ection of those intellectual proper ty titles. For reasons of coherence with other Union legislation, the scope 
of those absolute grounds should be exte nded to cover also prote cted traditional terms for wine and traditional 
specialities guarant eed. 
(11)  In order to maintain strong prot ection of rights in designations of origin and geographical indications prote cted 
at Union and national levels, it is necessar y to clarify that those rights entitle any person author ised under the 
relevant law to oppose a later application for the registration of an EU trade mark, regar dless of whether or not 
those rights are also grounds for refusal to be taken into account ex officio by the examiner . 
(12)  In order to ensure legal certainty and full consistency with the principle of priority, under whic h a register ed 
earlier trade mark takes precedence over later registered trade marks, it is necessar y to provide that the 
enforcement of rights conferr ed by an EU trade mark should be without prejudice to the rights of propr ietors 
acquired prior to the filing or priority date of the EU trade mark. This is in conf ormity with Article 16(1) of the 
Agreement on trade-relat ed aspects of intellectual proper ty rights of 15 Apr il 1994. 
(13)  Confusion as to the commercial source from whic h the goods or services emanat e may occur when a compan y 
uses the same or a similar sign as a trade name in a way such that a link is established between the compan y 
bear ing the name and the goods or services coming from that compan y. Infringement of an EU trade mark 
should theref ore also comprise the use of the sign as a trade name or similar designation as long as the use is 
made for the purposes of distinguishing goods or services. 
(14)  In order to ensure legal certainty and full consiste ncy with specifi c Union legislation, it is appropr iate to provide 
that the propr ietor of an EU trade mark should be entitled to prohibit a third party from using a sign in 
compar ative adver tising where such compar ative adver tising is contrar y to Directive 2006/114/EC of the 
European Parliament and of the Council (1). 24.12.2015 L 341/22 Official Jour nal of the European Union EN     
(1)Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concer ning misleading and comparat ive 
adver tising (OJ L 376, 27.12.2006, p. 21). (15) In order to strengthen trade mark protection and combat count erfeiting more effectively , and in line with inter­
national oblig ations of the Union under the framew ork of the World Trade Org anisation (WTO), in particular 
Article V of the General Agreement on Tariffs and Trade (GA TT) on freedom of transit and, as regards gener ic 
medicines, the ‘Declaration on the TRIPS Agreement and public health’ adopt ed by the Doha WTO Ministeri al 
Conf erence on 14 November 2001, the propr ietor of an EU trade mark should be entitled to prevent third 
parties from bringing goods, in the course of trade, into the Union without being released for free circulation 
there, where such goods come from third countr ies and bear without author isation a trade mark whic h is 
identical or essentially identical with the EU trade mark register ed in respect of such goods. 
(16)  To this effect, it should be permissible for EU trade mark propr ietors to prevent the entr y of infringing goods and 
their placement in all customs situations, including transit, transhipment, warehousing, free zones, temporar y 
storage, inward processing or temporar y admission, also when such goods are not intended to be placed on the 
mark et of the Union. In perf orming customs controls, the custom s author ities should make use of the powers 
and procedures laid down in Regulation (EU) No 608/2013 of the European Parliament and the Council (1), also 
at the request of the right holders. In particular , the customs author ities should carry out the relevant controls on 
the basis of risk analysis criteria. 
(17)  In order to reconcile the need to ensure the effective enforcement of trade mark rights with the necessity to avoid 
ham pering the free flow of trade in legitimate goods, the entitlement of the propr ietor of the EU trade mark 
should lapse where, during the subsequent proceedings initiate d before the European Union trade mark cour t 
(‘EU trade mark cour t’) compet ent to take a substantive decision on whether the EU trade mark has been 
infringe d, the declarant or the holder of the goods is able to prove that the propr ietor of the EU trade mark is 
not entitled to prohibit the placing of the goods on the mark et in the countr y of final destination. 
(18)  Article 28 of Regulation (EU) No 608/2013 provides that a right holder is to be liable for damages towards the 
holder of the goods where, inter alia, the goods in question are subsequently found not to infringe an intellect ual 
proper ty right. 
(19)  Appropr iate measures should be taken with a view to ensur ing the smooth transit of gener ic medicines. With 
respect to intern ational non-propr ietar y names (INN) as globally recognised gener ic names for active substances 
in phar maceutical preparations, it is vital to take due account of the existing limitations on the effect of EU trade 
mark rights. Consequently , the propr ietor of an EU trade mark should not have the right to prevent a third party 
from bringing goods into the Union without being released for free circulation there, based upon similar ities 
between the INN for the active ingredient in the medicines and the trade mark. 
(20)  In order to enable propr ietors of EU trade marks to combat count erfeiting more effectively , they should be 
entitled to prohibit the affixing of an infringing mark to goods and preparat ory acts carried out prior to the 
affixing. 
(21)  The exclusive rights conferr ed by an EU trade mark should not entitle the propr ietor to prohibit the use of signs 
or indications by third parties whic h are used fairly and thus in accordance with honest practices in industr ial 
and commercial matters. In order to creat e equal conditions for trade names and EU trade marks in the event of 
conf licts, given that trade names are regularly grant ed unrestr icted prot ection against later trade marks , such use 
should be only considered to include the use of the personal name of the third party. It should further permit the 
use of descr iptive or non-distinctive signs or indications in general . Further more, the propr ietor should not be 
entitled to prevent the fair and honest use of the EU trade mark for the purpose of identifying or refer ring to the 
goods or services as those of the propr ietor . Use of a trade mark by third parties to draw the consumer's 
attention to the resale of genuine goods that were originally sold by or with the consent of the propr ietor of the 
EU trade mark in the Union should be considered as being fair as long as it is at the same time in accordance 
with honest practices in industr ial and commercial matte rs. Use of a trade mark by third parties for the purpose 
of artistic expression should be considered as being fair as long as it is at the same time in accordance with 
honest practices in industr ial and commercial matte rs. Further more, this Regulation should be applied in a way 
that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression. 24.12.2015 L 341/23 Official Jour nal of the European Union EN     
(1)Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concer ning customs enforcement of 
intel lectual proper ty rights and repealing Council Regulation (EC) No 1383/2003 (OJ L 181, 29.6.2013, p. 15). (22)  In order to ensure legal certainty and safeg uard legitimately acquired trade mark rights, it is appropr iate and 
necessar y to lay down, without prejudice to the principle that the later trade mark cannot be enforced against the 
earlier trade mark, that propr ietors of EU trade marks should not be entitled to oppose the use of a later trade 
mark if the later trade mark was acquired at a time when the earlier trade mark could not be enforced against the 
later trade mark. 
(23)  For reasons of equity and legal certainty , the use of an EU trade mark in a form that differs in elements which do 
not alter the distinctive charact er of that mark, in the form in whic h it is register ed, should be sufficient to 
preser ve the rights conferred rega rdless of whether the trade mark in the form as used is also registere d. 
(24)  In view of the gradual decline and insignificant number of EU trade mark applications filed at the central 
industr ial proper ty offices of the Member States and the Benelux Office for Intellectual Proper ty, it should be 
possible to file an EU trade mark application only at the Office. 
(25)  EU trade mark protection is grant ed in relation to specifi c goods or services whose nature and number determine 
the exte nt of protect ion afforded to the trade mark propr ietor. It is theref ore essential to establish rules for the 
designation and classification of goods and services in Regulation (EC) No 207/2009 and to ensure legal certainty 
and sound administration by requir ing that the goods and services for which trade mark protection is sought are 
identified by the applicant with sufficient clarity and precision to enable the compet ent author ities and economic 
operat ors, on the basis of the application alone, to determine the extent of the prot ection applied for. The use of 
general term s should be interpreted as only including all goods and services clearly covered by the literal meaning 
of the term . Propr ietors of EU trade marks , which because of the previous practice of the Offi ce are register ed in 
respect of the entire heading of a class of the Nice Classif ication, should be given the possibility to adapt their 
lists of goods and services in order to ensure that the cont ent of the Regist er meets the requisite standard of 
clarity and precision in accordance with the case-law of the Cour t of Justice of the European Union. 
(26)  It is appropr iate to streamline the regime of EU and national trade mark searc hes by avoiding unnecessar y dela ys 
in registeri ng an EU trade mark and to render it more flexible in term s of user needs and prefe rences by also 
making the searc h for EU trade marks optional. The optional EU and national trade mark searc hes should be 
compl emented by the making available of all-encompas sing, fast and powerful search engines for the use of the 
public free of charg e within the conte xt of cooperation between the Offi ce and the central industr ial proper ty 
offices of the Member States, including the Benelux Offi ce for Intellectual Proper ty. 
(27)  As a compl ement to the existing provisions on Community collective marks and to remedy the current 
imbalance between national systems and the EU trade mark system, it is necessar y to add a set of specifi c 
provisions for the purpose of providing prot ection to European Union certification marks (‘EU certification 
marks ’) whic h allow a certifying institution or organisation to permit adherents to the certification system to use 
the mark as a sign for goods or services complying with the certification requirements. 
(28)  The exper ience gain ed in the application of the current system of EU trade marks has revealed the poten tial for 
improvement of certain aspects of procedure. Consequently , certain measures should be take n to simplify and 
speed up procedures where appropr iate and to enhance legal certainty and predictability where required. 
(29)  For reasons of legal certainty and in order to provide greater transparency , it is appropr iate to clearly define all 
the tasks of the Office, including those whic h are not relat ed to the manag ement of the EU trade mark system . 
(30)  With the aim of promoting converg ence of practices and of developing common tools, it is necessar y to establish 
an appropr iate framework for cooperation between the Offi ce and the industr ial proper ty offices of the Member 
States, including the Benelux Office for Intellectual Proper ty, defining key areas of cooperation and enabling the 
Offi ce to coordinat e relevant common projects of inter est to the Union and the Member State s and to finance, up 
to a maximum amount, those projects. Those cooperation activities should be beneficial for under takings using 
trade mark system s in Europe. For users of the Union regime laid down in this Regulation, the projects, 
particularly the databases for search and consultation purposes, should provide additional, inclusive, efficient 
tools that are free of charge to compl y with the specific requirements arising from the unitar y character of the 
EU trade mark. 24.12.2015 L 341/24 Official Jour nal of the European Union EN     (31)  To the extent appropr iate, certain principles regarding the governance of the Offi ce should be adapt ed to the 
Common Approach on EU decentralised agencies adopt ed by the European Parliament, the Council and the 
Commission in July 2012. 
(32)  In the inter est of great er legal certainty and transparency , it is necessar y to updat e some provisions concer ning 
the organisation and functioning of the Offi ce. 
(33)  It is desirable to facilitat e friendly , expeditious and efficient dispute resolution by entr usting the Offi ce with the 
establishment of a mediation centre the services of whic h could be used by any person with the aim of achi eving 
a friendly settlement of dispute s relating to EU trade marks and Community designs by mutual agreement. 
(34)  The setting up of the EU trade mark system has resulted in increased financial burdens for the central industr ial 
proper ty offices and other author ities of the Member States. The additional costs are relat ed to the handling of a 
higher number of opposition and invalidity proceedings involving EU trade marks or brought by propr ietors of 
such trade marks ; to the awareness-raising activities linked to the EU trade mark syste m; as well as to activities 
intende d to ensure the enforcement of EU trade mark rights. It is, theref ore, appropr iate to ensure that the Office 
offset part of the costs incur red by Member States for the role they play in ensur ing the smooth functioning of 
the EU trade mark syste m. The payment of such offsetting should be subject to the submission, by Member 
States, of relevant statistical data. The offsetting of costs should not be of such an extent that it would cause a 
budgeta ry deficit for the Office. 
(35)  In the inter est of sound financial management , the accumulation by the Offi ce of signif icant budgetary surpluses 
should be avoided. This should be without prejudice to the Office maintaining a financial reser ve covering one 
year of its operational expenditure to ensure the continuity of its operations and the perf ormance of its tasks. 
That reser ve should only be used to ensure the continuity of the tasks of the Office as specif ied in this 
Regulation. 
(36)  Given the essential importance of the amounts of fees payable to the Offi ce for the functioning of the EU trade 
mark system and its compl ementar y relationship as regards national trade mark syste ms, it is necessar y to set 
those fee amounts directly in Regulation (EC) No 207/2009 in the form of an annex. The amounts of the fees 
should be fixed at a level whic h ensures that: first, the revenue they produce is in principle suffi cient for the 
budget of the Offi ce to be balanced; second, there is coexist ence and compl ementar ity between the EU trade 
mark and the national trade mark systems, also taking into account the size of the mark et covered by the EU 
trade mark and the needs of small and medium-sized enterprises; and third, the rights of propr ietors of an EU 
trade mark are enforced efficiently in the Member States. 
(37)  Regulation (EC) No 207/2009 confer s powers on the Commission to adopt rules implementing that Regulation. 
As a consequence of the entr y into force of the Lisbon Treaty , the powers conferr ed upon the Commission under 
Regulation (EC) No 207/2009 need to be aligned to Articles 290 and 291 of the Treaty on the Functioning of 
the European Union (TFEU). As a result, it is also necessar y to incor porate certain rules which are currently 
contained in Commission Regulations (EC) No 2868/95 (1), (EC) No 2869/95 (2), and (EC) No 216/96 (3) into the 
text of Regulation (EC) No 207/2009. Regulation (EC) No 2868/95 should theref ore be amended according ly, and 
Regulation (EC) No 2869/95 should be repealed. 
(38)  To the exte nt that the powers conferred upon the Commission under Regulation (EC) No 207/2009 need to be 
aligned to Article 290 TFEU, it is of particular importance that the Commission carry out appropr iate consulta ­
tions during its preparatory work, including at exper t level. The Commission, when prepar ing and drawing-up 
delegat ed acts, should ensure a simultaneous, timely and appropr iate transmission of relevant documents to the 
European Parliament and to the Council. 24.12.2015 L 341/25 Official Jour nal of the European Union EN     
(1)Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community 
trade mark (OJ L 303, 15.12.1995, p. 1). 
(2)Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal 
Mark et (Trade Marks and Designs) (OJ L 303, 15.12.1995, p. 33). 
(3)Commission Regulation (EC) No 216/96 of 5 Febr uary 1996 laying down the rules of procedure of the Boards of Appeal of the Office for 
Harmonization in the Intern al Market (Trade Marks and Designs) (OJ L 28, 6.2.1996, p. 11). (39)  In order to ensure an effective, efficient and expeditious examination and registration of EU trade mark 
applications by the Offi ce using procedures whic h are transparent, thorough, fair and equitable, the power to 
adopt delegat ed acts in accordance with Article 290 TFEU should be delega ted to the Commission in respect of 
specifying the details on the procedures for filing and examining an opposition and those procedures governing 
the amendment of the application. 
(40)  In order to ensure that an EU trade mark can be revok ed or declared inva lid in an effective and efficient way by 
means of transparent, thorough, fair and equitable procedures, the power to adopt deleg ated acts in accordance 
with Article 290 TFEU should be delegat ed to the Commission in respect of specifying the procedures for 
revocati on and declaration of invalidity . 
(41)  In order to allow for an effective, efficient and complet e review of decisions of the Office by the Boards of 
Appeal by means of a transparent, thorough, fair and equitable procedure which takes into account the principles 
laid down in Regulation (EC) No 207/2009, the power to adopt delegat ed acts in accordance with Article 290 
TFEU should be delegat ed to the Commission in respect of specifying the formal cont ent of the notice of appeal, 
the procedure for the filing and examination of an appeal, the formal content and form of the Board of Appeal's 
decisions, and the reimbursement of the appeal fees. 
(42)  In order to ensure a smooth, effective and effic ient operation of the EU trade mark system, the power to adopt 
delegat ed acts in accordance with Article 290 TFEU should be delegat ed to the Commission in respect of 
specifying the requirements as to the details on oral proceedings and the detailed arrangements for taking of 
evidence, the detailed arrang ements for notification, the means of communication and the forms to be used by 
the parties to proceedings, the rules governing the calculation and duration of time limits, the procedures for the 
revocati on of a decision or for cancellation of an entr y in the Register , the detailed arrange ments for the 
resum ption of proceedings, and the details on representation before the Offi ce. 
(43)  In order to ensure an effective and efficient organisati on of the Boards of Appeal, the power to adopt delegat ed 
acts in accordance with Article 290 TFEU should be delegat ed to the Commission in respect of specifying the 
details on the organisation of the Boards of Appeal. 
(44)  In order to ensure the effective and effic ient registration of international trade marks in a manner that is fully 
consiste nt with the rules of the Protocol relating to the Madr id Agreement concer ning the internatio nal 
registration of marks , the power to adopt delega ted acts in accordance with Article 290 TFEU should be 
delegat ed to the Commission in respect of specifying the details on the procedures concer ning the filing and 
examination of an opposition, including the necessar y communications to be made to the World Intellectual 
Proper ty Org anisation (WIPO), and the details of the procedure concer ning intern ational registrations based on a 
basic application or basic registration relating to a collective mark, certification mark or guarant ee mark. 
(45)  In order to ensure unif orm conditions for the implementation of this Regulation, imple menting powers should 
be conferr ed on the Commission in respect of specifying the details concer ning applications, requests, certificates, 
claims, regulations, notifications and any other document under the relevant procedural requirements established 
by this Regulation as well as in respect of maximum rates for costs essential to the proceedings and actually 
incur red, details concer ning publications in the European Union Trade Marks Bulletin and the Official Jour nal of 
the Offi ce, the detailed arrange ments for exchange of information between the Offi ce and national author ities, 
detailed arrang ements concer ning translations of suppor ting documents in written proceedings, exact types of 
decisions to be taken by a sing le member of the opposition or cancellation divisions, details of the notification 
oblig ation pursuant to the Madr id Protocol , and detailed requirements regar ding the request for territorial 
exte nsion subsequent to international registration. Those powers should be exercised in accordance with 
Regulation (EU) No 182/2011 of the European Parliament and of the Council (1). 
(46)  Since the objectives of this Regulation cannot be suffi ciently achieved by the Member States but can rather , by 
reason of its scale and effects, be better achi eved at Union level, the Union may adopt measures, in accordance 
with the principle of subsidiar ity as set out in Article 5 of the Treaty on European Union. In accordance with the 
principle of propor tionality as set out in that Article, this Regulation does not go beyond what is necessar y in 
order to achieve those objectives. 24.12.2015 L 341/26 Official Jour nal of the European Union EN     
(1)Regulation (EU) No 182/2011 of the European Parliament and of the Council of 16 Febr uary 2011 laying down the rules and general 
principles concer ning mechanisms for control by the Member States of the Commission's exercise of implementing powers (OJ L 55, 
28.2.2011, p. 13). (47)  The European Data Protection Super visor was consulted in accordance with Article 28(2) of Regulation (EC) 
No 45/2001 of the European Parliament and of the Council (1) and delivered an opinion on 11 July 2013. 
(48)  Regulation (EC) No 207/2009 should theref ore be amended according ly, 
HAVE ADOPTED THIS REGUL ATION: 
Article 1 
Regulation (EC) No 207/2009 is amended as follows:  
(1) In the title, ‘Community trade mark’ is replaced by ‘European Union trade mark’.  
(2) The term ‘Community trade mark’ is replaced by ‘European Union trade mark (“EU trade mark”)’ in Article 1(1); 
and elsewhere in the Regulation, it is replaced by ‘EU trade mark’ and any necessar y grammatical change s are 
made.  
(3) Throughout the Regulation, the term ‘Community trade mark cour t’ is replaced by ‘EU trade mark cour t’ and any 
necessar y grammatical chang es are made.  
(4) The term ‘Community collective mark’ is replaced by ‘European Union collective mark (“EU collective mark”)’ in 
Article 66(1); and elsewhere in the Regulation, it is replaced by ‘EU collective mark’ and any necessar y 
grammatical change s are made.  
(5) Throughout the Regulation, excep t in the cases referred to in points (2), (3) and (4), the words ‘Community’ , 
‘European Community’ and ‘European Communities’ are replaced by ‘Union’ and any necessar y grammatical 
changes are made.  
(6) Throughout the Regulation, the term ‘President of the Offi ce’ and all referen ces to that President are replaced by 
‘Exe cutive Director of the Offi ce’ or ‘Executive Direct or’, as appropr iate, and any necessar y grammatical chang es 
are made.  
(7) Article 2 is replaced by the following: 
‘Article 2 
Office 
1. A European Union Intellectual Proper ty Offi ce (“the Offi ce”) is hereby established. 
2. All references in Union law to the Office for Harmonization in the Internal Marke t (trade marks and 
designs) shall be read as references to the Office.’.  
(8) Article 4 is replaced by the following: 
‘Article 4 
Signs of which an EU trade mark may consis t 
An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, 
numerals, colours, the shape of goods or of the packag ing of goods, or sounds, provided that such signs are 
capable of: 
(a)  distinguishing the goods or services of one under taking from those of other under takings; and 
(b)  being represented on the Register of European Union trade marks , (“the Register”), in a manner whic h enables 
the compet ent author ities and the public to determine the clear and precise subject matte r of the protection 
afforded to its propr ietor.’. 24.12.2015 L 341/27 Official Jour nal of the European Union EN     
(1)Regulation (EC) No 45/2001 of the European Parliament and of the Council of 18 December 2000 on the protection of individuals with 
regar d to the processing of personal data by the Community institutions and bodies and on the free movement of such data (OJ L 8, 
12.1.2001, p. 1). (9) Article 7(1) is amended as follows: 
(a)  point (e) is replaced by the following: 
‘(e)  signs which consist excl usively of: 
(i)  the shape, or another charact eristic, which results from the nature of the goods themselves; 
(ii)  the shape, or another charact eristic, of goods which is necessar y to obtain a technical result ; 
(iii)  the shape, or another charact eristic, which gives substantial value to the goods;’; 
(b)  points (j) and (k) are replaced by the following: 
‘(j)  trade marks whic h are excl uded from registration, pursuant to Union legislation or national law or to 
international agreements to which the Union or the Member State concer ned is party, providing for 
prot ection of designations of origin and geographical indications; 
(k)  trade marks whic h are excluded from registration pursuant to Union legislation or international 
agreements to whic h the Union is party, providing for prote ction of traditional term s for wine;’; 
(c)  the following points are added: 
‘(l)  trade marks which are excl uded from registration pursuant to Union legislation or international 
agreements to whic h the Union is party, providing for prote ction of traditional specialities guaranteed; 
(m)  trade marks whic h consist of, or reproduce in their essential elements, an earlier plant variety 
denomination registered in accordance with Union legislation or national law, or international 
agreements to whic h the Union or the Member State concer ned is a party, providing for prot ection of 
plant variety rights, and whic h are in respect of plant varieties of the same or closely relat ed species.’.  
(10) Article 8 is amended as follows: 
(a)  the following paragraph is inser ted: 
‘4a. Upon opposition by any person author ised under the relevant law to exercise the rights arising from a 
designation of origin or a geographical indication, the trade mark applied for shall not be registered where 
and to the extent that, pursuant to the Union legislation or national law providing for the prote ction of 
designations of origin or geographical indications: 
(i)  an application for a designation of origin or a geographical indication had already been submitt ed, in 
accordance with Union legislation or national law, prior to the date of application for registration of the 
EU trade mark or the date of the priority claimed for the application, subject to its subsequent 
registration; 
(ii)  that designation of origin or geographical indication confer s the right to prohibit the use of a subsequent 
trade mark.’; 
(b)  paragraph 5 is replaced by the following: 
‘5. Upon opposition by the propr ietor of a register ed earlier trade mark within the meaning of 
paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an 
earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, 
similar to or not similar to those for which the earlier trade mark is registere d, where, in the case of an earlier 
EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, 
the trade mark has a reputation in the Member State concer ned, and where the use without due cause of the 
trade mark applied for would take unfair advantage of, or be detr imental to, the distinctive character or the 
reput e of the earlier trade mark.’. 24.12.2015 L 341/28 Official Jour nal of the European Union EN     (11) Article 9 is replaced by the following: 
‘Article 9 
Rights confer red by an EU trade mark 
1. The registration of an EU trade mark shall confe r on the propr ietor excl usive rights therein. 
2. Without prejudice to the rights of propr ietors acquired before the filing date or the priority date of the EU 
trade mark, the propr ietor of that EU trade mark shall be entitled to prevent all third parties not having his 
consent from using in the course of trade, in relation to goods or services, any sign where: 
(a)  the sign is identical with the EU trade mark and is used in relation to goods or services whic h are identical 
with those for whic h the EU trade mark is registered; 
(b)  the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which 
are identical with, or similar to, the goods or services for which the EU trade mark is register ed, if there exists 
a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of 
association between the sign and the trade mark; 
(c)  the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to 
goods or services which are identical with, similar to or not similar to those for whic h the EU trade mark is 
registere d, where the latte r has a reputation in the Union and where use of that sign without due cause takes 
unfai r advantag e of, or is detr imental to, the distinctive character or the reput e of the EU trade mark. 
3. The following, in particular , may be prohibit ed under paragraph 2: 
(a)  affixing the sign to the goods or to the packag ing thereof; 
(b)  offer ing the goods, putting them on the market, or stoc king them for those purposes under the sign, or 
offer ing or supplying services thereunder; 
(c)  impor ting or expor ting the goods under the sign; 
(d)  using the sign as a trade or compan y name or part of a trade or compan y name; 
(e)  using the sign on business papers and in adver tising; 
(f)  using the sign in compar ative adver tising in a manner that is contrar y to Directive 2006/114/EC of the 
European Parliament and of the Council (*). 
4. Without prejudice to the rights of propr ietors acquired before the filing date or the priority date of the EU 
trade mark, the propr ietor of that EU trade mark shall also be entitled to prevent all third parties from bringing 
goods, in the course of trade, into the Union without being released for free circulation there, where such goods, 
including packag ing, come from third countr ies and bear without author isation a trade mark which is identical 
with the EU trade mark registered in respect of such goods, or whic h cannot be distinguished in its essential 
aspects from that trade mark. 
The entitlement of the propr ietor of an EU trade mark pursuant to the first subparagraph shall lapse if, during the 
proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation 
(EU) No 608/2013 of the European Parliament and of the Council (**) concer ning customs enforcement of 
intellectual proper ty rights, evidence is provided by the declarant or the holder of the goods that the propr ietor of 
the EU trade mark is not entitled to prohibit the placing of the goods on the mark et in the countr y of final 
destination.  
(*) Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concer ning 
misleading and compar ative adver tising (OJ L 376, 27.12.2006, p. 21). 
(**) Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concer ning 
customs enforcement of intellectual proper ty rights and repealing Council Regulation (EC) No 1383/2003 
(OJ L 181, 29.6.2013, p. 15).’. 24.12.2015 L 341/29 Official Jour nal of the European Union EN     (12) The following articles are inser ted: 
‘Article 9a 
Right to prohibit preparatory acts in relation to the use of packaging or other means 
Where the risk exists that the packag ing, labels, tags, secur ity or authenticity features or devices or any other 
means to which the mark is affixed could be used in relation to goods or services and such use would constitute 
an infringe ment of the rights of the propr ietor of an EU trade mark under Article 9(2) and (3), the propr ietor of 
that trade mark shall have the right to prohibit the following acts if carried out in the course of trade: 
(a)  affixing a sign identical with, or similar to, the EU trade mark on packaging, labels, tags, secur ity or 
authenticity features or devices or any other means to whic h the mark may be affixed; 
(b)  offer ing or placing on the market, or stoc king for those purposes, or importing or expor ting, packaging, 
labels, tags, secur ity or authenticity features or devices or any other means to which the mark is affixed. 
Article 9b 
Date from which rights against third parties prevail 
1. The rights conferr ed by an EU trade mark shall prevail against third parties from the date of publication of 
the registration of the trade mark. 
2. Reasonable compen sation may be claimed in respect of acts occur ring after the date of publication of an EU 
trade mark application, where those acts would, after publication of the registration of the trade mark, be 
prohibit ed by virtue of that publication. 
3. A cour t seized of a case shall not decide upon the mer its of that case until the registration has been 
published.’.  
(13) Article 12 is replaced by the following: 
‘Article 12 
Limitation of the effects of an EU trade mark 
1. An EU trade mark shall not entitle the propr ietor to prohibit a third party from using, in the course of 
trade: 
(a)  the name or address of the third party, where that third party is a natural person; 
(b)  signs or indications which are not distinctive or which concer n the kind, quality , quantity , intended purpose, 
value, geographical origin, the time of production of goods or of render ing of the service, or other charact er­
istics of the goods or services; 
(c)  the EU trade mark for the purpose of identifying or refer ring to goods or services as those of the propr ietor 
of that trade mark, in particular , where the use of that trade mark is necessar y to indicate the intende d 
purpose of a product or service, in particular as accessor ies or spare parts. 
2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices 
in industr ial or commercial matters.’ .  
(14) Article 13(1) is replaced by the following: 
‘1. An EU trade mark shall not entitle the propr ietor to prohibit its use in relation to goods whic h have been 
put on the market in the European Economic Area under that trade mark by the propr ietor or with his consent.’. 24.12.2015 L 341/30 Official Jour nal of the European Union EN     (15) The following article is inser ted: 
‘Article 13a 
Inter vening right of the propr ietor of a later registered trade mark as a defen ce in infr ingement 
proceedings 
1. In infringement proceedings, the propr ietor of an EU trade mark shall not be entitled to prohibit the use of 
a later registered EU trade mark where that later trade mark would not be declared invalid pursuant to 
Article 53(1), (3) or (4), 54(1) or (2), or 57(2) of this Regulation. 
2. In infringement proceedings, the propr ietor of an EU trade mark shall not be entitled to prohibit the use of 
a later registere d national trade mark where that later register ed national trade mark would not be declared 
invalid pursuant to Article 8, or Article 9(1) or (2), or 46(3) of Directive (EU) 2015/2436 of the European 
Parliament and of the Council (*). 
3. Where the propr ietor of an EU trade mark is not entitled to prohibit the use of a later registe red trade mark 
pursuant to paragraph 1 or 2, the propr ietor of that later registered trade mark shall not be entitled to prohibit 
the use of that earlier EU trade mark in infringement proceedings.  
(*)Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to 
appro ximate the laws of the Member States relating to trade marks (OJ L 336, 23.12.2015, p. 1)’.  
(16) In Article 15(1), the second subparagraph is replaced by the following: 
‘The following shall also constitut e use within the meaning of the first subparagraph: 
(a)  use of the EU trade mark in a form diffe ring in elements which do not alter the distinctive charact er of the 
mark in the form in which it was register ed, regardless of whether or not the trade mark in the form as used 
is also register ed in the name of the propr ietor; 
(b)  affixing of the EU trade mark to goods or to the packag ing thereof in the Union solely for expor t purposes.’.  
(17) In Article 16(1), the introduct ory sentence is replaced by the following: 
‘1. Unless Articles 17 to 24 provide other wise, an EU trade mark as an object of proper ty shall be dealt with 
in its entirety , and for the whole area of the Union, as a national trade mark registered in the Member State in 
whic h, according to the Register:’.  
(18) Article 17 is amended as follows: 
(a)  paragraph 4 is delet ed; 
(b)  the following paragraphs are inser ted: 
‘5a. An application for registration of a transfer shall contain information to identify the EU trade mark, 
the new propr ietor , the goods and services to whic h the transfer relates, as well as documents duly 
establishing the transfer in accordance with paragraphs 2 and 3. The application may further contain, where 
applicable, information to identify the representative of the new propr ietor. 
5b. The Commission shall adopt implementing acts specifying: 
(a)  the details to be contained in the application for registration of a transfer; 
(b)  the kind of documentation required to establish a transfer , taking account of the agreements given by the 
registered propr ietor and the successor in title; 
(c)  the details of how to process applications for partial transfer s, ensur ing that the goods and services in the 
remaining registration and the new registration do not overlap and that a separate file, including a new 
registration number , is established for the new registration. 24.12.2015 L 341/31 Official Jour nal of the European Union EN     Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2). 
5c. Where the conditions applicable to the registration of a transfer , as laid down in paragraphs 1 to 3, or 
in the implementing acts refer red to in paragraph 5b, are not fulfilled, the Offi ce shall notify the applicant of 
the deficiencies. If the deficien cies are not remedied within a period to be specifi ed by the Office, it shall reject 
the application for registration of the transfer . 
5d. A sing le application for registration of a transfer may be submitted for two or more trade marks, 
provided that the registere d propr ietor and the successor in title are the same in each case. 
5e. Paragraphs 5a to 5d shall also apply to applications for EU trade marks . 
5f. In the case of a partial transfer , any application made by the original propr ietor pending with rega rd to 
the original registration shall be deemed to be pending with regard to the remaining registration and the new 
registration. Where such application is subject to the payment of fees and those fees have been paid by the 
original propr ietor, the new propr ietor shall not be liable to pay any additional fees with rega rd to such 
application.’.  
(19) Article 18 is replaced by the following: 
‘Article 18 
Transf er of a trade mark registered in the name of an agent 
1. Where an EU trade mark is register ed in the name of the agent or representative of a person who is the 
propr ietor of that trade mark, without the propr ietor's author isation, the latter shall be entitled to demand the 
assignment of the EU trade mark in his favour , unless such agent or representative justif ies his action. 
2. The propr ietor may submit a request for assignment pursuant to paragraph 1 of this Article to the 
following: 
(a)  the Offi ce, pursuant to Article 53(1)(b), inste ad of an application for a declaration of invalidity ; 
(b)  a European Union trade mark cour t (“EU trade mark cour t”) as refer red to in Article 95, instead of a 
countercl aim for a declaration of invalidity based on Article 100(1).’.  
(20) Article 19 is amended as follows: 
(a)  paragraph 2 is replaced by the following: 
‘2. At the request of one of the parties, the rights referred to in paragraph 1 or the transfer of those rights 
shall be entered in the Regist er and published.’; 
(b)  the following paragraph is added: 
‘3. An entr y in the Register effected pursuant to paragraph 2 shall be cancelled or modified at the request 
of one of the parties.’.  
(21) In Article 20, the following paragraph is added: 
‘4. An entr y in the Register effected pursuant to paragraph 3 shall be cancelled or modifi ed at the request of 
one of the parties.’.  
(22) In Article 22, the following paragraph is added: 
‘6. An entr y in the Register effected pursuant to paragraph 5 shall be cancelled or modifi ed at the request of 
one of the parties.’. 24.12.2015 L 341/32 Official Jour nal of the European Union EN     (23) The following article is inser ted: 
‘Article 22a 
Procedure for enter ing licences and other rights in the Register 
1. Article 17(5a) and (5b) and the rules adopt ed pursuant to it, and Article 17(5d) shall apply mutatis mutandis 
to the registration of a right in rem or transfer of a right in rem as refer red to in Article 19(2), the levy of 
executi on as referred to in Article 20(3), the involvement in insolvency proceedings as refer red to in Article 21(3), 
as well as to the registration of a licence or transfer of a licence as refer red to in Article 22(5), subject to the 
following: 
(a)  the requirement relating to the identification of goods and services to which the transfer relates shall not 
apply in respect of a request for registration of a right in rem, of a levy of execut ion or of insolvency 
proceedings; 
(b)  the requirement relating to the documents proving the transfer shall not apply where the request is made by 
the propr ietor of the EU trade mark. 
2. The application for registration of the rights referred to in paragraph 1 shall not be deemed to have been 
filed until the required fee has been paid. 
3. The application for registration of a licence may contain a request to record a licence in the Regist er as one 
or more of the following: 
(a)  an exclusive licence; 
(b)  a sub-licence in the event that the licence is grant ed by a licensee whose licence is recorded in the Regist er; 
(c)  a licence limited to only part of the goods or services for which the mark is registered; 
(d)  a licence limited to part of the Union; 
(e)  a temporar y licence. 
Where a request is made to record the licence as a licence listed in points (c), (d) and (e) of the first subparagraph, 
the application for registration of a licence shall indicate the goods and services, the part of the Union and the 
time period for whic h the licence is grant ed. 
4. Where the conditions applicable to registration, as laid down in Articles 19 to 22, paragraphs 1 and 3 of 
this Article, and in the other applicable rules adopt ed pursuant to this Regulation, are not fulfilled, the Offi ce 
shall notify the applicant of the defici ency . If the deficienc y is not correcte d within a period specified by the 
Offi ce, it shall reject the application for registration. 
5. Paragraphs 1 and 3 shall apply mutatis mutandis to applications for EU trade marks .’.  
(24) The following article is inser ted: 
‘Article 24a 
Procedure for cancelling or modifying the entr y in the Register of licences and other rights 
1. A registration effected under Article 22a(1) shall be cancelled or modifi ed at the request of one of the 
persons concer ned. 
2. The application shall contain the registration number of the EU trade mark concer ned and the particulars of 
the right for which registration is requested to be cancelled or modifi ed. 24.12.2015 L 341/33 Official Jour nal of the European Union EN     3. The application for cancellation of a licence, a right in rem or an enforcement measure shall not be deemed 
to have been filed until the required fee has been paid. 
4. The application shall be accompanied by documents showing that the register ed right no long er exists or 
that the licensee or the holder of another right consents to the cancellation or modification of the registration. 
5. Where the requirements for cancellation or modification of the registration are not satisfi ed, the Offi ce shall 
notify the applicant of the deficiency . If the deficiency is not corrected within a period to be specifi ed by the 
Offi ce, it shall reject the application for cancellation or modifi cation of the registration. 
6. Paragraphs 1 to 5 of this Article shall apply mutatis mutandis to entr ies made in the files pursuant to 
Article 22a(5).’.  
(25) Article 25 is replaced by the following: 
‘Article 25 
Filing of applications 
1. An application for an EU trade mark shall be filed at the Office. 
2. The Offi ce shall issue to the applicant, without dela y, a receipt which shall include at least the file number , a 
representation, descr iption or other identif ication of the mark, the nature and the number of the documents and 
the date of their receip t. That receipt may be issued by electronic means.’.  
(26) Article 26 is amended as follows: 
(a)  in paragraph 1, point (d) is replaced by the following: 
‘(d)  a representation of the mark, which satisfi es the requirements set out in Article 4(b).’; 
(b)  paragraphs 2 and 3 are replaced by the following: 
‘2. The application for an EU trade mark shall be subject to the payment of the application fee covering 
one class of goods or services and, where appropr iate, of one or more class fees for each class of goods and 
services excee ding the first class and, where applicable, the search fee. 
3. In addition to the requirements refer red to in paragraphs 1 and 2, an application for an EU trade mark 
shall comply with the formal requirements laid down in this Regulation and in the implementing acts adopt ed 
pursuant to it. If those conditions provide for the trade mark to be represent ed electronically , the Executive 
Director may determine the formats and maximum size of such an electronic file.’; 
(c)  the following paragraph is added: 
‘4. The Commission shall adopt implementing acts specifying the details to be contained in the application. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(27) Article 27 is replaced by the following: 
‘Article 27 
Date of filing 
The date of filing of an EU trade mark application shall be the date on which the documents containing the 
information specifi ed in Article 26(1) are filed with the Office by the applicant, subject to payment of the 
application fee within one month of filing those documents.’. 24.12.2015 L 341/34 Official Jour nal of the European Union EN     (28) Article 28 is replaced by the following: 
‘Article 28 
Designation and classif ication of goods and services 
1. Goods and services in respect of which trade mark registration is applied for shall be classif ied in 
conf ormity with the syste m of classification established by the Nice Agreement Concer ning the International 
Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (“the Nice 
Classification”). 
2. The goods and services for whic h the protection of the trade mark is sought shall be identif ied by the 
applicant with suffi cient clarity and precision to enable the compet ent author ities and economic operat ors, on 
that sole basis, to determine the exte nt of the protection sought. 
3. For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classifi ­
cation or other general term s may be used, provided that they compl y with the requisit e standards of clarity and 
precision set out in this Article. 
4. The Office shall reject an application in respect of indications or terms which are unclear or imprecise, 
where the applicant does not suggest an accept able wording within a period set by the Office to that effect. 
5. The use of general term s, including the general indications of the class headings of the Nice Classif ication, 
shall be interpr eted as including all the goods or services clearly covered by the literal meaning of the indication 
or term. The use of such term s or indications shall not be interpreted as comprising a claim to goods or services 
whic h cannot be so underst ood. 
6. Where the applicant requests registration for more than one class, the applicant shall group the goods and 
services according to the classes of the Nice Classif ication, each group being preceded by the number of the class 
to which that group of goods or services belongs, and shall present them in the order of the classes. 
7. Goods and services shall not be regar ded as being similar to each other on the ground that they appear in 
the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from 
each other on the ground that they appear in different classes under the Nice Classification. 
8. Propr ietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire 
heading of a Nice class may declare that their intenti on on the date of filing had been to seek prote ction in 
respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided 
that the goods or services so designat ed are included in the alphabetical list for that class in the edition of the 
Nice Classif ication in force at the date of filing. 
The declaration shall be filed at the Offi ce by 24 Sept ember 2016, and shall indicate, in a clear , precise and 
specific manner , the goods and services, other than those clearly covered by the literal meaning of the indications 
of the class heading, originally covered by the propr ietor's intention. The Office shall take appropr iate measures 
to amend the Registe r according ly. The possibility to mak e a declaration in accordance with the first 
subparagraph of this paragraph shall be without prejudice to the application of Article 15, Article 42(2), 
Article 51(1)(a), and Article 57(2). 
EU trade marks for which no declaration is filed within the period refer red to in the second subparagraph shall be 
deemed to extend, as from the expir y of that period, only to goods or services clearly covered by the literal 
meaning of the indications included in the heading of the relevant class. 24.12.2015 L 341/35 Official Jour nal of the European Union EN     9. Where the register is amended, the excl usive rights conferred by the EU trade mark under Article 9 shall not 
prevent a third party from continuing to use a trade mark in relation to goods or services where and to the 
extent that the use of the trade mark for those goods or services: 
(a)  commenced before the register was amended; and 
(b)  did not infringe the propr ietor's rights based on the literal meaning of the record of the goods and services in 
the register at that time. 
In addition, the amendment of the list of goods or services recorded in the register shall not give the propr ietor 
of the EU trade mark the right to oppose or to apply for a declaration of invalidity of a later trade mark where 
and to the exte nt that : 
(a)  the later trade mark was either in use, or an application had been made to register the trade mark, for goods 
or services before the register was amended; and 
(b)  the use of the trade mark in relation to those goods or services did not infringe , or would not have infringed, 
the propr ietor's rights based on the literal meaning of the record of the goods and services in the register at 
that time.’.  
(29) Article 29 is amended as follows: 
(a)  in paragraph 5, the following sentences are added: 
‘The Executive Director shall, where necessar y, request the Commission to consider enquir ing as to whether a 
State within the meaning of the first sentence accords that reciprocal treatment. If the Commission 
determi nes that reciprocal treatment in accordance with the first sente nce is accorded, it shall publish a 
communication to that effect in the Official Journal of the European Union.’; 
(b)  the following paragraphs are added: 
‘6. Paragraph 5 shall apply from the date of publication in the Official Journal of the European Union of the 
communication determining that reciprocal treatment is accorded, unless the communication states an earlier 
date from whic h it is applicable. It shall cease to apply from the date of publication in the Official Journal of 
the European Union of a communication of the Commission to the effect that reciprocal treatment is no long er 
accorded, unless the communication states an earlier date from whic h it is applicable. 
7. Communications as refer red to in paragraphs 5 and 6 shall also be published in the Official Jour nal of 
the Offi ce.’.  
(30) Article 30 is replaced by the following: 
‘Article 30 
Claiming priority 
1. Priority claims shall be filed together with the EU trade mark application and shall include the date , number 
and countr y of the previous application. The documentation in suppor t of priority claims shall be filed within 
three months of the filing date. 
2. The Commission shall adop t implementing acts specifying the kind of documentation to be filed for 
claiming the priority of a previous application in accordance with paragraph 1 of this Article. Those 
implementing acts shall be adopt ed in accordance with the examination procedure refer red to in Article 163(2). 
3. The Executive Direct or may deter mine that the documentation to be provided by the applicant in suppor t of 
the priority claim may consist of less than what is required under the specifications adopt ed in accordance with 
paragraph 2, provided that the information required is available to the Office from other sources.’. 24.12.2015 L 341/36 Official Jour nal of the European Union EN     (31) Article 33 is amended as follows: 
(a)  in paragraph 1, the following sentence is added: 
‘The priority claim shall be filed together with the EU trade mark application.’; 
(b)  paragraph 2 is replaced by the following: 
‘2. An applicant who wishes to claim priority pursuant to paragraph 1 shall file evidence of the displa y of 
goods or services under the mark applied for within three months of the filing date.’; 
(c)  the following paragraph is added: 
‘4. The Commission shall adopt implementing acts specifying the type and details of evidence to be filed 
for claiming an exhibition priority in accordance with paragraph 2 of this Article. Those implementing acts 
shall be adopt ed in accordance with the examination procedure referred to in Article 163(2).’.  
(32) Article 34 is amended as follows: 
(a)  the following paragraph is inser ted: 
‘1a. Senior ity claims shall either be filed together with the EU trade mark application or within two 
months of the filing date of the application, and shall include the Member State or Member State s in or for 
which the mark is registered, the number and the filing date of the relevant registration, and the goods and 
services for which the mark is registe red. Where the senior ity of one or more registered earlier trade marks is 
claimed in the application, the documentation in suppor t of the senior ity claim shall be filed within three 
months of the filing date. Where the applicant wishes to claim the senior ity subsequent to the filing of the 
application, the documentation in suppor t of the senior ity claim shall be submitted to the Office within three 
months of receipt of the senior ity claim.’; 
(b)  paragraph 3 is replaced by the following: 
‘3. The senior ity claimed for the EU trade mark shall lapse where the earlier trade mark the senior ity of 
which is claimed is declared to be invalid or revok ed. Where the earlier trade mark is revok ed, the senior ity 
shall lapse provided that the revocati on takes effect prior to the filing date or priority date of that EU trade 
mark. ’; 
(c)  the following paragraphs are added: 
‘4. The Office shall inform the Benelux Offi ce for Intellectual Proper ty or the central industr ial proper ty 
office of the Member State concer ned of the effective claiming of senior ity. 
5. The Commission shall adopt implementing acts specifying the kind of documentation to be filed for 
claiming the senior ity of a national trade mark or a trade mark registered under international agreements 
having effect in a Member State in accordance with paragraph 1a of this Article. Those imple menting acts 
shall be adopt ed in accordance with the examination procedure referred to in Article 163(2). 
6. The Executive Direct or may determine that the documentation to be provided by the applicant in 
suppor t of the senior ity claim may consist of less than what is required under the specif ications adopt ed in 
accordance with paragraph 5, provided that the information required is available to the Office from other 
sources.’.  
(33) Article 35 is amended as follows: 
(a)  paragraph 2 is replaced by the following: 
‘2. Senior ity claims filed pursuant to paragraph 1 of this Article shall include the registration number of 
the EU trade mark, the name and address of its propr ietor, the Member State or Member States in or for 
which the earlier mark is registered, the number and the filing date of the relevant registration, the goods and 
services for whic h the mark is registered and those in respect of which senior ity is claimed, and suppor ting 
documentation as provided for in the rules adopt ed pursuant to Article 34(5).’; 24.12.2015 L 341/37 Official Jour nal of the European Union EN     (b)  the following paragraphs are added: 
‘3. If the requirements governing the claiming of senior ity are not fulfilled , the Offi ce shall communicate 
the deficiency to the propr ietor of the EU trade mark. If the deficiency is not remedied within a period to be 
specifi ed by the Offi ce, the Office shall reject the claim. 
4. Article 34(2), (3), (4) and (6) shall apply .’.  
(34) Article 36 is amended as follows: 
(a)  point (b) of paragraph 1 is replaced by the following: 
‘(b)  the EU trade mark application compl ies with the conditions and requirements refer red to in 
Article 26(3).’; 
(b)  in paragraph 2 the words ‘within the prescr ibed period’ are replaced by ‘within two months of the receipt of 
the notifi cation’; 
(c)  in paragraph 5, the following sentences are added: 
‘In the absence of other criteria to deter mine whic h classes are intende d to be covered, the Offi ce shall take 
the classes in the order of the classificat ion. The application shall be deemed to have been withdra wn with 
regard to those classes for whic h the class fees have not been paid or have not been paid in full.’; 
(d)  the following paragraph is added: 
‘8. Where failure to satisfy the requirements refer red to in paragraph 1(b) and (c) concer ns only some of 
the goods or services, the Office shall refuse the application, or the right of priority or the right of senior ity 
shall be lost, only in so far as those goods and services are concer ned.’.  
(35) Article 37 is amended as follows: 
(a)  paragraph 2 is delet ed; 
(b)  paragraph 3 is replaced by the following: 
‘(3) The application shall not be refused before the applicant has been allowed the oppor tunity to withdraw 
or amend the application or to submit his obser vations. To this effect, the Office shall notify the applicant of 
the grounds for refusing registration and shall specify a period within whic h he may withdraw or amend the 
application or submit his obser vations. Where the applicant fails to overcome the grounds for refusing 
registration, the Offi ce shall refuse registration in whole or in part.’.  
(36) Article 38 is replaced by the following: 
‘Article 38 
Search repor t 
1. The Office shall, at the request of the applicant for the EU trade mark when filing the application, draw up 
a European Union search repor t (“EU search repor t”) citing those earlier EU trade marks or EU trade mark 
applications disco vered which may be invoked under Article 8 against the registration of the EU trade mark 
applied for. 
2. Where, at the time of filing an EU trade mark application, the applicant requests that a searc h repor t be 
prepared by the central industr ial proper ty offices of the Member States and where the appropr iate searc h fee has 
been paid within the time limit for the payment of the filing fee, the Office shall transmit without dela y a copy of 
the EU trade mark application to the central industr ial proper ty office of each Member State whic h has informed 
the Office of its decision to operate a search in its own register of trade marks in respect of EU trade mark 
applications. 24.12.2015 L 341/38 Official Jour nal of the European Union EN     3. Each of the central industr ial proper ty offices of the Member State s refer red to in paragraph 2 of this Article 
shall communicate a search repor t whic h shall either cite any earlier national trade marks , national trade mark 
applications or trade marks register ed under internati onal agreements, having effect in the Member State or 
Member States concer ned, which have been disco vered and whic h may be invoked under Article 8 again st the 
registration of the EU trade mark applied for, or state that the search has revealed no such rights. 
4. The Office, after consulting the Management Board provided for in Article 124 (“the Management Board”), 
shall establish the cont ents and modalities for the repor ts. 
5. The Office shall pay an amount to each central industr ial proper ty office for each search repor t provided by 
the office in accordance with paragraph 3. The amount, whic h shall be the same for each office , shall be fixed by 
the Budget Committee by means of a decision adop ted by a majority of three quar ters of the representatives of 
the Member States. 
6. The Office shall transmit to the applicant for the EU trade mark the EU search repor t requested and any 
request ed national searc h repor ts received. 
7. Upon publication of the EU trade mark application, the Offi ce shall inform the propr ietors of any earlier EU 
trade marks , or EU trade mark applications cited in the EU searc h repor t of the publication of the EU trade mark 
application. The latter shall apply irrespective of whether the applicant has requeste d to receive the EU searc h 
repor t, unless the propr ietor of an earlier registration or application requests not to receive the notifi cation.’.  
(37) Article 39 is amended as follows: 
(a)  paragraph 1 is replaced by the following: 
‘1. If the conditions whic h the application for an EU trade mark is required to satisfy have been fulfilled, 
the application shall be published for the purposes of Article 41 to the exte nt that it has not been refused 
pursuant to Article 37. The publication of the application shall be without prejudice to information already 
made available to the public other wise in accordance with this Regulation or acts adopt ed pursuant to this 
Regulation.’; 
(b)  the following paragraphs are added: 
‘3. Where the publication of the application contains an error attributable to the Offi ce, the Offi ce shall of 
its own motion or at the request of the applicant correct the error and publish the correction. 
The rules adopt ed pursuant to Article 43(3) shall apply mutatis mutandis where a correction is requested by 
the applicant. 
4. Article 41(2) shall apply also where the correction concer ns the list of goods or services or the represen ­
tation of the mark. 
5. The Commission shall adop t implementing acts laying down the details to be contained in the 
publication of the application. Those imple menting acts shall be adop ted in accordance with the examination 
procedure refer red to in Article 163(2).’.  
(38) Article 40 is replaced by the following: 
‘Article 40 
Obser vations by third parties 
1. Any natural or legal person and any group or body representing manufa cturers, producers, suppliers of 
services, traders or consumers may submit to the Offi ce written obser vations, explaining on which grounds, 
under Articles 5 and 7, the trade mark should not be register ed ex officio. 24.12.2015 L 341/39 Official Jour nal of the European Union EN     Persons and groups or bodies as referred to in the first subparagraph shall not be parties to the proceedings 
before the Office. 
2. Third party obser vations shall be submitted before the end of the opposition period or, where an opposition 
against the trade mark has been filed, before the final decision on the opposition is taken. 
3. The submission referred to in paragraph 1 shall be without prejudice to the right of the Office to re-open 
the examination of absolute grounds on its own initiative at any time before registration, where appropr iate. 
4. The obser vations refer red to in paragraph 1 shall be communicated to the applicant who may comment on 
them.’ .  
(39) Article 41 is amended as follows: 
(a)  in paragraph 1, the following point is added: 
‘(d)  by the persons author ised under the relevant Union legislation or national law to exer cise the rights 
refer red to in Article 8(4a).’; 
(b)  paragraph 3 is replaced by the following: 
‘3. Opposition shall be expressed in writing, and shall specify the grounds on which it is made. It shall not 
be considered as duly entered until the opposition fee has been paid.’; 
(c)  the following paragraph is added: 
‘4. Within a period to be fixed by the Offi ce, the opponent may submit facts, evidence and arguments in 
suppor t of his case.’.  
(40) In Article 42, paragraph 2 is replaced by the following: 
‘2. If the applicant so requests, the propr ietor of an earlier EU trade mark who has given notice of opposition 
shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU 
trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with 
the goods or services in respect of which it is registere d and whic h he cites as justification for his opposition, or 
that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for 
not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EU 
trade mark has been used in relation to only part of the goods or services for whic h it is register ed it shall, for 
the purposes of the examination of the opposition, be deemed to be registe red in respect only of that part of the 
goods or services.’.  
(41) The following article is inser ted: 
‘Article 42a 
Delegation of powers 
The Commission shall be empowered to adop t delegat ed acts in accordance with Article 163a specifying the 
details of the procedure for filing and examining an opposition set out in Articles 41 and 42.’.  
(42) In Article 43, the following paragraph is added: 
‘3. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying 
the details of the procedure governing the amendment of the application.’ . 24.12.2015 L 341/40 Official Jour nal of the European Union EN     (43) Article 44 is amended as follows: 
(a)  in paragraph 2, point (b) is replaced by the following: 
‘(b)  before the date of filing refer red to in Article 27 has been accorded by the Office and during the 
opposition period provided for in Article 41(1).’; 
(b)  paragraph 3 is delet ed; 
(c)  the following paragraph is inser ted: 
‘4a. Where the Office find s that the requirements laid down in paragraph 1 and in the rules adopt ed 
pursuant to paragraph 9(a) are not fulfilled, it shall invit e the applicant to remedy the deficien cies within a 
period to be specified by the Office. If the deficien cies are not remedied before the time limit expires, the 
Offi ce shall refuse the declaration of division.’; 
(d)  the following paragraphs are added: 
‘8. Where the declaration of division relat es to an application which has already been published pursuant 
to Article 39, the division shall be published. The divisional application shall be published. The publication 
shall not open a new period for the filing of oppositions. 
9. The Commission shall adopt implementing acts specifying: 
(a)  the details to be contained in a declaration of the division of an application made pursuant to 
paragraph 1; 
(b)  the details as to how to process a declaration of the division of an application, ensur ing that a separate 
file, including a new application number , is established for the divisional application; 
(c)  the details to be contained in the publication of the divisional application pursuant to paragraph 8. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(44) Article 45 is replaced by the following: 
‘Article 45 
Registration 
1. Where an application meets the requirements set out in this Regulation and where no notice of opposition 
has been given within the period referred to in Article 41(1) or where any opposition entered has been finally 
disposed of by withdrawal, rejection or other disposition, the trade mark and the particulars refer red to in 
Article 87(2) shall be recorded in the Registe r. The registration shall be published. 
2. The Offi ce shall issue a certificate of registration. That certificate may be issued by electronic means. The 
Offi ce shall provide certified or uncer tified copies of the certificate subject to the payment of a fee, where those 
copies are issued other than by electronic means. 
3. The Commission shall adopt implementing acts specifying the details to be contained in and the form of the 
certificate of registration referred to in paragraph 2 of this Article. Those implementing acts shall be adopt ed in 
accordance with the examination procedure referred to in Article 163(2).’.  
(45) Article 47 is replaced by the following: 
‘Article 47 
Renewal 
1. Registration of the EU trade mark shall be renewed at the request of the propr ietor of the EU trade mark or 
any person expressly author ised by him, provided that the fees have been paid. 24.12.2015 L 341/41 Official Jour nal of the European Union EN     2. The Office shall inform the propr ietor of the EU trade mark, and any person having a register ed right in 
respect of the EU trade mark, of the expir y of the registration at least six months before the said expir y. Failure to 
give such information shall not involve the responsibility of the Office and shall not affect the expir y of the 
registration. 
3. The request for renewal shall be submitted in the six-month period prior to the expir y of the registration. 
The basic fee for the renewal, and where appropr iate, one or more class fees for each class of goods or services 
exceed ing the first one shall also be paid within this period. Failing this, the request may be submitted and the 
fees paid within a further period of six months following the expir y of registration, provided that an additional 
fee for late payment of the renewal fee or late submission of the request for renewal is paid within this further 
period. 
4. The request for renewal shall include: 
(a)  the name of the person requesting renewal; 
(b)  the registration number of the EU trade mark to be renewed; 
(c)  if the renewal is requested for only part of the registered goods and services, an indication of those classes or 
those goods and services for which renewal is request ed, or those classes or those goods and services for 
which renewal is not requested, grouped according to the classes of the Nice classif ication, each group being 
preceded by the number of the class of that classif ication to which that group of goods or services belongs, 
and present ed in the order of classes of that classification. 
If the payment referred to in paragraph 3 is made, it shall be deemed to constitute a request for renewal provided 
that it contains all necessar y indications to establish the purpose of the payment. 
5. Where the request is submitted or the fees paid in respect of only some of the goods or services for which 
the EU trade mark is registere d, registration shall be renewed for those goods or services only . Where the fees 
paid are insuff icient to cover all the classes of goods and services for which renewal is requeste d, registration shall 
be renewed if it is clear which class or classes are to be covered. In the absence of other criteria, the Office shall 
take the classes into account in the order of classificat ion. 
6. Renewal shall take effect from the day following the date on which the existing registration expires. The 
renewal shall be registered. 
7. Where the request for renewal is filed within the periods provided for in paragraph 3, but the other 
conditions governing renewal provided for in this Article are not satisfied, the Office shall inform the applicant of 
the defici encies found. 
8. Where a request for renewal is not submitte d or is submitted after the expir y of the period provided for in 
paragraph 3, or where the fees are not paid or are paid only after the period in question has expired, or where 
the deficiencies refer red to in paragraph 7 are not remedied within that period, the Offi ce shall determine that the 
registration has expired and shall notify the propr ietor of the EU trade mark according ly. Where the determination 
has become final, the Offi ce shall cancel the mark from the register . The cancellation shall take effect from the 
day following the date on whic h the existing registration expired. Where the renewal fees have been paid but the 
registration is not renewed, those fees shall be refunded. 
9. A sing le request for renewal may be submitted for two or more marks, upon payment of the required fees 
for each of the marks , provided that the propr ietors or the representatives are the same in each case.’.  
(46) Article 48 is amended as follows: 
(a)  paragraph 3 is replaced by the following: 
‘3. The request for alter ation shall include the element of the mark to be altered and that element in its 
altered version. 24.12.2015 L 341/42 Official Jour nal of the European Union EN     The Commission shall adopt implementing acts specifying the details to be contained in the request for 
altera tion. Those implementing acts shall be adopt ed in accordance with the examination procedure refer red 
to in Article 163(2).’; 
(b)  the following paragraphs are added: 
‘4. The request shall be deemed not to have been filed until the required fee has been paid. If the fee has 
not been paid or has not been paid in full, the Office shall inform the applicant according ly. A sing le request 
may be made for the alteration of the same element in two or more registrations of the same propr ietor. The 
required fee shall be paid in respect of each registration to be altered. If the requirements governing the 
altera tion of the registration are not fulfilled, the Office shall communicate the deficiency to the applicant. If 
the deficiency is not remedied within a period to be specifi ed by the Office, the Office shall reject the request. 
5. The publication of the registration of the alter ation shall contain a representation of the EU trade mark 
as altered. Third parties whose rights may be affected by the alter ation may challenge the registration thereof 
within the period of three months following publication. Articles 41 and 42, and rules adopt ed pursuant to 
Article 42a shall apply to the publication of the registration of the altera tion.’.  
(47) The following article is inser ted: 
‘Article 48a 
Change of the name or address 
1. A change of the name or address of the propr ietor of the EU trade mark which is not an alter ation of the 
EU trade mark pursuant to Article 48(2) and which is not the consequence of a whole or partial transfer of the 
EU trade mark shall, at the request of the propr ietor, be recorded in the Register . 
The Commission shall adop t implementing acts specifying the details to be contained in a request for the change 
of name or address pursuant to the first subparagraph of this paragraph. Those implementing acts shall be 
adopt ed in accordance with the examination procedure refer red to in Article 163(2). 
2. A sing le request may be made for the change of the name or address in respect of two or more registrations 
of the same propr ietor . 
3. If the requirements governing the recording of a change are not fulfilled , the Office shall communicate the 
deficien cy to the propr ietor of the EU trade mark. If the deficiency is not remedied within a period to be specifi ed 
by the Office, the Office shall reject the request. 
4. Paragraphs 1 to 3 shall also apply to a change of the name or address of the registere d representative. 
5. Paragraphs 1 to 4 shall apply to applications for EU trade marks . The change shall be recorded in the files 
kept by the Offi ce on the EU trade mark application.’.  
(48) Article 49 is amended as follows: 
(a)  paragraph 3 is replaced by the following: 
‘3. If the requirements laid down in paragraph 1 and pursuant to the implementing acts referred to in 
paragraph 8 are not fulfilled, or the list of goods and services which form the divisional registration overlap 
with the goods and services which remain in the original registration, the Office shall invit e the propr ietor of 
the EU trade mark to remedy the deficien cies within such period as it may specify . If the deficiencies are not 
remedied before the time period expires, the Office shall refuse the declaration of division.’; 24.12.2015 L 341/43 Official Jour nal of the European Union EN     (b)  the following paragraph is added: 
‘8. The Commission shall adopt implementing acts specifying: 
(a)  the details to be contained in a declaration of the division of a registration pursuant to paragraph 1; 
(b)  the details as how to process a declaration of the division of a registration, ensur ing that a separate file, 
including a new registration number , is established for the divisional registration. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(49) Article 50 is amended as follows: 
(a)  paragraphs 2 and 3 are replaced by the following: 
‘2. The surrender shall be declared to the Office in writing by the propr ietor of the trade mark. It shall not 
have effect until it has been entered in the Register . The validity of the surrender of an EU trade mark which 
is declared to the Offi ce subsequent to the submission of an application for revocation of that trade mark 
pursuant to Article 56(1) shall be conditional upon the final rejection or withdra wal of the application for 
revocati on. 
3. Surrender shall be entered only with the agreement of the propr ietor of a right relating to the EU trade 
mark and whic h is entered in the Regist er. If a licence has been registe red, surrender shall be entered in the 
Registe r only if the propr ietor of the EU trade mark proves that he has informed the licensee of his intenti on 
to surrender . The entr y of the surrender shall be made on expir y of the three-month period after the date on 
which the propr ietor satisfies the Office that he has informed the licensee of his intenti on to surrender , or 
before the expir y of that period, as soon as he proves that the licensee has given his consent.’; 
(b)  the following paragraphs are added: 
‘4. If the requirements governing surrender are not fulfilled, the Offi ce shall communicat e the deficien cies 
to the declarant. If the deficiencies are not remedied within a period to be specified by the Offi ce, the Office 
shall reject the entr y of surrender in the Regist er. 
5. The Commission shall adop t implementing acts specifying the details to be contained in a declaration of 
surrender pursuant to paragraph 2 of this Article and the kind of documentation required to establish a third 
party's agreement pursuant to paragraph 3 of this Article. Those implementing acts shall be adopt ed in 
accordance with the examination procedure refer red to in Article 163(2).’.  
(50) In Article 53, paragraph 1 is amended as follows: 
(a)  the following point is added: 
‘(d)  where there is an earlier designation of origin or geographical indication as refer red to in Article 8(4a) 
and the conditions set out in that paragraph are fulfilled.’; 
(b)  the following subparagraph is added: 
‘All the conditions referred to in the first subparagraph shall be fulfilled at the filing date or the priority date 
of the EU trade mark. ’.  
(51) In Article 54, paragraphs 1 and 2 are replaced by the following: 
‘1. Where the propr ietor of an EU trade mark has acquiesced, for a period of five successive years, in the use 
of a later EU trade mark in the Union while being awar e of such use, he shall no longer be entitled on the basis of 
the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or 
services for whic h the later trade mark has been used, unless registration of the later EU trade mark was applied 
for in bad faith. 24.12.2015 L 341/44 Official Jour nal of the European Union EN     2. Where the propr ietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier 
sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later EU trade 
mark in the Member State in which the earlier trade mark or the other earlier sign is protect ed while being aware 
of such use, he shall no long er be entitled on the basis of the earlier trade mark or of the other earlier sign to 
apply for a declaration that the later trade mark is inva lid in respect of the goods or services for which the later 
trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.’.  
(52) Article 56 is amended as follows: 
(a)  in paragraph 1, point (c), the phrase ‘under the law of the Member State concer ned’ is replaced by the phrase 
‘under Union legislation or the law of the Member State concer ned’; 
(b)  paragraph 3 is replaced by the following: 
‘3. An application for revocati on or for a declaration of inva lidity shall be inadmissible where an 
application relating to the same subject matt er and cause of action, and involving the same parties, has been 
adjudicated on its mer its, either by the Office or by an EU trade mark cour t as refer red to in Article 95, and 
the decision of the Office or that cour t on that application has acquired the author ity of a final decision.’.  
(53) In Article 57, paragraph 2 is replaced by the following: 
‘2. If the propr ietor of the EU trade mark so requests, the propr ietor of an earlier EU trade mark, being a party 
to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the 
application for a declaration of invalidity , the earlier EU trade mark has been put to genuine use in the Union in 
connection with the goods or services in respect of which it is registered and whic h the propr ietor of that earlier 
trade mark cites as justif ication for his application, or that there are proper reasons for non-use, provided the 
earlier EU trade mark has at that date been registe red for not less than five years. If, at the date on whic h the EU 
trade mark application was filed or at the priority date of the EU trade mark application, the earlier EU trade 
mark had been registered for not less than five years, the propr ietor of the earlier EU trade mark shall furnish 
proof that, in addition, the conditions set out in Article 42(2) were satisfied at that date. In the absence of proof 
to this effect, the application for a declaration of inva lidity shall be reject ed. If the earlier EU trade mark has been 
used only in relation to part of the goods or services for which it is register ed, it shall, for the purpose of the 
examination of the application for a declaration of invalidity , be deemed to be registere d in respect of that part of 
the goods or services only .’.  
(54) The following article is inser ted: 
‘Article 57a 
Delegation of powers 
The Commission shall be empowered to adop t delegat ed acts in accordance with Article 163a specifying the 
details of the procedures governing the revocati on and declaration of inva lidity of an EU trade mark as refer red to 
in Articles 56 and 57, as well as the transfer of an EU trade mark register ed in the name of an agent as refer red 
to in Article 18.’.  
(55) In Article 58, paragraph 1 is replaced by the following: 
‘1. An appeal shall lie from decisions of any of the decision-making instances of the Office liste d in points (a) 
to (d) of Article 130, and, where appropr iate, point (f) of that Article. Those decisions shall take effect only as 
from the date of expiration of the appeal period referred to in Article 60. The filing of the appeal shall have 
suspensive effect.’.  
(56) Article 60 is replaced by the following: 
‘Article 60 
Time limit and form of appeal 
1. Notice of appeal shall be filed in writing at the Offi ce within two months of the date of notific ation of the 
decision. The notice shall be deemed to have been filed only when the fee for appeal has been paid. It shall be 
filed in the languag e of the proceedings in whic h the decision subject to appeal was taken. Within four months of 
the date of notifi cation of the decision, a written statement setting out the grounds of appeal shall be filed. 24.12.2015 L 341/45 Official Jour nal of the European Union EN     2. In inter partes proceedings, the defendant may, in his response, seek a decision annulling or alteri ng the 
conte sted decision on a point not raised in the appeal. Such submissions shall cease to have effect should the 
appellant discontinue the proceedings.’ .  
(57) Article 62 is delet ed.  
(58) In Article 64, paragraph 3 is replaced by the following: 
‘3. The decisions of the Board of Appeal shall take effect only as from the date of expir y of the period refer red 
to in Article 65(5) or, if an action has been brought before the General Cour t within that period, as from the date 
of dismissal of such action or of any appeal filed with the Cour t of Justice again st the decision of the General 
Cour t.’.  
(59) Article 65 is amended as follows: 
(a)  paragraph 1 is replaced by the following: 
‘1. Actions may be brought before the General Cour t against decisions of the Boards of Appeal in relation 
to appeals.’; 
(b)  paragraph 3 is replaced by the following: 
‘3. The General Cour t shall have jurisdiction to annul or to alter the conte sted decision.’; 
(c)  paragraphs 5 and 6 are replaced by the following: 
‘5. The action shall be brought before the General Cour t within two months of the date of notifi cation of 
the decision of the Board of Appeal. 
6. The Office shall take the necessar y measures to compl y with the judgment of the General Cour t or, in 
the event of an appeal against that judgment, the Cour t of Justice.’.  
(60) The following article is inser ted: 
‘Article 65a 
Delegation of powers 
The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying: 
(a)  the formal content of the notice of appeal refer red to in Article 60 and the procedure for the filing and the 
examination of an appeal; 
(b)  the formal cont ent and form of the Board of Appeal's decisions as refer red to in Article 64; 
(c)  the reimbursement of the appeal fee as refer red to in Article 60.’.  
(61) The title of Title VIII is replaced by the following: 
‘SPECIFIC PROVISIONS ON EUR OPEAN UNION COLLECTIVE MARK S AND CERTIFICA TION MARK S’. 24.12.2015 L 341/46 Official Jour nal of the European Union EN     (62) The following section heading is inser ted before Article 66: 
‘SECTION 1 
EU collectiv e marks’.  
(63) In Article 66, paragraph 3 is replaced by the following: 
‘3. Titles I to VII and IX to XIV shall apply to EU collective marks to the exte nt that this section does not 
provide other wise.’.  
(64) Article 67 is amended as follows: 
(a)  paragraph 1 is replaced by the following: 
‘1. An applicant for an EU collective mark shall submit regulations governing its use within two months of 
the date of filing.’; 
(b)  the following paragraph is added: 
‘3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations 
refer red to in paragraph 2 of this Article. Those implementing acts shall be adopt ed in accordance with the 
examination procedure referred to in Article 163(2).’.  
(65) Article 69 is replaced by the following: 
‘Article 69 
Obser vations by third parties 
Where written obser vations on an EU collective mark are submitted to the Office pursuant to Article 40, those 
obser vations may also be based on the particular grounds on which the application for an EU collective mark 
should be refused pursuant to Article 68.’.  
(66) In Article 71, paragraph 3 is replaced by the following: 
‘3. Written obser vations made in accordance with Article 69 may also be submitted with regard to amended 
regulations governing use.’.  
(67) In Title VIII, the following section is added: 
‘SECTION 2 
EU certification marks  
Article 74a 
EU certification marks 
1. An EU certificat ion mark shall be an EU trade mark which is descr ibed as such when the mark is applied 
for and is capable of distinguishing goods or services which are certified by the propr ietor of the mark in respect 
of mater ial, mode of manufact ure of goods or performa nce of services, quality , accuracy or other charact eristics, 
with the excep tion of geographical origin, from goods and services whic h are not so certified. 
2. Any natural or legal person, including institutions, author ities and bodies governed by public law, may 
apply for EU certification marks provided that such person does not carry on a business involving the supply of 
goods or services of the kind certified. 
3. Titles I to VII and IX to XIV shall apply to EU certificat ion marks to the exte nt that this Section does not 
provide other wise. 24.12.2015 L 341/47 Official Jour nal of the European Union EN     Article 74b 
Regulations governing use of the EU certification mark 
1. An applicant for an EU certification mark shall submit regulations governing the use of the certificat ion 
mark within two months of the date of filing. 
2. The regulations governing use shall specify the persons author ised to use the mark, the charact eristics to be 
certified by the mark, how the certifying body is to test those charact eristics and to super vise the use of the mark. 
Those regulations shall also specify the conditions of use of the mark, including sanctions. 
3. The Commission shall adop t implementing acts specifying the details to be contained in the regulations 
refer red to in paragraph 2 of this Article. Those implementing acts shall be adopt ed in accordance with the 
examination procedure refer red to in Article 163(2). 
Article 74c 
Refusal of the application 
1. In addition to the grounds for refusal of an EU trade mark application provided for in Articles 36 and 37, 
an application for an EU certification mark shall be refused where the conditions set out in Articles 74a and 74b 
are not satisfi ed, or where the regulations governing use are contrar y to public policy or to accept ed principles of 
morality . 
2. An application for an EU certification mark shall also be refused if the public is liable to be misled as 
regar ds the character or the significance of the mark, in particular if it is likely to be taken to be something other 
than a certificat ion mark. 
3. An application shall not be refused if the applicant, as a result of an amendment of the regulations 
governing use, meets the requirements of paragraphs 1 and 2. 
Article 74d 
Obser vations by third parties 
Where written obser vations on an EU certification mark are submitted to the Office pursuant to Article 40, those 
obser vations may also be based on the particular grounds on whic h the application for an EU certification mark 
should be refused pursuant to Article 74c. 
Article 74e 
Use of the EU certification mark 
Use of an EU certification mark by any person who has author ity to use it according to the regulations governing 
use refer red to in Article 74b shall satisfy the requirements of this Regulation, provided that the other conditions 
laid down in this Regulation with regar d to the use of EU trade marks are fulfilled. 
Article 74f 
Amendment of the regulations governing use of the mark 
1. The propr ietor of an EU certificat ion mark shall submit to the Offi ce any amended regulations governing 
use. 
2. Amendments shall not be mentioned in the Register where the regulations as amended do not satisfy the 
requirements of Article 74b or involve one of the grounds for refusal refer red to in Article 74c. 24.12.2015 L 341/48 Official Jour nal of the European Union EN     3. Written obser vations in accordance with Article 74d may also be submitted with regar d to amended 
regulations governing use. 
4. For the purposes of this Regulation, amendments to the regulations governing use shall take effect only as 
from the date of entr y of the mention of the amendment in the Registe r. 
Article 74g 
Transf er 
By way of derogation from Article 17(1), an EU certificat ion mark may only be transfe rred to a person who 
meets the requirements of Article 74a(2). 
Article 74h 
Persons who are entitled to bring an action for infr ingement 
1. Only the propr ietor of an EU certification mark, or any person specifically author ised by him to that effect, 
shall be entitled to bring an action for infringement. 
2. The propr ietor of an EU certification mark shall be entitled to claim compen sation on behalf of persons 
who have author ity to use the mark where they have sustained damage as a consequence of unauthor ised use of 
the mark. 
Article 74i 
Grounds for revocation 
In addition to the grounds for revocat ion provided for in Article 51, the rights of the propr ietor of an EU certifi­
cation mark shall be revok ed on application to the Offi ce or on the basis of a counterclaim in infringement 
proceedings, where any of the following conditions is fulfilled: 
(a)  the propr ietor no long er compl ies with the requirements set out in Article 74a(2); 
(b)  the propr ietor does not take reasonable steps to prevent the mark being used in a manner that is 
incompati ble with the conditions of use laid down in the regulations governing use, amendments to whic h 
have, where appropr iate, been mentioned in the Regist er; 
(c)  the manner in which the mark has been used by the propr ietor has caused it to become liable to mislead the 
public in the manner refer red to in Article 74c(2); 
(d)  an amendment to the regulations governing use of the mark has been mentioned in the Regist er in breac h of 
Article 74f(2), unless the propr ietor of the mark, by further amending the regulations governing use, compl ies 
with the requirements of that Article. 
Article 74j 
Grounds for invalidity 
In addition to the grounds for invalidity provided for in Articles 52 and 53, an EU certification mark which is 
register ed in breach of Article 74c shall be declared invalid on application to the Office or on the basis of a 
counte rclaim in infringement proceedings, unless the propr ietor of the mark, by amending the regulations 
governing use, compl ies with the requirements of Article 74c. 24.12.2015 L 341/49 Official Jour nal of the European Union EN     Article 74k 
Conv ersion 
Without prejudice to Article 112(2), conversion of an application for an EU certificat ion mark or of a register ed 
EU certificat ion mark shall not take place where the national law of the Member State concer ned does not 
provide for the registration of guarant ee or certification marks pursuant to Article 28 of Directive (EU) 
2015/2436 of the European Parliament and of the Council.’.  
(68) Article 75 is replaced by the following: 
‘Article 75 
Decisions and communications of the Office 
1. Decisions of the Offi ce shall state the reasons on whic h they are based. They shall be based only on reasons 
or evidence on which the parties concer ned have had an oppor tunity to present their comments. Where oral 
proceedings are held before the Offi ce, the decision may be given orally . Subsequently , the decision shall be 
notified in writing to the parties. 
2. Any decision, communication or notice from the Offi ce shall indicate the depar tment or division of the 
Offi ce as well as the name or the names of the official or officials responsible. They shall be signed by that official 
or those officials, or, instea d of a signature, carry a printed or stampe d seal of the Office. The Executive Direct or 
may deter mine that other means of identifying the depar tment or division of the Office and the name of the 
official or officials responsible, or an identif ication other than a seal, may be used where decisions, communi ­
cations or notices from the Office are transmitt ed by telecopi er or any other technical means of communication. 
3. Decisions of the Office which are open to appeal shall be accompan ied by a written communication 
indicating that any notice of appeal is to be filed in writing at the Office within two months of the date of 
notificati on of the decision in question. The communications shall also draw the attention of the parties to the 
provisions laid down in Articles 58, 59 and 60. The parties may not plead any failure on the part of the Office to 
communicate the availability of appeal proceedings.’.  
(69) In Article 76(1), the following sente nce is added: 
‘In inva lidity proceedings taken pursuant to Article 52, the Office shall limit its examination to the grounds and 
arguments submitted by the parties.’.  
(70) In Article 77, the following paragraph is added: 
‘4. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying 
the detailed arrange ments for oral proceedings, including the detailed arrang ements for the use of languages in 
accordance with Article 119.’.  
(71) Article 78 is amended as follows: 
(a)  in paragraph 3, the following sentence is added: 
‘The period of notice provided in such summons shall be at least one month, unless they agree to a shor ter 
period.’; 
(b)  the following paragraphs are added: 
‘5. The Executive Direct or shall determi ne the amounts of expenses to be paid, including advances, as 
regards the costs of taking of evidence as referred to in this Article. 
6. The Commission shall be emp owered to adop t delegat ed acts in accordance with Article 163a specifying 
the detailed arrangemen ts for the taking of evidence.’ . 24.12.2015 L 341/50 Official Jour nal of the European Union EN     (72) Article 79 is replaced by the following: 
‘Article 79 
Notif ication 
1. The Offi ce shall, as a matte r of course, notify those concer ned of decisions and summonses and of any 
notice or other communication from which a time limit is reck oned, or of which those concer ned are to be 
notified under other provisions of this Regulation or of acts adopt ed pursuant to this Regulation, or of which 
notificati on has been ordered by the Executive Director . 
2. The Executive Direct or may determine which documents other than decisions subject to a time limit for 
appeal and summonses shall be notified by register ed letter with proof of deliver y. 
3. Notification may be effect ed by different means, including by electronic means. The details regarding 
electronic means shall be deter mined by the Executive Director . 
4. Where notifi cation is to be effected by public notice, the Executive Director shall determi ne how the public 
notice is to be given and shall fix the beginning of the one-month period on the expir y of whic h the document 
shall be deemed to have been notifi ed. 
5. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying the 
detailed arrang ements for notifi cation.’.  
(73) The following articles are inser ted: 
‘Article 79a 
Notif ication of loss of rights 
Where the Offi ce finds that the loss of any rights results from this Regulation or acts adop ted pursuant to this 
Regulation, without any decision having been taken, it shall communicate this to the person concer ned in 
accordance with Article 79. The latter may apply for a decision on the matte r within two months of notification 
of the communication, if he considers that the find ing of the Offi ce is incor rect. The Office shall adopt such a 
decision only where it disagrees with the person requesting it; other wise the Office shall amend its finding and 
inform the person requesting the decision. 
Article 79b 
Communications to the Office 
1. Communications addressed to the Offi ce may be effected by electronic means. The Executive Direct or shall 
determine to what extent and under whic h technical conditions those communications may be submitted elec­
tronically . 
2. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying the 
rules on the means of communication, including the electronic means of communication, to be used by the 
parties to proceedings before the Offi ce and the forms to be made available by the Office. 
Article 79c 
Time limits 
1. Time limits shall be laid down in term s of full years, months, weeks or days. Calculation shall start on the 
day following the day on which the relevant event occur red. The duration of time limits shall be no less than one 
month and no more than six months. 
2. The Executive Direct or shall determine, before the commencement of each calendar year, the days on which 
the Office is not open for receip t of documents or on which ordinar y post is not delivered in the locality in 
whic h the Offi ce is locat ed. 24.12.2015 L 341/51 Official Jour nal of the European Union EN     3. The Executive Direct or shall determine the duration of the period of interrupti on in the case of a general 
interr upti on in the deliver y of post in the Member State where the Office is located or, in the case of an actual 
interr upti on of the Office's connection to admitt ed electronic means of communication. 
4. If an excep tional occur rence, such as a natural disaste r or strike, interr upts or interferes with proper 
communication from the parties to the proceedings to the Offi ce or vice-versa, the Executive Director may 
determine that for parties to the proceedings having their residence or register ed office in the Member State 
concer ned or who have appointe d a representative with a place of business in the Member State concer ned, all 
time limits that other wise would expire on or after the date of commencement of such occur rence, as determined 
by him, shall extend until a date to be determined by him. When deter mining that date , he shall assess when the 
excep tional occur rence comes to an end. If the occur rence affects the seat of the Offi ce, such determi nation of the 
Executive Director shall specify that it applies in respect of all parties to the proceedings. 
5. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying the 
details regarding the calculation and duration of time limits. 
Article 79d 
Cor rection of errors and manifest oversights 
1. The Office shall correct any linguistic errors or errors of transcr iption and manife st oversights in its 
decisions, or technical errors attributable to it in registeri ng a trade mark or in publishing the registration of its 
own motion or at the request of a party. 
2. Where the correction of errors in the registration of a trade mark or the publication of the registration is 
request ed by the propr ietor, Article 48a shall apply mutatis mutandis. 
3. Corrections of errors in the registration of a trade mark and in the publication of the registration shall be 
published by the Office.’.  
(74) Article 80 is replaced by the following: 
‘Article 80 
Rev ocation of decisions 
1. Where the Offi ce has made an entr y in the Register or take n a decision whic h contains an obvious error 
attributable to the Offi ce, it shall ensure that the entr y is cancelled or the decision is revok ed. Where there is only 
one party to the proceedings and the entr y or the act affects its rights, cancellation or revocat ion shall be 
determined even if the error was not evident to the party. 
2. Cancellation or revocati on as refer red to in paragraph 1 shall be deter mined, ex officio or at the request of 
one of the parties to the proceedings, by the depar tment which made the entr y or took the decision. The 
cancellation of the entr y in the Register or the revocation of the decision shall be effected within one year of the 
date on which the entr y was made in the Register or that decision was taken, after consultation with the parties 
to the proceedings and any propr ietor of rights to the EU trade mark in question that are entered in the Register . 
The Office shall keep records of any such cancellation or revocati on. 
3. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying the 
procedure for the revocati on of a decision or for the cancellation of an entr y in the Regist er. 
4. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 
and 65, or to the possibility of correcting errors and manifest oversights under Article 79d. Where an appeal has 
been filed against a decision of the Office containing an error, the appeal proceedings shall become devoi d of 
purpose upon revocati on by the Offi ce of its decision pursuant to paragraph 1 of this Article. In the latter case, 
the appeal fee shall be reimbursed to the appellant.’. 24.12.2015 L 341/52 Official Jour nal of the European Union EN     (75) Article 82 is amended as follows: 
(a)  paragraph 2 is replaced by the following: 
‘2. This Article shall not apply to the time limits laid down in Article 27, Articles 29(1), 33(1), 36(2), 41(1) 
and (3), 47(3), Article 60, Articles 65(5) and 81(2), and Article 112, or to the time limits laid down in 
paragraph 1 of this Article or the time limit for claiming senior ity pursuant to Article 34 after the application 
has been filed.’; 
(b)  paragraph 4 is replaced by the following: 
‘4. If the Offi ce accepts the application, the consequences of having failed to obser ve the time limit shall be 
deemed not to have occur red. If a decision has been take n between the expir y of that time limit and the 
request for the continuation of proceedings, the depar tment compe tent to decide on the omitted act shall 
review the decision and, where compl etion of the omitt ed act itself is sufficient, take a different decision. If, 
following the review , the Offi ce concludes that the original decision does not require to be altered, it shall 
conf irm that decision in writing.’.  
(76) The following Article is inser ted: 
‘Article 82a 
Inter ruption of proceedings 
1. Proceedings before the Office shall be interrupted: 
(a)  in the event of the death or legal incapacity of the applicant for, or propr ietor of, an EU trade mark or of the 
person author ised by national law to act on his behalf. To the exte nt that that death or incapacity does not 
affect the author isation of a representative appointe d under Article 93, proceedings shall be interr upted only 
on application by such representative; 
(b)  in the event of the applicant for, or propr ietor of, an EU trade mark being prevent ed, for legal reasons 
resulting from action taken against his proper ty, from continuing the proceedings before the Offi ce; 
(c)  in the event of the death or legal incapacity of the representative of an applicant for, or propr ietor of, an EU 
trade mark, or of that representative being prevented, for legal reasons resulting from action taken again st his 
proper ty, from continuing the proceedings before the Offi ce. 
2. Proceedings before the Offi ce shall be resumed as soon as the identity of the person author ised to continue 
them has been established. 
3. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying the 
detailed arrang ements for the resum ption of proceedings before the Offi ce.’.  
(77) Article 83 is replaced by the following: 
‘Article 83 
Reference to general principles 
In the absence of procedural provisions in this Regulation or in acts adopt ed pursuant to this Regulation, the 
Offi ce shall take into account the principles of procedural law general ly recognised in the Member States.’.  
(78) Article 85 is amended as follows: 
(a)  paragraph 1 is replaced by the following: 
‘1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of 
inva lidity or appeal proceedings shall bear the fees paid by the other party. Without prejudice to 
Article 119(6), the losing party shall also bear all costs incur red by the other party that are essential to the 
proceedings, including travel and subsistence and the remuneration of a representative within the meaning of 
Article 93(1), within the limits of the scales set for each catego ry of costs in the imple menting act to be 
adopt ed in accordance with paragraph 1a of this Article. The fees to be borne by the losing party shall be 
limited to the fees paid by the other party for opposition, for an application for revocati on or for a 
declaration of invalidity of the EU trade mark and for appeal.’; 24.12.2015 L 341/53 Official Jour nal of the European Union EN     (b)  the following paragraph is inser ted: 
‘1a. The Commission shall adopt implementing acts specifying the maximum rates for costs essential to the 
proceedings and actually incur red by the successful party. Those implementing acts shall be adopt ed in 
accordance with the examination procedure refer red to in Article 163(2). 
When specifying such amounts with respect to travel and subsistence costs, the Commission shall take into 
account the distance between the place of residence or business of the party, representative or witness or 
exper t and the place where the oral proceedings are held, the procedural stage at whic h the costs have been 
incur red, and, as far as costs of representation within the meaning of Article 93(1) are concer ned, the need to 
ensure that the oblig ation to bear the costs may not be misused for tactical reasons by the other party. 
Subsistence expenses shall be calculat ed in accordance with the Staff Regulations of Officials of the Union and 
the Conditions of Emplo yment of Other Servants of the Union, laid down in Council Regulation (EEC, 
Euratom, ECSC) No 259/68 (*). 
The losing party shall bear the costs for one opposing party only and, where applicable, one representative 
only .  
(*)OJ L 56, 4.3.1968, p. 1.’; 
(c)  paragraph 6 is replaced by the following: 
‘6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs 
to be paid pursuant to paragraphs 1 to 5 of this Article when the costs to be paid are limite d to the fees paid 
to the Offi ce and the representation costs. In all other cases, the registr y of the Board of Appeal or a member 
of the staff of the Opposition Division or Cancellation Division shall fix, on request, the amount of the costs 
to be reimbursed. The request shall be admissible only for the period of two months following the date on 
which the decision for which an application was made for the costs to be fixed becomes final and shall be 
accompanied by a bill and suppor ting evidence. For the costs of representation pursuant to Article 93(1), an 
assurance by the representative that the costs have been incur red shall be suffic ient. For other costs, it shall be 
suffi cient if their plausibility is established. Where the amount of the costs is fixed pursuant to the first 
senten ce of this paragraph, representation costs shall be awarded at the level laid down in the act adop ted 
pursuant to paragraph 1a of this Article and irrespective of whether they have been actually incur red.’; 
(d)  the following paragraph is added: 
‘7. The decision on the fixing of costs, stating the reasons on whic h it is based, may be reviewed by a 
decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within one 
month of the date of notification of the awar ding of costs. It shall not be deemed to be filed until the fee for 
reviewing the amount of the costs has been paid. The Opposition Division, the Cancellation Division or the 
Board of Appeal, as the case may be, shall take a decision on the request for a review of the decision on the 
fixing of costs without oral proceedings.’ .  
(79) In Article 86(2), the second sentence is replaced by the following: 
‘Each Member State shall designate a sing le author ity responsible for verifying the authenticity of the decision 
refer red to in paragraph 1 and shall communicate its contact details to the Offi ce, the Cour t of Justice and the 
Commission. The order for the enforcement of the decision shall be appended to the decision by that author ity, 
with the verification of the authenticity of the decision as the sole formality .’.  
(80) Article 87 is replaced by the following: 
‘Article 87 
Register of EU trade marks 
1. The Office shall keep a Register of EU trade marks which it shall keep up to date . 
2. The Register shall contain the following entr ies relating to EU trade mark applications and registrations: 
(a)  the date of filing the application; 
(b)  the file number of the application; 24.12.2015 L 341/54 Official Jour nal of the European Union EN     (c)  the date of the publication of the application; 
(d)  the name and address of the applicant ; 
(e)  the name and business address of the representative, other than a representative as refer red to in the first 
senten ce of Article 92(3); 
(f)  the representation of the mark, with indications as to its nature; and, where applicable, a descr iption of the 
mark; 
(g)  an indication of the goods and services by their names; 
(h)  particulars of claims of priority pursuant to Article 30; 
(i)  particulars of claims of exhibition priority pursuant to Article 33; 
(j)  particulars of claims of senior ity of a registered earlier trade mark as refer red to in Article 34; 
(k)  a statement that the mark has become distinctive in consequence of the use which has been made of it, 
pursuant to Article 7(3); 
(l)  an indication that the mark is a collective mark; 
(m)  an indication that the mark is a certification mark; 
(n)  the language in which the application was filed and the second languag e whic h the applicant has indicate d in 
his application, pursuant to Article 119(3); 
(o)  the date of registration of the mark in the Registe r and the registration number; 
(p)  a statement that the application is the result of a transf ormation of an internatio nal registration designating 
the Union, pursuant to Article 161 of this Regulation, together with the date of the internatio nal registration 
pursuant to Article 3(4) of the Madr id Protocol or the date on whic h the territorial extensi on to the Union 
made subsequent to the intern ational registration pursuant to Article 3ter(2) of the Madr id Protocol was 
recorded and, where applicable, the date of priority of the international registration. 
3. The Register shall also contain the following entr ies, each accompanied by the date of recording of such 
entr y: 
(a)  changes in the name, address or nationality of the propr ietor of an EU trade mark or a chang e in the State in 
which he is domiciled or has his seat or establishment ; 
(b)  changes in the name or business address of the representative, other than a representative as refer red to in 
the first senten ce of Article 92(3); 
(c)  where a new representative is appointed , the name and business address of that representative; 
(d)  amendments and alter ations of the mark, pursuant to Articles 43 and 48, and corrections of errors; 
(e)  notice of amendments to the regulations governing the use of the collective mark pursuant to Article 71; 
(f)  particulars of claims of senior ity of a registe red earlier trade mark as referred to in Article 34, pursuant to 
Article 35; 
(g)  total or partial transfer s pursuant to Article 17; 
(h)  creation or transfer of a right in rem pursuant to Article 19, and the nature of the right in rem; 
(i)  levy of execution pursuant to Article 20 and insolvency proceedings pursuant to Article 21; 
(j)  the grant or transfer of a licence pursuant to Article 22 and, where applicable, the type of licence; 
(k)  renewal of a registration pursuant to Article 47, the date from which it takes effect and any restr ictions 
pursuant to Article 47(4); 24.12.2015 L 341/55 Official Jour nal of the European Union EN     (l)  a record of a deter mination of the expir y of a registration pursuant to Article 47; 
(m)  declarations of withdrawal or surrender by the propr ietor of the mark pursuant to Articles 43 and 50 
respectively ; 
(n)  the date of submission and the particulars of an opposition pursuant to Article 41, of an application 
pursuant to Article 56, or a count erclaim pursuant to Article 100(4) for revocat ion, or for a declaration of 
inva lidity , or of an appeal pursuant to Article 60; 
(o)  the date and conte nt of a decision on an opposition, on an application or counterclaim pursuant to 
Article 57(6) or the third sentence of Article 100(6), or on an appeal pursuant to Article 64; 
(p)  a record of the receipt of a request for convers ion pursuant to Article 113(2); 
(q)  the cancellation of the representative recorded pursuant to point (e) of paragraph 2 of this Article; 
(r)  the cancellation of the senior ity of a national mark; 
(s)  the modific ation to or cancellation from the Regist er of the items refer red to in points (h), (i) and (j) of this 
paragraph; 
(t)  the replacement of the EU trade mark by an international registration pursuant to Article 157; 
(u)  the date and number of internati onal registrations based on the EU trade mark application whic h has been 
registere d as an EU trade mark pursuant to Article 148(1); 
(v)  the date and number of internati onal registrations based on the EU trade mark pursuant to Article 148(2); 
(w)  the division of an application pursuant to Article 44 and the division of a registration pursuant to Article 49, 
together with the items refer red to in paragraph 2 of this Article in respect of the divisional registration, as 
well as the list of goods and services of the original registration as amended; 
(x)  the revocation of a decision or an entr y in the Registe r pursuant to Article 80, where the revocati on 
concer ns a decision or entr y whic h has been published; 
(y)  notice of amendments to the regulations governing the use of the certificat ion mark pursuant to Article 74f. 
4. The Executive Direct or may deter mine that items other than those referred to in paragraphs 2 and 3 of this 
Article are to be entered in the Register , subject to Article 123(4). 
5. The Registe r may be maintained in electronic form. The Offi ce shall collect, organise, make public and store 
the items refer red to in paragraphs 2 and 3, including any personal data, for the purposes laid down in 
paragraph 9. The Offi ce shall keep the registe r easily accessible for public inspection. 
6. The propr ietor of an EU trade mark shall be notifi ed of any change in the Registe r. 
7. The Office shall provide certified or uncer tified extracts from the Regist er on request and on payment of a 
fee. 
8. The processing of the data concer ning the entr ies set out in paragraphs 2 and 3, including any personal 
data, shall take place for the purposes of: 
(a)  administe ring the applications and/or registrations as descr ibed in this Regulation and acts adopt ed pursuant 
to it; 
(b)  maintaining a public register for inspection by, and the information of, public author ities and economic 
operat ors, in order to enable them to exercise the rights confe rred on them by this Regulation and be 
informed about the existen ce of prior rights belonging to third parties; and 24.12.2015 L 341/56 Official Jour nal of the European Union EN     (c)  producing repor ts and statistics enabling the Offi ce to optimise its operations and impro ve the functioning of 
the system. 
9. All the data, including personal data, concer ning the entr ies in paragraphs 2 and 3 shall be considered to be 
of public interest and may be accessed by any third party. For reasons of legal certainty , the entr ies in the Regist er 
shall be kept for an indefini te period of time.’.  
(81) The following articles are inser ted: 
‘Article 87a 
Databas e 
1. In addition to the oblig ation to keep a Regist er within the meaning of Article 87, the Offi ce shall collect 
and store in an electronic database all the particulars provided by applicants or any other party to the 
proceedings under this Regulation or acts adopt ed pursuant to it. 
2. The electronic database may include personal data, beyond those included in the Regist er pursuant to 
Article 87, to the extent that such particulars are required by this Regulation or acts adopt ed pursuant to it. The 
collection, storage and processing of such data shall serve the purposes of: 
(a)  administe ring the applications and/or registrations as descr ibed in this Regulation and acts adopt ed pursuant 
to it; 
(b)  accessing the information necessar y for conducting the relevant proceedings more easily and efficiently ; 
(c)  communicating with the applicants and other parties to the proceedings; 
(d)  producing repor ts and statistics enabling the Offi ce to optimise its operations and impro ve the functioning of 
the system. 
3. The Executive Director shall deter mine the conditions of access to the electronic database and the manner in 
whic h its conte nts, other than the personal data refer red to in paragraph 2 of this Article but including those 
listed in Article 87, may be made available in machine-readable form, including the charge for such access. 
4. Access to the personal data referred to in paragraph 2 shall be restr icted and such data shall not be made 
publicly available unless the party concer ned has given his express consent. 
5. All data shall be kept indef initely. However , the party concer ned may request the remo val of any personal 
data from the database after 18 months from the expir y of the trade mark or the closure of the relevant inter 
partes procedure. The party concer ned shall have the right to obtain the correction of inaccurat e or erroneous 
data at any time. 
Article 87b 
Online access to decisions 
1. The decisions of the Offi ce shall be made available online for the information and consultation of the 
general public in the inter est of transparency and predictability . Any party to the proceedings that led to the 
adoptio n of the decision may request the remo val of any personal data included in the decision. 
2. The Offi ce may provide online access to judgments of national and Union cour ts related to its tasks in order 
to raise public awar eness of intellectual proper ty matters and promote converg ence of practices. The Office shall 
respect the conditions of the initial publication with regard to personal data.’ . 24.12.2015 L 341/57 Official Jour nal of the European Union EN     (82) Article 88 is amended as follows: 
(a)  paragraph 4 is replaced by the following: 
‘4. Where the files are inspect ed pursuant to paragraph 2 or 3 of this Article, documents relating to 
excl usion or objection pursuant to Article 137, draf t decisions and opinions, and all other intern al documents 
used for the preparation of decisions and opinions, as well as parts of the file which the party concer ned 
showed a special interest in keeping confidential before the request for inspection of the files was made, 
unless inspection of such parts of the file is justified by overriding, legitimate interests of the party seeking 
inspection, may be withheld from inspection.’; 
(b)  the following paragraphs are added: 
‘5. Inspection of the files of EU trade mark applications and of registe red EU trade marks shall be of the 
original document, or of copies thereof, or of technical means of storag e if the files are stored in this way. 
The Executive Director shall determine the means of inspection. 
6. Where inspection of files takes place as provided for in paragraph 7, the request for inspection of the 
files shall not be deemed to have been made until the required fee has been paid. No fee shall be payable if 
inspection of technical means of storag e take s place online. 
7. Inspection of the files shall take place at the premises of the Offi ce. On request, inspection of the files 
shall be effected by means of issuing copies of file documents. The issuing of such copies shall be conditional 
on the payment of a fee. The Offi ce shall also issue on request certified or uncer tified copies of the 
application for an EU trade mark upon payment of a fee. 
8. The files kept by the Office relating to intern ational registrations designating the Union may be 
inspecte d on request as from the date of publication referred to in Article 152(1), in accordance with the 
conditions laid down in paragraphs 1, 3 and 4 of this Article. 
9. Subject to the restr ictions provided for in paragraph 4, the Offi ce may, on request, communicate 
information from any file of an EU trade mark applied for or of a registere d EU trade mark, subject to 
payment of a fee. However , the Office may require the exer cise of the option to obtain inspection of the file 
itself should it deem this to be appropr iate in view of the quantity of information to be supplied.’.  
(83) The following article is inser ted: 
‘Article 88a 
Keeping of files 
1. The Offi ce shall keep the files of any procedure relating to an EU trade mark application or EU trade mark 
registration. The Executive Direct or shall determi ne the form in which those files shall be kept. 
2. Where the files are kept in electronic format, the electronic files, or back -up copies thereof, shall be kept 
indefini tely. The original documents filed by parties to the proceedings, and forming the basis of such electronic 
files, shall be disposed of after a period following their recep tion by the Offi ce, which shall be determi ned by the 
Executive Director . 
3. Where and to the extent that files or parts of the files are kept in any form other than electronically , 
documents or items of evidence constituting part of such files shall be kept for at least five years from the end of 
the year in which the application is rejecte d or withdra wn or is deemed to be withdra wn, the registration of the 
EU trade mark expires compl etely pursuant to Article 47, the complet e surrender of the EU trade mark is 
register ed pursuant to Article 50, or the EU trade mark is complet ely remo ved from the Regist er pursuant to 
Article 57(6) or 100(6).’ . 24.12.2015 L 341/58 Official Jour nal of the European Union EN     (84) Article 89 is replaced by the following: 
‘Article 89 
Periodical publications 
1. The Office shall periodically publish: 
(a)  a European Union Trade Marks Bulletin containing publications of applications and of entr ies made in the 
Registe r as well as other particulars relating to applications or registrations of EU trade marks the publication 
of which is required under this Regulation or by acts adopt ed pursuant to it; 
(b)  an Official Jour nal of the Offi ce containing notices and information of a general character issued by the 
Executive Director , as well as any other information relevant to this Regulation or its implementation. 
The publications refer red to in points (a) and (b) of the first subparagraph may be effected by electronic means. 
2. The European Union Trade Marks Bulletin shall be published in a manner and at a frequency to be 
determined by the Executive Direct or. 
3. The Offi cial Jour nal of the Offi ce shall be published in the languages of the Offi ce. However , the Executive 
Direct or may determine that certain items shall be published in the Official Jour nal of the Offi ce in the official 
languag es of the Union. 
4. The Commission shall adopt implementing acts specifying: 
(a)  the date to be taken as the date of publication in the European Union Trade Marks Bulletin; 
(b)  the manner of publication of entr ies regarding the registration of a trade mark whic h do not contain chang es 
as compar ed to the publication of the application; 
(c)  the forms in whic h editions of the Offi cial Jour nal of the Offi ce may be made available to the public. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(85) Article 90 is amended as follows: 
(a)  the number ‘1’ shall be inser ted before the first paragraph; 
(b)  the following paragraphs are added: 
‘2. The Offi ce shall not charge fees for the communication of information or the opening of files for 
inspection. 
3. The Commission shall adopt implementing acts specifying the detailed arrange ments as to how the 
Offi ce and the author ities of the Member States are to exchang e information between each other and open 
files for inspection, taking into account the restr ictions to which the inspection of files relating to EU 
trade mark applications or registrations is subject, pursuant to Article 88, when it is opened to third parties. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(86) In Article 92, paragraphs 2 to 4 are replaced by the following: 
‘2. Without prejudice to the second sentence of paragraph 3 of this Article, natural or legal persons having 
neither their domicile nor their principal place of business or a real and effective industr ial or commercial 
establishment in the European Economic Area shall be represented before the Offi ce in accordance with 
Article 93(1) in all proceedings provided for by this Regulation, other than the filing of an application for an EU 
trade mark. 24.12.2015 L 341/59 Official Jour nal of the European Union EN     3. Natural or legal persons having their domicile or principal place of business or a real and effective industr ial 
or commercial establishment in the European Economic Area may be represente d before the Offi ce by an 
emplo yee. An emplo yee of a lega l person to whic h this paragraph applies may also represent other lega l persons 
whic h have economic connections with the first legal person, even if those other legal persons have neither their 
domicile nor their principal place of business nor a real and effective industr ial or commercial establishment 
within the European Economic Area. Emplo yees who represent persons, within the meaning of this paragraph, 
shall, at the request of the Office or, where appropr iate, of the party to the proceedings, file with it a signed 
author isation for inser tion in the files. 
4. Where there is more than one applicant or more than one third party acting in common, a common 
representative shall be appointed.’ .  
(87) Article 93 is amended as follows: 
(a)  paragraphs 1 and 2 are replaced by the following: 
‘1. Representation of natural or lega l persons before the Office may only be under taken by: 
(a)  a lega l practitioner qualifi ed in one of the Member States of the European Economic Area and having his 
place of business within the European Economic Area, to the exte nt that he is entitled, within the said 
Member State, to act as a representative in trade mark matte rs; 
(b)  professional representatives whose names appear on the list maintained for this purpose by the Office. 
Representatives acting before the Offi ce shall, at the request of the Offi ce or, where appropr iate, of the other 
party to the proceedings, file with it a signed author isation for inser tion on the files. 
2. Any natural person who fulfils the following conditions may be entered on the list of professional 
representatives: 
(a)  being a national of one of the Member State s of the European Economic Area; 
(b)  having his place of business or employment in the European Economic Area; 
(c)  being entitled to represent natural or legal persons in trade mark matt ers before the Benelux Office for 
Intellectual Proper ty or before the central industr ial proper ty office of a Member State of the European 
Economic Area. Where, in the State concer ned, the entitlement is not conditional upon the requirement 
of special professional qualifi cations, persons applying to be entered on the list who act in trade mark 
matters before the Benelux Office for Intellectual Proper ty or those central industr ial proper ty offices shall 
have habitually so acted for at least five years. However , persons whose professional qualifi cation to 
represent natural or legal persons in trade mark matt ers before the Benelux Office for Intellectual Proper ty 
or those central industr ial proper ty office s is officiall y recognised in accordance with the regulations laid 
down by the State concer ned shall not be required to have exercised the profession.’; 
(b)  paragraphs 4 and 5 are replaced by the following: 
‘4. The Executive Director may grant an exem ption from: 
(a)  the requirement in the second sentence of paragraph 2(c), if the applicant furnishes proof that he has 
acquired the requisite qualifi cation in another way; 
(b)  the requirement set out in paragraph 2(a) in the case of highly qualified professionals, provided that the 
requirements set out in paragraphs 2(b) and (c) are fulfilled. 
5. A person may be remo ved from the list of professional representatives at his request or when no long er 
in a capacity to represent. The amendments of the list of professiona l representatives shall be published in the 
Offi cial Jour nal of the Office.’. 24.12.2015 L 341/60 Official Jour nal of the European Union EN     (88) The following article is inser ted: 
‘Article 93a 
Delegation of powers 
The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying: 
(a)  the conditions and the procedure for the appointment of a common representative as refer red to in 
Article 92(4); 
(b)  the conditions under whic h emplo yees refer red to in Article 92(3) and profes sional representatives referred to 
in Article 93(1) shall file with the Offi ce a signed author isation in order to under take representation, and the 
content of that author isation; 
(c)  the circumstances in which a person may be remo ved from the list of profes sional representatives refer red to 
in Article 93(5).’.  
(89) In Title X, the title of Section 1 is replaced by the following: 
‘Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and 
commercial matters’.  
(90) Article 94 is amended as follows: 
(a)  the title is replaced by the following: 
‘Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil 
and commercial matters’; 
(b)  in paragraph 1, ‘Regulation (EC) No 44/2001’ is replaced by ‘the Union rules on jurisdiction and the 
recognition and enforcement of judgments in civil and commercial matt ers’; 
(c)  the following paragraph is added: 
‘3. References in this Regulation to Regulation (EC) No 44/2001 shall include, where appropr iate, the 
Agreement between the European Community and the Kingdom of Denmark on jurisdiction and the 
recognition and enforcement of judgments in civil and commercial matt ers done on 19 October 2005.’ .  
(91) In Article 96(c), ‘Article 9(3), second sente nce’ is replaced by ‘Article 9b(2)’ .  
(92) In Article 99, paragraph 3 is replaced by the following: 
‘3. In the actions refer red to in points (a) and (c) of Article 96, a plea relating to revocati on of the EU trade 
mark submitte d other wise than by way of a counte rclaim shall be admissible where the defendant claims that the 
EU trade mark could be revok ed for lack of genuine use at the time the infringe ment action was brought.’.  
(93) Article 100 is amended as follows: 
(a)  paragraph 4 is replaced by the following: 
‘4. The EU trade mark cour t with whic h a counterclaim for revocati on or for a declaration of invalidity of 
the EU trade mark has been filed shall not proceed with the examination of the count erclaim, until either the 
inter ested party or the cour t has informed the Offi ce of the date on which the count erclaim was filed. The 
Offi ce shall record that information in the Regist er. If an application for revocation or for a declaration of 
inva lidity of the EU trade mark had already been filed before the Office before the counterclaim was filed, the 
cour t shall be informed thereof by the Offi ce and stay the proceedings in accordance with Article 104(1) until 
the decision on the application is final or the application is withdrawn.’; 24.12.2015 L 341/61 Official Jour nal of the European Union EN     (b)  paragraph 6 is replaced by the following: 
‘6. Where an EU trade mark cour t has given a judgment which has become final on a counterclaim for 
revocati on or for a declaration of inva lidity of an EU trade mark, a copy of the judgment shall be sent to the 
Offi ce without dela y, either by the cour t or by any of the parties to the national proceedings. The Offi ce or 
any other interested party may request information about such transmission. The Offi ce shall mention the 
judgment in the Regist er and shall take the necessar y measures to comply with its operative part.’.  
(94) In Article 101, paragraph 2 is replaced by the following: 
‘2. On all trade mark matte rs not covered by this Regulation, the relevant EU trade mark cour t shall apply the 
applicable national law.’.  
(95) In Article 102, paragraph 2 is replaced by the following: 
‘2. The EU trade mark cour t may also apply measures or orders available under the applicable law whic h it 
deems appropr iate in the circumstances of the case.’.  
(96) The title ‘Section 4. Transitional provision’ and Article 108 are delet ed.  
(97) Article 113 is replaced by the following: 
‘Article 113 
Submission, publication and transmission of the reques t for conv ersion 
1. A request for conversion shall be filed with the Offi ce within the relevant period pursuant to Article 112(4), 
(5) or (6), and shall include an indication of the grounds for conversion in accordance with Article 112(1)(a) 
or (b), the Member States in respect of which convers ion is request ed, and the goods and services subject to 
conver sion. Where conversion is requeste d following a failure to renew the registration, the period of three 
months provided for in Article 112(5) shall begin to run on the day following the last day on whic h the request 
for renewal can be present ed pursuant to Article 47(3). The request for conversion shall not be deemed to be filed 
until the conver sion fee has been paid. 
2. Where the request for conversion relat es to an EU trade mark application whic h has already been published 
or where the request for conversion relat es to an EU trade mark, receip t of any such request shall be recorded in 
the Registe r and the request for conver sion shall be published. 
3. The Offi ce shall check whether the conver sion request ed fulfils the conditions set out in this Regulation, in 
particular Article 112(1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with the formal conditions 
specified in the implementing act adopt ed pursuant to paragraph 6 of this Article. If the conditions governing the 
request are not fulfilled, the Office shall notify the applicant of the defici encies. If the deficien cies are not 
remedied within a period to be specifi ed by the Office, the Office shall reject the request for conversion. Where 
Article 112(2) applies, the Offi ce shall reject the request for conver sion as inadmissible only with respect to those 
Member State s for whic h conversion is excl uded under that provision. Where the conversion fee has not been 
paid within the relevant period of three months pursuant to Article 112(4), (5) or (6), the Office shall inform the 
applicant that the request for conver sion is deemed not to have been filed. 
4. If the Offi ce or an EU trade mark cour t has refused the EU trade mark application or has declared the EU 
trade mark invalid on absolute grounds by reference to the languag e of a Member State , convers ion shall be 
excl uded under Article 112(2) for all the Member State s in whic h that language is one of the official languag es. If 
the Offi ce or an EU trade mark cour t has refused the EU trade mark application or has declared the EU trade 
mark invalid on absolute grounds which are found to apply throughout the Union or on account of an earlier EU 
trade mark or other Union industr ial proper ty right, conversion shall be excl uded under Article 112(2) for all 
Member States. 24.12.2015 L 341/62 Official Jour nal of the European Union EN     5. Where the request for convers ion compl ies with the requirements refer red to in paragraph 3 of this Article, 
the Offi ce shall transmit the request for conversion and the data refer red to in Article 84(2) to the central 
industr ial proper ty offices of the Member States, including the Benelux Office for Intellectual Proper ty, for whic h 
the request has been found admissible. The Office shall inform the applicant of the date of transmission. 
6. The Commission shall adopt implementing acts specifying: 
(a)  the details to be contained in a request for conversion of an EU trade mark application or a register ed EU 
trade mark into a national trade mark application pursuant to paragraph 1; 
(b)  the details whic h are to be contained in the publication of the request for conver sion pursuant to 
paragraph 2. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(98) In Article 114, paragraph 2 is replaced by the following: 
‘2. An EU trade mark application or a European Union trade mark transmitte d in accordance with Article 113 
shall not be subject to formal requirements of national law whic h are different from or additional to those 
provided for in this Regulation or in acts adopt ed pursuant to this Regulation.’ .  
(99) In Article 115(1), the first sentence is replaced by the following: 
‘The Office shall be an agency of the Union.’ .  
(100) In Article 116, paragraph 2 is replaced by the following: 
‘2. Without prejudice to paragraph 1, the Offi ce may make use of seconded national exper ts or other staff not 
emplo yed by the Office. The Manage ment Board shall adop t a decision laying down rules on the secondment to 
the Offi ce of national exper ts.’.  
(101) In Article 117, the words ‘to the Offi ce’ are replaced by ‘to the Offi ce and its staff’.  
(102) Article 119 is amended as follows: 
(a)  paragraph 5 is replaced by the following: 
‘5. The notice of opposition and an application for revocation or a declaration of invalidity shall be filed in 
one of the languag es of the Office.’; 
(b)  the following paragraph is inser ted: 
‘5a. Without prejudice to paragraph 5: 
(a)  any application or declaration relating to an EU trade mark application may be filed in the languag e used 
for filing the application for that EU trade mark or in the second languag e indicated by the applicant in 
his application; 
(b)  any application or declaration relating to a register ed EU trade mark may be filed in one of the languag es 
of the Offi ce. 
However , when the application is filed by using any form provided by the Offi ce as referred to in 
Article 79b(2), such forms may be used in any of the official languag es of the Union, provided that the form 
is compl eted in one of the language s of the Office, as far as textual elements are concer ned.’; 24.12.2015 L 341/63 Official Jour nal of the European Union EN     (c)  in the second subparagraph of paragraph 6, the second sentence is replaced by the following: 
‘The translation shall be produced within one month of the expir y of the opposition period or of the date of 
filing an application for revocati on or a declaration of invalidity .’; 
(d)  the following paragraphs are added: 
‘8. Without prejudice to paragraphs 4 and 7, and unless provided other wise, in written proceedings before 
the Office any party may use any language of the Offi ce. If the language chosen is not the language of the 
proceedings, the party shall supply a translation into that language within one month of the date of the 
submission of the original document. Where the applicant for an EU trade mark is the sole party to 
proceedings before the Office and the language used for the filing of the application for the EU trade mark is 
not one of the languag es of the Office, the translation may also be filed in the second language indicated by 
the applicant in his application. 
9. The Executive Direct or shall deter mine the manner in which translations are to be certified. 
10. The Commission shall adopt implementing acts specifying: 
(a)  the extent to whic h suppor ting documents to be used in written proceedings before the Office may be 
filed in any language of the Union, and the need to supply a translation; 
(b)  the requisite standards of translations to be filed with the Offi ce. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to 
Article 163(2).’.  
(103) In Article 120(1), the words ‘the Implementing Regulation’ are replaced by ‘an act adop ted pursuant to this 
Regulation’.  
(104) Article 122 is delet ed.  
(105) Article 123 is replaced by the following: 
‘Article 123 
Transparency 
1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council (*) shall apply to documents 
held by the Office. 
2. The Management Board shall adopt detailed rules for applying Regulation (EC) No 1049/2001. 
3. Decisions taken by the Office under Article 8 of Regulation (EC) No 1049/2001 may be challenged through 
the European Ombudsman or form the subject of an action before the Cour t of Justice of the European Union, 
under the conditions laid down in Articles 228 and 263 of the Treaty on the Functioning of the European Union 
respectively . 
4. The processing of personal data by the Offi ce shall be subject to Regulation (EC) No 45/2001 of the 
European Parliament and of the Council (**).  
(*) Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding 
public access to European Parliament, Council and Commission documents (OJ L 145, 31.5.2001, p. 43). 
(**) Regulation (EC) No 45/2001 of the European Parliament and of the Council of 18 December 2000 on the 
protection of individuals with regard to the processing of personal data by the Community institutions and 
bodies and on the free movement of such data (OJ L 8, 12.1.2001, p. 1).’. 24.12.2015 L 341/64 Official Jour nal of the European Union EN     (106) The following article is inser ted: 
‘Article 123a 
Secur ity rules on the protection of classif ied and sensitiv e non-classif ied informa tion 
The Offi ce shall apply the secur ity principles contained in the Commission's secur ity rules for protect ing 
European Union Classif ied Information (EUCI) and sensitive non-classified information, as set out in Commission 
Decisions (EU, Eurat om) 2015/443 (*) and 2015/444 (**). The secur ity principles shall cover, inter alia, provisions 
for the exchange , processing and storag e of such information.  
(*) Commission Decision (EU, Eurat om) 2015/443 of 13 March 2015 on Secur ity in the Commission (OJ L 72, 
17.3.2015, p. 41). 
(**) Commission Decision (EU, Euratom) 2015/444 of 13 March 2015 on the secur ity rules for prot ecting EU 
classif ied information (OJ L 72, 17.3.2015, p. 53).’.  
(107) In Title XII, the following section is inser ted: 
‘SECTION 1a 
Tasks of the Office and cooper ation to promote conv ergence  
Article 123b 
Tasks of the Office 
1. The Office shall have the following tasks: 
(a)  administration and promotion of the EU trade mark system established in this Regulation; 
(b)  administration and promotion of the European Union design system established in Council Regulation (EC) 
No 6/2002 (*); 
(c)  promoting converg ence of practices and tools in the fields of trade marks and designs, in cooperation with 
the central industr ial proper ty office s in the Member State s, including the Benelux Office for Intellectual 
Proper ty; 
(d)  the tasks refer red to in Regulation (EU) No 386/2012 of the European Parliament and of the Council (**); 
(e)  the tasks conferr ed on it under Directive 2012/28/EU of the European Parliament and of the Council (***). 
2. The Office shall cooperate with institutions, author ities, bodies, industr ial proper ty office s, international and 
non-go vernmental organisations in relation to the tasks conferr ed on it in paragraph 1. 
3. The Offi ce may provide voluntar y mediation services for the purpose of assisting parties in reac hing a 
friendly settlement. 
Article 123c 
Cooperation to promote conv ergence of practices and tools 
1. The Offi ce and the central industr ial proper ty offices of the Member States and the Benelux Office for 
Intellectual Proper ty shall cooperat e with each other to promote converg ence of practices and tools in the field of 
trade marks and designs. 24.12.2015 L 341/65 Official Jour nal of the European Union EN     Without prejudice to paragraph 3, this cooperation shall in particular cover the following areas of activity: 
(a)  the development of common examination standards; 
(b) the creation of common or connected databases and portals for Union-wide consultation, searc h and classifi ­
cation purposes; 
(c)  the continuous provision and exchange of data and information, including for the purposes of feeding of the 
databases and portals refer red to in point (b); 
(d)  the establishment of common standards and practices, with a view to ensur ing inter operability between 
procedures and systems throughout the Union and enhancing their consiste ncy, efficiency and effectiveness; 
(e)  the shar ing of information on industr ial proper ty rights and procedures, including mutual suppor t to 
helpdesks and information centres; 
(f)  the exchang e of technical exper tise and assistance in relation to the areas refer red to in points (a) to (e). 
2. On the basis of a proposal by the Executive Director , the Manage ment Board shall define and coordinat e 
projects of inter est to the Union and the Member States with regar d to the areas refer red to in paragraphs 1 
and 6, and shall invite the central industr ial proper ty office s of the Member States and the Benelux Office for 
Intellectual Proper ty to participate in those projects. 
The project definition shall contain the specific oblig ations and responsibilities of each participating industr ial 
proper ty office of the Member State s, the Benelux Offi ce for Intellect ual Proper ty and the Office. The Office shall 
consult with user representatives in particular in the phases of definition of the projects and evaluation of their 
results. 
3. The central industr ial proper ty offices of the Member State s and the Benelux Office for Intellectual Proper ty 
may opt out of, restr ict or temporar ily suspend their cooperation in the projects referred to in the first 
subparagraph of paragraph 2. 
When making use of the possibilities provided for in the first subparagraph, the central industr ial proper ty offices 
of the Member States and the Benelux Office for Intellectual Proper ty shall provide the Office with a written 
state ment explaining the reasons for their decision. 
4. Once having committe d to participate in certain projects, the central industr ial proper ty offices of the 
Member States and the Benelux Offi ce for Intellectual Proper ty shall, without prejudice to paragraph 3, participate 
effectively in the projects referred to in paragraph 2 with a view to ensur ing that they are developed, function, are 
inter operable and kept up to date. 
5. The Office shall provide financial suppor t to the projects refer red to in paragraph 2 to the extent that is 
necessar y in order to ensure, for the purposes of paragraph 4, the effective participation of the central industr ial 
proper ty office s of the Member States and the Benelux Office for Intellectual Proper ty in those projects. That 
financia l suppor t may take the form of grants and in-kind contr ibutions. The total amount of funding shall not 
exceed 15 % of the yearly revenue of the Offi ce. The benefi ciaries of grants shall be the central industr ial proper ty 
office s of the Member States and the Benelux Offi ce for Intellectual Proper ty. Grants may be awarded without 
calls for proposals in accordance with the financial rules applicable to the Offi ce and with the principles of grant 24.12.2015 L 341/66 Official Jour nal of the European Union EN     procedures contained in Regulation (EU, Euratom) No 966/2012 of the European Parliament and of the 
Council (****) and in Commission Delegat ed Regulation (EU) No 1268/2012 (*****). 
6. The Office and the relevant compet ent author ities of the Member States shall cooperate with each other on 
a volun tary basis to promot e the raising of awareness concer ning the trade mark system and the fight against 
counte rfeiting. Such cooperation shall include projects aiming, in particular , at the implementation of established 
standards and practices as well as at organising education and training activities. The financial suppor t for those 
projects shall be part of the total amount of funding refer red to in paragraph 5. Paragraphs 2 to 5 shall apply 
mutatis mutandis.  
(*)Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ L 3, 5.1.2002, 
p. 1). 
(**) Regulation (EU) No 386/2012 of the European Parliament and of the Council of 19 Apr il 2012 on 
entr usting the Offi ce for Harmonization in the Intern al Market (Trade Marks and Designs) with tasks 
related to the enforcement of intellectual proper ty rights, including the assembling of public and private- 
sector representatives as a European Obser vator y on Infringements of Intellectual Proper ty Rights 
(OJ L 129, 16.5.2012, p. 1). 
(***) Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain 
permitted uses of orphan works (OJ L 299, 27.10.2012, p. 5). 
(****) Regulation (EU, Eurat om) No 966/2012 of the European Parliament and of the Council of 25 October 
2012 on the financial rules applicable to the general budget of the Union and repealing Council 
Regulation (EC, Eurat om) No 1605/2002 (OJ L 298, 26.10.2012, p. 1). 
(*****) Commission Delegat ed Regulation (EU) No 1268/2012 of 29 October 2012 on the rules of application of 
Regulation (EU, Euratom) No 966/2012 of the European Parliament and of the Council on the financia l 
rules applicable to the general budget of the Union (OJ L 362, 31.12.2012, p. 1).’.  
(108) In Title XII, Sections 2 and 3 are replaced by the following: 
‘SECTION 2 
Manag ement Boar d  
Article 124 
Functions of the Management Board 
1. Without prejudice to the functions attributed to the Budget Committee in Section 5, the Management Board 
shall have the following functions: 
(a)  on the basis of a draf t submitted by the Executive Direct or in accordance with Article 128(4)(c), adopting the 
annual work programme of the Offi ce for the coming year, taking into account the opinion of the 
Commission, and forwarding the adop ted annual work programme to the European Parliament, to the 
Council and to the Commission; 
(b)  on the basis of a draf t submitte d by the Executive Direct or in accordance with Article 128(4)(e) and taking 
into account the opinion of the Commission, adop ting a multiannual strateg ic programme for the Office, 
including the Offi ce's strategy for international cooperation, following an exchange of views between the 
Executive Director and the relevant committe e in the European Parliament, and forwarding the adop ted 
multiannual strateg ic programme to the European Parliament, to the Council and to the Commission; 
(c)  on the basis of a draf t submitted by the Executive Director in accordance with Article 128(4)(g), adoptin g the 
annual repor t and forwarding the adopt ed annual repor t to the European Parliament, to the Council, to the 
Commission and to the Cour t of Aud itors; 
(d)  on the basis of a draf t submitte d by the Executive Director in accordance with Article 128(4)(h), adopting the 
multiannual staff policy plan; 
(e)  exer cising the powers confe rred on it under Article 123c(2); 
(f)  exer cising the powers confe rred on it under Article 139(5); 
(g)  adopting rules on the prevention and managemen t of conf licts of inter est in the Office; 
(h)  in accordance with paragraph 2, exer cising, with respect to the staff of the Offi ce, the powers conferr ed by 
the Staff Regulations on the Appointing Author ity and by the Conditions of Emplo yment of Other Servants 
on the Author ity Empo wered to Conclude Contracts of Emplo yment (“the appointing author ity powers”); 24.12.2015 L 341/67 Official Jour nal of the European Union EN     (i)  adopting appropr iate implementing rules to give effect to the Staff Regulations and the Conditions of 
Emplo yment of Other Servants in accordance with Article 110 of the Staff Regulations; 
(j)  drawing up the list of candidates provided for in Article 129(2); 
(k)  ensur ing adequat e follow-up to the findings and recommendations stemming from the internal or exte rnal 
audit repor ts and evaluations refer red to in Article 165a, as well as from inve stigations of the European Anti- 
fraud Offi ce (OLAF); 
(l)  being consulted before adopt ion of the guidelines for examination in the Offi ce and in the other cases 
provided for in this Regulation; 
(m)  providing opinions and requests for information to the Executive Director and to the Commission where it 
considers it necessar y. 
2. The Manage ment Board shall adopt, in accordance with Article 110 of the Staff Regulations and Article 142 
of the Conditions of Emplo yment of Other Servants, a decision based on Article 2(1) of the Staff Regulations and 
on Article 6 of the Conditions of Emplo yment of Other Servants, delegat ing the relevant appointing author ity 
powers to the Executive Direct or and defining the conditions under which that delegat ion of appointing author ity 
powers can be suspended. 
The Executive Direct or shall be author ised to sub-delegat e those powers. 
Where excep tional circumstances so require, the Management Board may, by way of a decision, temporar ily 
suspend the delegatio n of the appointing author ity powers to the Executive Direct or and those sub-delegat ed by 
the latter , and exer cise them itself or delegat e them to one of its members or to a staff member other than the 
Executive Director . 
Article 125 
Composition of the Management Board 
1. The Management Board shall be compo sed of one representative of each Member State , two representatives 
of the Commission and one representative of the European Parliament, and their respective alternates. 
2. The members of the Managem ent Board may, subject to its rules of procedure, be assiste d by advisers or 
exper ts. 
Article 126 
Chair person of the Management Board 
1. The Management Board shall elect a chair person and a deputy chair person from among its members. The 
deputy chair person shall ex officio replace the chair person in the event of his being prevented from attending to 
his duties. 
2. The duration of the terms of office of the chair person and the deputy chair person shall be four years. The 
term s of office shall be renewable once. If, however , their membership of the Manage ment Board ends at any 
time during their term of office, their term of office shall automatical ly expire on that date also. 
Article 127 
Meetings 
1. Meetings of the Manage ment Board shall be conven ed by its chair person. 
2. The Executive Direct or shall take part in the deliberations, unless the Managem ent Board decides other wise. 24.12.2015 L 341/68 Official Jour nal of the European Union EN     3. The Management Board shall hold an ordinar y meeting at least once a year . In addition, it shall meet on the 
initiative of its chair person or at the request of the Commission or of one-third of the Member States. 
4. The Management Board shall adopt rules of procedure. 
5. The Manage ment Board shall take its decisions by an absolute majority of its members. However , a majority 
of two- thirds of its members shall be required for the decisions whic h the Managem ent Board is empo wered to 
take under Article 124(1)(a) and (b), Article 126(1) and Article 129(2) and (4). In both cases each member shall 
have one vote. 
6. The Management Board may invite obser vers to attend its meetings. 
7. The secretar iat for the Manage ment Board shall be provided by the Offi ce. 
SECTION 3 
Executiv e Director  
Article 128 
Functions of the Executiv e Director 
1. The Office shall be managed by the Executive Director . The Executive Direct or shall be accountable to the 
Managem ent Board. 
2. Without prejudice to the powers of the Commission, the Manag ement Board, and the Budge t Committee, 
the Executive Direct or shall be independent in the performa nce of his duties and shall neither seek nor take 
instr uctions from a government or from any other body . 
3. The Executive Direct or shall be the legal representative of the Office. 
4. The Executive Direct or shall have in particular the following functions, whic h may be delega ted: 
(a)  taking all necessar y steps, including the adopt ion of internal administrative instr uctions and the publication 
of notices, to ensure the functioning of the Offi ce; 
(b)  imp lementing the decisions adopt ed by the Management Board; 
(c)  prepar ing a draf t annual work programme indicating estimat ed human and financial resources for each 
activity , and submitting it to the Manage ment Board after consultation of the Commission; 
(d)  submitting to the Managem ent Board proposals pursuant to Article 123c(2); 
(e)  prepar ing a draf t multiannual strateg ic programme, including the Offi ce's strateg y for international 
cooperation, and submitting it to the Manag ement Board after consultation of the Commission and following 
an exchange of views with the relevant committee in the European Parliament ; 
(f)  imp lementing the annual work programme and the multiannual strategic programme and repor ting to the 
Managem ent Board on their imple mentation; 
(g)  prepar ing the annual repor t on the Office's activities and presenting it to the Managem ent Board for 
appro val; 
(h)  prepar ing a draf t multiannual staff policy plan and submitting it to the Management Board after consultation 
of the Commission; 
(i)  prepar ing an action plan following-up on the conclusions of the internal or external audit repor ts and 
evaluations, as well as following up on the investigations of the OLAF, and repor ting on progress twice a 
year to the Commission and to the Manage ment Board; 24.12.2015 L 341/69 Official Jour nal of the European Union EN     (j)  prote cting the financial interests of the Union by the application of preventive measures against fraud, 
corruption and any other illegal activities, by effective chec ks and, if irregular ities are detec ted, by reco vering 
amounts wrong ly paid and, where appropr iate, by imposing effective, propor tionate and dissuasive adminis ­
trative and financial penalties; 
(k)  prepar ing an anti-fraud strateg y for the Offi ce and presenting it to the Budget Committ ee for appro val; 
(l)  in order to ensure unif orm application of the Regulation, referring, where appropr iate, to the enlarged Board 
of Appeal (“the Grand Board”) questions on a point of law, in particular if the Boards of Appeal have issued 
diverging decisions on the point ; 
(m)  drawing up estimates of the revenue and expenditure of the Offi ce and implementing the budget; 
(n)  exer cising the powers entr uste d to him in respect of staff by the Management Board under Article 124(1)(h); 
(o)  exer cising the powers conferred on him under Articles 26(3), 29(5), 30(3), 75(2), 78(5), Articles 79, 79b, 
79c, Articles 87(4), 87a(3), 88(5), Articles 88a, 89, Articles 93(4), 119(9), Article 144, Articles 144a(1) 
and 144b(2), and Article 144c in accordance with the criteria set out in this Regulation and in the acts 
adopt ed pursuant to this Regulation. 
5. The Executive Direct or shall be assisted by one or more Deputy Executive Directors. If the Executive 
Direct or is absent or indisposed, the Deputy Executive Direct or or one of the Deputy Executive Directors shall 
replace him in accordance with the procedure laid down by the Manage ment Board. 
Article 129 
Appointment and remo val of the Executiv e Directo r and extension of term of office 
1. The Executive Direct or shall be engaged as a temporar y agent of the Office under Article 2(a) of the 
Conditions of Emp loyment of Other Servants. 
2. The Executive Director shall be appointed by the Council by simple majority, from a list of candidates 
proposed by the Managem ent Board, following an open and transparent selection procedure. Before being 
appointed , the candidate select ed by the Management Board may be invit ed to make a statement before any 
compet ent European Parliament committee and to answer questions put by its members. For the purpose of 
concluding the contract with the Executive Direct or, the Office shall be represente d by the chair person of the 
Managem ent Board. 
The Executive Direct or may be remo ved from office only upon a decision of the Council acting on a proposal 
from the Manag ement Board. 
3. The term of office of the Executive Director shall be five years. By the end of that period, the Manag ement 
Board shall under take an assessment which takes into account an evaluation of the performance of the Executive 
Direct or and the Office's future tasks and challenges. 
4. The Council, taking into account the assessment refer red to in paragraph 3, may extend the term of office 
of the Executive Director once and for no more than five years. 
5. An Executive Direct or whose term of office has been extended may not participate in another selection 
procedure for the same post at the end of his overall term of office . 
6. The Deputy Executive Director or Deputy Executive Directors shall be appointed or remo ved from office as 
provided for in paragraph 2, after consultation of the Executive Direct or and, where applicable, the Executive 
Direct or-elect. The term of office of the Deputy Executive Director shall be five years. It may be extended once 
and for no more than five years by the Council, after consultation of the Executive Direct or.’. 24.12.2015 L 341/70 Official Jour nal of the European Union EN     (109) Article 130 is amended as follows: 
(a)  point (c) is replaced by the following: 
‘(c)  a depar tment in charge of the Register;’; 
(b)  the following point is added: 
‘(f)  any other unit or person appointe d by the Executive Direct or to that effect.’.  
(110) In Article 131, the reference to ‘Articles 36, 37 and 68’ is replaced by ‘Articles 36, 37, 68 and 74c’ .  
(111) In Article 132, paragraph 2 is amended as follows: 
(a)  the third sentence is replaced by the following: 
‘Decisions relating to costs or to procedures shall be taken by a sing le member .’; 
(b)  the following subparagraph is added: 
‘The Commission shall adopt implemen ting acts specifying the exact types of decisions that are to be taken by 
a sing le member . Those implementing acts shall be adop ted in accordance with the examination procedure 
refer red to in Article 163(2).’ .  
(112) Article 133 is replaced by the following: 
‘Article 133 
Depar tment in charge of the Register 
1. The Depar tment in charge of the Regist er shall be responsible for taking decisions in respect of entr ies in 
the Registe r. 
2. It shall also be responsible for keeping the list of professional representatives refer red to in Article 93(2). 
3. The decisions of the Depar tment shall be take n by a sing le member .’.  
(113) Article 134 is amended as follows: 
(a)  paragraph 1 is replaced by the following: 
‘1. A Cancellation Division shall be responsible for taking decisions in relation to: 
(a)  applications for the revocati on or a declaration of invalidity of an EU trade mark; 
(b)  requests for the assignment of an EU trade mark as provided for in Article 18.’; 
(b)  in paragraph 2, the third senten ce is replaced by the following: 
‘Decisions relating to costs or to procedures as specified in the acts adopt ed pursuant to Article 132(2) shall 
be taken by a sing le member .’.  
(114) The following article is inser ted: 
‘Article 134a 
General Competence 
Decisions required under this Regulation whic h do not fall within the compet ence of an examiner , an Opposition 
Division, a Cancellation Division or the Depar tment in charge of the Registe r, shall be taken by any official or 
unit appointed by the Executive Director for that purpose.’. 24.12.2015 L 341/71 Official Jour nal of the European Union EN     (115) Article 135 is amended as follows: 
(a)  paragraph 1 is replaced by the following: 
‘1. The Boards of Appeal shall be responsible for deciding on appeals from decisions taken pursuant to 
Articles 131 to 134a.’; 
(b)  in paragraph 2, the words ‘by an enlarg ed Board’ are replaced by the words ‘by the Grand Board’; 
(c)  paragraph 3 is replaced by the following: 
‘3. In order to deter mine the special cases which fall under the jurisdiction of the Grand Board, account 
should be take n of the legal difficulty or the importance of the case or of special circumstances which justify 
it. Such cases may be refer red to the Grand Board: 
(a)  by the author ity of the Boards of Appeal referred to in Article 136(4)(a); or 
(b)  by the Board handling the case.’; 
(d)  paragraph 4 is replaced by the following: 
‘4. The Grand Board shall also be responsible for giving reasoned opinions on questions of law refer red to 
it by the Executive Direct or pursuant to Article 128(4)(l).’; 
(e)  in paragraph 5, the last senten ce is delet ed.  
(116) Article 136 is replaced by the following: 
‘Article 136 
Independence of the members of the Boards of Appeal 
1. The President of the Boards of Appeal and the chair persons of the Boards shall be appointed, in accordance 
with the procedure laid down in Article 129 for the appointment of the Executive Director , for a term of five 
years. They shall not be remo ved from office during this term , unless there are serious grounds for such remo val 
and the Cour t of Justice, on application by the institution whic h appointed them, takes a decision to this effect. 
2. The term of office of the President of the Boards of Appeal may be extended once for one additional five- 
year period, or until retirement age if this age is reach ed during the new term of office , after a prior positive 
evaluation of his perf ormance by the Manage ment Board. 
3. The term of office of the chair persons of the Boards may be extende d for additional five-yea r periods, or 
until retirement age if this age is reac hed during the new term of office, after a prior positive evaluation of their 
performa nce by the Managem ent Board, and after consulting the President of the Boards of Appeal. 
4. The President of the Boards of Appeal shall have the following manag erial and orga nisational functions: 
(a)  chair ing the Presidium of the Boards of Appeal (“the Presidium”), responsible for laying down the rules and 
organising the work of the Boards; 
(b)  ensur ing the implementation of the decisions of the Presidium; 24.12.2015 L 341/72 Official Jour nal of the European Union EN     (c)  allocating cases to a Board on the basis of objective criteria determined by the Presidium; 
(d)  forwarding to the Executive Direct or the Boards' expenditure requirements, with a view to drawing up the 
expenditure estimates . 
The President of the Boards of Appeal shall chair the Grand Board. 
5. The members of the Boards of Appeal shall be appointed by the Management Board for a term of five years. 
Their term of office may be extended for additional five-year periods, or until retirement age if that age is reached 
during the new term of office after a prior positive evaluation of their performa nce by the Management Board, 
and after consulting the President of the Boards of Appeal. 
6. The members of the Boards of Appeal shall not be remo ved from office unless there are serious grounds for 
such remo val and the Cour t of Justice, after the case has been refer red to it by the Management Board on the 
recommendation of the President of the Boards of Appeal, and after consulting the chair person of the Board to 
whic h the member concer ned belongs, takes a decision to this effect. 
7. The President of the Boards of Appeal and the chair persons and members of the Boards of Appeal shall be 
independent. In their decisions, they shall not be bound by any instr uctions. 
8. Decisions taken by the Grand Board on appeals or opinions on questions of law refer red to it by the 
Executive Director pursuant to Article 135 shall be binding on the decision-making instances of the Office 
refer red to in Article 130. 
9. The President of the Boards of Appeal and the chair persons and members of the Boards of Appeal shall not 
be examiners or members of the Opposition Divisions, the Depar tment in charge of the Register or Cancellation 
Divisions.’.  
(117) The following article is inser ted: 
‘Article 136a 
Presidium of the Boards of Appeal and Grand Board 
1. The Presidium shall comprise the President of the Boards of Appeal, who shall chair it, the chair men of the 
Boards and Board members elect ed for each calendar year by and from among all the members of the Boards 
other than the President of the Boards of Appeal and the chair men of the Boards. The number of Board members 
so elect ed shall constitute a quar ter of the number of Board members, other than the President of the Boards of 
Appeal and the chair men of the Boards, and that number shall be rounded up if necessar y. 
2. The Grand Board refer red to in Article 135(2) shall compris e nine members, including the President of the 
Boards of Appeal, the chair men of the Boards, the rappor teur designate d prior to refer ral to the Grand Board, if 
applicable, and members drawn in rotation from a list compris ing the names of all members of the Boards of 
Appeal other than the President of the Boards of Appeal and the chair men of the Boards.’ .  
(118) The following article is inser ted: 
‘Article 136b 
Delegation of powers 
The Commission shall be empowered to adop t delegat ed acts in accordance with Article 163a specifying the 
details concer ning the organisation of the Boards of Appeal, including the setting up and the role of the 
Presidium, the composition of the Grand Board and the rules on referrals to it, and the conditions under whic h 
decisions are to be taken by a sing le member in accordance with Article 135(2) and (5).’. 24.12.2015 L 341/73 Official Jour nal of the European Union EN     (119) The following article is inser ted: 
‘Article 137a 
Mediation centre 
1. For the purposes of Article 123b(3), the Office may establish a Mediation Centre (“the Centre”). 
2. Any natural or legal person may use the Centre's services on a voluntary basis with the aim of reaching a 
friendly settlement of disputes, based on this Regulation or Regulation (EC) No 6/2002, by mutual agreement. 
3. The parties shall have recourse to mediation by means of a joint request. The request shall not be deemed to 
have been filed until the corresponding charge has been paid. The Executive Direct or shall fix the amount to be 
charged in accordance with Article 144(1). 
4. In the case of disputes subject to the proceedings pending before the Opposition Divisions, Cancellation 
Divisions or before the Boards of Appeal of the Office a joint request for mediation may be present ed at any time 
after the lodging of a notice of opposition, an application for revocat ion or an application for a declaration of 
invalidity or a notice of appeal against decisions of the Opposition or Cancellation Divisions. 
5. The proceedings in question shall be suspended and the time periods, other than the time periods for the 
payment of the applicable fee, shall be interr upted as from the date of the filing of a joint request for mediation. 
The time periods shall continue as from the day on whic h the proceedings are resumed. 
6. The parties shall be invited to jointly appoint, from the list refer red to in paragraph 12, a mediator who has 
declared that he has a command of the language of the mediation in question. Where the parties do not appoint 
a mediat or within 20 days of the invitation to do so, the mediation shall be deemed to have failed. 
7. The parties shall agree together with the mediator on the detailed arrangements for the mediation in a 
mediation agreement. 
8. The mediator shall conclude the mediation proceedings as soon as the parties reac h a settlement agreement, 
or one of the parties declares that it wishes to end the mediation or the mediator establishes that the parties have 
failed to reach such an agreement. 
9. The mediator shall inform the parties as well as the relevant instance of the Office as soon as the mediation 
proceedings have been concluded. 
10. The discussions and negotiations conduct ed within the framew ork of mediation shall be conf idential for all 
persons involved in the mediation, in particular for the mediat or, the parties and their representatives. All 
documents and information submitt ed during the mediation shall be kept separately from, and shall not be part 
of, the file of any other proceedings before the Office. 
11. The mediation shall be conducted in one of the official language s of the Union to be agreed upon by the 
parties. Where the mediation relates to disputes pending before the Offi ce, the mediation shall be conducted in 
the language of the Offi ce proceedings, unless other wise agreed by the parties. 
12. The Office shall establish a list of mediator s who shall suppor t parties in resolving dispute s. The mediat ors 
shall be independent and possess relevant skills and exper ience. The list may include mediators who are employed 
by the Office, and mediator s who are not so employed. 24.12.2015 L 341/74 Official Jour nal of the European Union EN     13. Mediators shall be impar tial in the exer cise of their duties and shall declare any real or perceived conf lict 
of interest upon their designation. Members of the decision-making instances of the Office listed in Article 130 
shall not take part in mediation concer ning a case in which they have: 
(a)  had any prior involvement in the proceedings referred to mediation; 
(b)  any personal interest in those proceedings; or 
(c)  been previously involved as a representative of one of the parties. 
14. Mediators shall not take part as members of the decision-making instances of the Offi ce listed in 
Article 130 in proceedings resumed as a consequence of a mediation failure. 
15. The Office may cooperat e with other recognised national or internatio nal bodies dealing with mediation.’ .  
(120) Article 138 is replaced by the following: 
‘Article 138 
Budget Committee 
1. The Budget Committ ee shall have the functions assigned to it in this Section. 
2. Articles 125 and 126, Article 127(1) to (4), and (5), in so far as it relat es to the election of the chair person 
and deputy chair person, (6) and (7) shall apply to the Budge t Committ ee, mutatis mutandis. 
3. The Budget Committee shall take its decisions by an absolute majority of its members. However , a major ity 
of two- thirds of its members shall be required for the decisions which the Budget Committ ee is empo wered to 
take under Article 140(3) and Article 143. In both cases each member shall have one vote.’ .  
(121) Article 139 is replaced by the following: 
‘Article 139 
Budget 
1. Estimate s of all the Offi ce's revenue and expenditure shall be prepared for each financial year and shall be 
shown in the Offi ce's budget. Each financial year shall correspond to the calendar year. 
2. The revenue and expenditure shown in the budget shall be in balance. 
3. Revenue shall compris e, without prejudice to other types of income, total fees payable under Annex -I to 
this Regulation, total fees as provided for in Regulation (EC) No 6/2002, total fees payable, under the Madr id 
Protocol referred to in Article 145 of this Regulation, for an international registration designating the Union and 
other payments made to Contracting Parties to the Madr id Protocol, total fees payable, under the Geneva Act 
refer red to in Article 106c of Regulation (EC) No 6/2002, for an intern ational registration designating the Union 
and other payments made to Contracting Parties to the Geneva Act, and, to the exte nt necessar y, a subsidy 
entered against a specifi c heading of the Commission section of the general budget of the Union. 
4. Ever y year the Offi ce shall offset the costs incur red by the central industr ial proper ty office s of the Member 
States, by the Benelux Offi ce for Intellectua l Proper ty and by any other relevant author ity to be nominated by a 
Member State, as the result of the specific tasks whic h they carry out as functional parts of the EU trade mark 
system in the context of the following services and procedures: 
(a)  opposition and invalidity proceedings before the central industr ial proper ty offices of the Member States and 
the Benelux Offi ce for Intellectual Proper ty involving EU trade marks ; 
(b)  provision of information on the functioning of the EU trade mark syste m through helpdesks and information 
centres; 
(c)  enforcement of EU trade marks , including action taken pursuant to Article 9(4). 24.12.2015 L 341/75 Official Jour nal of the European Union EN     5. The overall offsetting of the costs identif ied in paragraph 4 shall correspond to 5 % of the yearly revenue of 
the Office. Without prejudice to the third subparagraph of this paragraph, on a proposal by the Office and after 
having consulted the Budget Committ ee, the Management Board shall deter mine the distr ibution key on the basis 
of the following fair, equitable and relevant indicators : 
(a)  the annual number of EU trade mark applications originating from applicants in each Member State; 
(b)  the annual number of national trade mark applications in each Member State; 
(c)  the annual number of oppositions and applications for a declaration of inva lidity submitted by propr ietors of 
EU trade marks in each Member State; 
(d)  the annual number of cases brought before the EU trade mark cour ts designate d by each Member State in 
accordance with Article 95. 
For the purpose of substantiating the costs referred to in paragraph 4, Member State s shall submit to the Offi ce 
by 31 Marc h of each year , statistical data demonstrating the figur es refer red to in points (a) to (d) of the first 
subparagraph of this paragraph for the preceding year, which shall be included in the proposal to be made to the 
Managem ent Board. 
On grounds of equity , the costs incur red by the bodies refer red to in paragraph 4 in each Member State shall be 
deemed to correspond to at least 2 % of the total offsetting provided for under this paragraph. 
6. The obligation by the Office to offset the costs refer red to in paragraph 4 and incur red in a given year shall 
only apply to the extent that no budgetary deficit occurs in that year. 
7. In the event of a budgetary surplus, and without prejudice to paragraph 10, on a proposal by the Offi ce and 
after having consulted the Budget Committ ee, the Management Board may increase the percentage laid down in 
paragraph 5 to a maximum of 10 % of the yearly revenue of the Offi ce. 
8. Without prejudice to paragraphs 4 to 7 and paragraph 10 of this Article and to Articles 123b and 123c, 
where a substantive surplus is generat ed over five consecutive years, the Budget Committ ee, upon a proposal 
from the Office and in accordance with the annual work programme and multiannual strateg ic programme 
refer red to in Article 124(1)(a) and (b), shall decide by a two-thirds majority on the transfer to the budget of the 
Union of a surplus generat ed from 23 Marc h 2016. 
9. The Offi ce shall prepare on a biannual basis a repor t for the European Parliament, the Council and the 
Commission on its financial situation, including on the financial operations perf ormed under Article 123c(5) 
and (6), and Article 139(5) and (7). On the basis of that repor t, the Commission shall review the financial 
situation of the Office. 
10. The Offi ce shall provide for a reser ve fund covering one year of its operational expenditure to ensure the 
continuity of its operations and the execut ion of its tasks. ’.  
(122) The following article is inser ted: 
‘Article 141a 
Combating fraud 
1. In order to facilitate combating fraud, corrupti on and other unlawful activities under Regulation (EU, 
Eurat om) No 883/2013 of the European Parliament and of the Council (*), the Office shall accede to the Inter - 
institutional Agreement of 25 May 1999 concer ning internal investigations by the European Anti-fraud Offi ce 
(OLAF), and adopt the appropr iate provisions applicable to all the employees of the Office using the template set 
out in the Annex to that Agreement. 24.12.2015 L 341/76 Official Jour nal of the European Union EN     2. The European Cour t of Audit ors shall have the power of audit, on the basis of documents and on the spot, 
over all grant beneficiar ies, contractors and subcontract ors who have received Union funds from the Office. 
3. OLAF may carry out investig ations, including on-the-spot chec ks and inspections, in accordance with the 
provisions and procedures laid down in Regulation (EU, Euratom ) No 883/2013 and Council Regulation 
(Euratom, EC) No 2185/96 (**) with a view to establishing whether there has been fraud, corruption or any other 
illegal activity affecting the financia l interests of the Union in connection with a grant or a contract funded by the 
Offi ce. 
4. Without prejudice to paragraphs 1, 2 and 3, cooperation agreements with third countr ies and international 
organisations, contracts, grant agreements and grant decisions of the Office shall contain provisions expressly 
empo wering the European Cour t of Audit ors and OLAF to conduct such audits and investigations, in accordance 
with their respective compet ences. 
5. The Budget Committ ee shall adop t an anti-fraud strategy which is propor tionat e to the fraud risks having 
regar d to the cost-benefit of the measures to be implement ed.  
(*)Regulation (EU, Eurat om) No 883/2013 of the European Parliament and of the Council of 11 Septembe r 
2013 concer ning investig ations conduct ed by the European Anti-Fraud Offi ce (OLAF) and repealing 
Regulation (EC) No 1073/1999 of the European Parliament and of the Council and Council Regulation 
(Eurat om) No 1074/1999 (OJ L 248, 18.9.2013, p. 1). 
(**) Council Regulation (Eurat om, EC) No 2185/96 of 11 November 1996 concer ning on-the-spot checks and 
inspections carried out by the Commission in order to protect the European Communities' financial interests 
against fraud and other irregular ities (OJ L 292, 15.11.1996, p. 2).’.  
(123) Article 144 is replaced by the following: 
‘Article 144 
Fees and charges and due date 
1. The Executive Direct or shall lay down the amount to be charg ed for any services rendered by the Offi ce 
other than those set out in Annex -I, as well as the amount to be charged for the European Union Trade Marks 
Bulletin, the Official Jour nal of the Offi ce and any other publications issued by the Offi ce. The amounts of 
charges shall be set in euros and shall be published in the Offi cial Jour nal of the Office. The amount of each 
charge shall not excee d what is necessar y to cover the costs of the specific service rendered by the Office. 
2. Fees and charges in respect of whic h the due date is not specifi ed in this Regulation shall be due on the date 
of receipt of the request for the service for whic h the fee or the charge is incur red. 
With the consent of the Budge t Committee, the Executive Director may determine which of the services 
mentioned in the first subparagraph are not to be dependent upon the advance payment of the corresponding 
fees or charges.’ .  
(124) The following articles are inser ted: 
‘Article 144a 
Payment of fees and charges 
1. Fees and charges due to the Office shall be paid by payment or transfer to a bank account held by the 
Offi ce. 
With the consent of the Budget Committ ee, the Executive Director may establish which specific methods of 
payment other than those set out in the first subparagraph, in particular by means of deposits in current accounts 
held with the Offi ce, may be used. 24.12.2015 L 341/77 Official Jour nal of the European Union EN     Determinations made pursuant to the second subparagraph shall be published in the Official Jour nal of the 
Offi ce. 
All payments, including by any other method of payment established pursuant to the second subparagraph, shall 
be made in euros. 
2. Ever y payment shall indicate the name of the person making the payment and shall contain the necessar y 
information to enable the Office to establish immediately the purpose of the payment. In particular , the following 
information shall be provided: 
(a)  when the application fee is paid, the purpose of the payment, namely “application fee”; 
(b)  when the opposition fee is paid, the file number of the application and the name of the applicant for the EU 
trade mark against which opposition is entered, and the purpose of the payment, namely “opposition fee”; 
(c)  when the revocation fee and the invalidity fee are paid, the registration number and the name of the 
propr ietor of the EU trade mark against which the application is direct ed, and the purpose of the payment, 
namely “revoca tion fee” or “invalidity fee”. 
3. If the purpose of the payment referred to in paragraph 2 cannot immediately be established, the Offi ce shall 
require the person making the payment to notify it in writing of this purpose within such period as it may 
specify . If the person does not compl y with this request in due time, the payment shall be considered not to have 
been made. The amount whic h has been paid shall be refunded. 
Article 144b 
Deemed date of payment 
1. In the cases referred to in the first subparagraph of Article 144a(1), the date on whic h the payment shall be 
considered to have been made to the Office shall be the date on which the amount of the payment or of the 
transfer is actually entered in a bank account held by the Offi ce. 
2. Where the methods of payment referred to in the second subparagraph of Article 144a(1) may be used, the 
Executive Director shall establish the date on whic h such payments are to be considered to have been made. 
3. Where, under paragraphs 1 and 2, payment of a fee is not considered to have been made until after the 
expir y of the period in whic h it was due, it shall be considered that this period has been obser ved if evidence is 
provided to the Office that the persons who made the payment in a Member State, within the period within 
whic h the payment should have been made, duly gave an order to a banking establishment to transfer the 
amount of the payment, and paid a surc harge of 10 % of the relevant fee or fees, but not exceed ing EUR 200. No 
surch arge shall be payable if the relevant order to the banking establishment has been given not later 
than 10 days before the expir y of the period for payment. 
4. The Offi ce may request the person who made the payment to produce evidence as to the date on whic h the 
order to the banking establishment as referred to in paragraph 3 was given and, where required, to pay the 
relevant surc harge within a period to be specified by it. If the person fails to comply with that request or if the 
evidence is insufficient, or if the required surcharg e is not paid in due time, the period for payment shall be 
considered not to have been obser ved. 
Article 144c 
Insuff icient pay ments and refund of insignif icant amounts 
1. A time limit for payment shall, in principle, be considered to have been obser ved only if the full amount of 
the fee has been paid in due time. If the fee is not paid in full, the amount which has been paid shall be refunded 
after the period for payment has expired. 24.12.2015 L 341/78 Official Jour nal of the European Union EN     2. The Offi ce may, however , in so far as is possible within the time remaining before the end of the period, 
give the person making the payment the oppor tunity to pay the amount lacking or, where this is considered 
justified, overlook any small amounts lacking, without prejudice to the rights of the person making the payment. 
3. With the consent of the Budge t Committee, the Executive Direct or may waive action for the enforced 
reco very of any sum due where the sum to be reco vered is minimal or where such reco very is too uncer tain. 
4. Where an excessive sum is paid to cover a fee or a charge, the exces s shall not be refunded if the amount is 
insignif icant and the party concer ned has not expressly request ed a refund. 
With the consent of the Budget Committ ee the Executive Director may determine the amount belo w which an 
excess ive sum paid to cover a fee or a charge shall not be refunded. 
Determinations pursuant to the second subparagraph shall be published in the Official Jour nal of the Offi ce.’.  
(125) In Article 145, the words ‘its Implementing Regulations ’ are replaced by ‘the acts adopt ed pursuant to this 
Regulation’.  
(126) Article 147 is amended as follows: 
(a)  in paragraph 1, the following sentence is inser ted after the first senten ce: 
‘The Offi ce shall inform the applicant filing the international application of the date on which the documents 
making up the international application are received by the Office.’; 
(b)  paragraphs 3 to 6 are replaced by the following: 
‘3. Where the international application is filed in a languag e other than one of the languag es allowed 
under the Madr id Protocol for the filing of intern ational applications, the applicant may provide a translation 
of the list of goods or services and of any other textual elements forming part of the internatio nal application 
in the language in which the international application is to be submitted to the Internati onal Bureau pursuant 
to paragraph 2. If the application is not accompan ied by such translation, the applicant shall author ise the 
Offi ce to include that translation in the intern ational application. Where the translation has not yet been 
established in the course of the registration procedure for the EU trade mark application on which the inter ­
national application is based, the Offi ce shall, without dela y, arrange for the translation. 
4. The filing of an intern ational application shall be subject to the payment of a fee to the Office. Where 
the internati onal registration is to be based on an EU trade mark once it is registere d, the fee shall be due on 
the date of registration of the EU trade mark. The application shall be deemed not to have been filed until the 
required fee has been paid. Where the fee has not been paid, the Office shall inform the applicant according ly. 
In the event of electronic filing, the Offi ce may author ise the International Bureau to collect the fee on its 
behalf. 
5. Where the examination of the intern ational application reveals any of the following deficien cies, the 
Offi ce shall invit e the applicant to remedy those deficienc ies within such period as it may specify: 
(a)  the internati onal application has not been filed using the form referred to in paragraph 1, and does not 
contain all the indications and information required by that form; 
(b)  the list of goods and services contained in the intern ational application is not covered by the list of goods 
and services appear ing in the basic EU trade mark application or basic EU trade mark; 
(c)  the mark whic h is subject to the international application is not identical with the mark as it appears in 
the basic EU trade mark application or basic EU trade mark; 24.12.2015 L 341/79 Official Jour nal of the European Union EN     (d)  an indication in the internatio nal application as to the trade mark, other than a disclaimer or a colour 
claim, does not also appear in the basic EU trade mark application or basic EU trade mark; 
(e)  where colour is claimed in the international application as a distinctive feature of the mark, the basic EU 
trade mark application or basic EU trade mark is not in the same colour or colours; or 
(f) according to the indications made in the internati onal form, the applicant is not eligible to file an internat ­
ional application through the Office in accordance with Article 2(1)(ii) of the Madr id Protocol . 
6. Where the applicant has failed to author ise the Office to include a translation as provided for in 
paragraph 3, or where it is other wise unclear on which list of goods and services the intern ational application 
is to be based, the Offi ce shall invit e the applicant to make the required indications within such period as it 
may specify .’; 
(c)  the following paragraphs are added: 
‘7. If the deficiencies referred to in paragraph 5 are not remedied or the required indications refer red to in 
paragraph 6 are not given within the period fixed by the Office, the Offi ce shall refuse to forward the internat ­
ional application to the Internati onal Bureau. 
8. The Office shall forward the internati onal application to the International Bureau along with the certifi­
cation provided for under Article 3(1) of the Madr id Protocol as soon as the international application meets 
the requirements laid down in this Article, the imp lementing act adopt ed pursuant to paragraph 9 of this 
Article, and in Article 146 of this Regulation. 
9. The Commission shall adopt implementing acts specifying the exact form, including the elements 
thereof, to be used for the filing of an intern ational application pursuant to paragraph 1. Those imple menting 
acts shall be adopt ed in accordance with the examination procedure refer red to in Article 163(2).’ .  
(127) The following article is inser ted: 
‘Article 148a 
Notif ication of the invalidity of the basic application or registrat ion 
1. Within a period of five years of the date of the internati onal registration, the Offi ce shall notify the Internat­
ional Bureau of any facts and decisions affecting the validity of the EU trade mark application or the EU trade 
mark registration on which the international registration was based. 
2. The Commission shall adopt implementing acts specifying the individual facts and decisions subject to the 
notificati on oblig ation in accordance with Article 6(3) of the Madr id Protocol as well as the relevant point in time 
of such notifications. Those implementing acts shall be adopt ed in accordance with the examination procedure 
refer red to in Article 163(2) of this Regulation.’ .  
(128) Article 149 is replaced by the following: 
‘Article 149 
Request for territor ial extension subsequent to inter national regis tration 
1. A request for territori al extensi on made subsequent to an internati onal registration pursuant to 
Article 3ter(2) of the Madr id Protocol may be filed through the interm ediar y of the Offi ce. The request shall be 
filed in the languag e in whic h the internatio nal application was filed pursuant to Article 147 of this Regulation. It 
shall include indications to substantiate the entitlement to make a designation in accordance with Article 2(1)(ii) 
and Article 3ter(2) of the Madr id Protocol . The Office shall inform the applicant requesting the territori al 
extensi on of the date on which the request for territorial extension was received. 24.12.2015 L 341/80 Official Jour nal of the European Union EN     2. The Commission shall adopt implementing acts specifying the detailed requirements regarding the request 
for territori al extension pursuant to paragraph 1 of this Article. Those imple menting acts shall be adopt ed in 
accordance with the examination procedure referred to in Article 163(2). 
3. Where the request for territorial exte nsion made subsequent to the intern ational registration does not 
compl y with the requirements set out in paragraph 1 and in the implementing act adopt ed pursuant to 
paragraph 2, the Offi ce shall invite the applicant to remedy the deficiencies found within such time limit as it 
may specify . If the deficiencies are not remedied within the time limit fixed by the Offi ce, the Office shall refuse 
to forward the request to the Intern ational Bureau. The Office shall not refuse to forward the request to the Inter ­
national Bureau before the applicant has had the oppor tunity to correct any deficiency detec ted in the request. 
4. The Offi ce shall forward the request for territorial extension made subsequent to the international 
registration to the Internati onal Bureau as soon as the requirements refer red to in paragraph 3 are compl ied 
with.’ .  
(129) Article 153 is replaced by the following: 
‘Article 153 
Senior ity claimed in an inter national application 
1. The applicant for an international registration designating the Union may claim, in the international 
application, the senior ity of an earlier trade mark registere d in a Member State, including a trade mark registere d 
in the Benelux countr ies, or registered under internati onal arrang ements having effect in a Member State, as 
provided for in Article 34. 
2. The documentation, as specif ied in the implementing act adopt ed pursuant to Article 34(5), in suppor t of 
the senior ity claim shall be submitte d within three months of the date on whic h the Internati onal Bureau notifies 
the internati onal registration to the Offi ce. In this regard, Article 34(6) shall apply . 
3. Where the holder of the intern ational registration is oblig ed to be represent ed before the Offi ce pursuant to 
Article 92(2), the communication as refer red to in paragraph 2 of this Article shall contain the appointment of a 
representative within the meaning of Article 93(1). 
4. Where the Office finds that the senior ity claim under paragraph 1 of this Article does not comply with 
Article 34, or does not compl y with the other requirements laid down in this Article, it shall invite the applicant 
to remedy the deficiencies. If the requirements referred to in the first sente nce are not satisfi ed within the time 
limit specifi ed by the Office, the right of senior ity in respect of that intern ational registration shall be lost. If the 
deficien cies concer n only some of the goods and services, the right of senior ity shall be lost only in so far as 
those goods and services are concer ned. 
5. The Office shall inform the Internatio nal Bureau of any declaration of a loss of the right of senior ity 
pursuant to paragraph 4. It shall also inform the International Bureau of any withdrawal or restr iction of the 
senior ity claim. 
6. Article 34(4) shall apply , unless the right of senior ity is declared lost pursuant to paragraph 4 of this 
Article.’.  
(130) The following article is inser ted: 
‘Article 153a 
Senior ity claimed before the Office 
1. The holder of an international registration designating the Union may, as from the date of publication of the 
effects of such registration pursuant to Article 152(2), claim at the Office the senior ity of an earlier trade mark 
register ed in a Member State , including a trade mark register ed in the Benelux countr ies, or register ed under inter ­
national arrange ments having effect in a Member State , as provided for in Article 35. 24.12.2015 L 341/81 Official Jour nal of the European Union EN     2. When the senior ity is claimed before the date referred to in paragraph 1, the senior ity claim shall be 
deemed to have been received by the Offi ce on that date. 
3. A senior ity claim under paragraph 1 of this Article shall fulfil the requirements referred to in Article 35 and 
shall contain information to enable its examination against those requirements. 
4. If the requirements governing the claiming of senior ity referred to in paragraph 3 and specifi ed in the 
implementing act adopt ed pursuant to paragraph 6 are not fulfilled, the Office shall invit e the holder of the inter ­
national registration to remedy the deficien cies. If the deficiencies are not remedied within a period to be 
specified by the Offi ce, the Offi ce shall reject the claim. 
5. Where the Office has accept ed the senior ity claim, or where a senior ity claim has been withdrawn or 
cancelled by the Offi ce, the Offi ce shall inform the International Bureau according ly. 
6. The Commission shall adop t implementing acts specifying the details to be contained in a senior ity claim 
under paragraph 1 of this Article and the details of the information to be notifi ed pursuant to paragraph 5 of this 
Article. Those implementing acts shall be adopt ed in accordance with the examination procedure referred to in 
Article 163(2).’.  
(131) Article 154 is replaced by the following: 
‘Article 154 
Designation of goods and services and examination as to absolute grounds for refusal 
1. International registrations designating the Union shall be subject to examination as to their conf ormity with 
Article 28(2) to (4) and to absolute grounds for refusal in the same way as applications for EU trade marks . 
2. Where an international registration designating the Union is found to be ineligible for prot ection pursuant 
to Article 28(4) or Article 37(1) of this Regulation for all or any part of the goods and services for whic h it has 
been registere d by the International Bureau, the Offi ce shall issue an ex officio provisional notificati on of refusal to 
the Internati onal Bureau, in accordance with Article 5(1) and (2) of the Madr id Protocol . 
3. Where the holder of an intern ational registration is oblig ed to be represented before the Offi ce pursuant to 
Article 92(2), the notifi cation referred to in paragraph 2 of this Article shall contain an invitation to appoint a 
representative within the meaning of Article 93(1). 
4. The notification of provisional refusal shall state the reasons on which it is based, and shall specify a time 
period by which the holder of the internati onal registration may submit his obser vations and, if appropr iate, shall 
appoint a representative. The time period shall start on the day on whic h the Offi ce issues the provisional refusal. 
5. Where the Office finds that the international application designating the Union does not contain the 
indication of a second languag e pursuant to Article 161b of this Regulation, the Office shall issue an ex officio 
provisional notifi cation of refusal to the International Bureau pursuant to Article 5(1) and (2) of the Madr id 
Protocol . 
6. Where the holder of an internati onal registration fails to overcome the ground for refusing prot ection 
within the time limit or, if appropr iate, to appoint a representative or to indicate a second languag e, the Offi ce 
shall refuse the protection in whole or for part of the goods and services for which the internati onal registration 
is registere d. The refusal of prot ection shall take the place of a refusal of an EU trade mark application. The 
decision shall be subject to appeal in accordance with Articles 58 to 65. 24.12.2015 L 341/82 Official Jour nal of the European Union EN     7. Where, as of the start of the opposition period refer red to in Article 156(2), the Offi ce has not issued an ex 
officio provisional notific ation of refusal pursuant to paragraph 2 of this Article, it shall send a statement to the In­
ternati onal Bureau, indicating that the examination of absolute grounds of refusal pursuant to Article 37 has been 
compl eted but that the intern ational registration is still subject to oppositions or obser vations of third parties. 
This interim state ment shall be without prejudice to the right of the Office to re-open the examination of absolute 
grounds on its own initiative any time before the final statement of grant of protection has been issued. 
8. The Commission shall adop t implementing acts specifying the details to be contained in the notifi cation of 
ex officio provisional refusal of protection to be sent to the International Bureau and in the final communications 
to be sent to the International Bureau on the final grant or refusal of prot ection. Those implementing acts shall be 
adopt ed in accordance with the examination procedure refer red to in Article 163(2).’.  
(132) The following article is inser ted: 
‘Article 154a 
Collectiv e and certification marks 
1. Where an internatio nal registration is based on a basic application or basic registration relating to a 
collective mark, certification mark or guarant ee mark, the international registration designating the Union shall be 
dealt with as an EU collective mark or as an EU certificat ion mark, which ever is applicable. 
2. The holder of the internatio nal registration shall submit the regulations governing the use of the mark, as 
provided for in Articles 67 and 74b, directly to the Office within two months of the date on whic h the Internat­
ional Bureau notifies the international registration to the Office. 
3. The Commission shall be empo wered to adopt delegat ed acts in accordance with Article 163a specifying the 
details of the procedure concer ning international registrations based on a basic application or basic registration 
relating to a collective mark, certification mark or guarant ee mark. ’.  
(133) Article 155 is amended as follows: 
(a)  in paragraph 1, the following clause is added: 
‘pro vided that a request for a search repor t, pursuant to Article 38(1), is made to the Office within one month 
of the date of notifi cation.’; 
(b)  in paragraph 2, the following clause is added: 
‘pro vided that a request for a search repor t, pursuant to Article 38(2), is made to the Office within one month 
of the date of notifi cation and the searc h fee is paid within the same period.’; 
(c)  in paragraph 4, the following sentence is added: 
‘This shall apply whether or not the holder of the international registration has requested to receive the EU 
searc h repor t, unless the propr ietor of an earlier registration or application requests not to receive the 
notific ation.’.  
(134) Article 156 is amended as follows: 
(a)  paragraph 2 is replaced by the following: 
‘2. Notice of opposition shall be filed within a period of three months whic h shall begin one month 
following the date of the publication pursuant to Article 152(1). The opposition shall not be considered as 
duly entered until the opposition fee has been paid.’; 24.12.2015 L 341/83 Official Jour nal of the European Union EN     (b)  paragraph 4 is replaced by the following: 
‘4. The Commission shall be empowered to adopt delegat ed acts in accordance with Article 163a 
specifying the procedure for the filing and examination of an opposition, including the necessar y communi ­
cations to be made to the International Bureau.’ .  
(135) In Article 158, the following paragraphs are added: 
‘3. Where pursuant to Article 57 or Article 100 of this Regulation and this Article, the effects of an intern at­
ional registration designating the Union have been declared invalid by means of a final decision, the Office shall 
notify the Intern ational Bureau in accordance with Article 5(6) of the Madr id Protocol. 
4. The Commission shall adop t implementing acts specifying the details to be contained in the notifi cation to 
be made to the International Bureau pursuant to paragraph 3 of this Article. Those implementing acts shall be 
adopt ed in accordance with the examination procedure refer red to in Article 163(2).’.  
(136) The following articles are inser ted: 
‘Article 158a 
Legal effect of regis tration of transfer s 
The recordal of a change in the ownership of an intern ational registration on the International Regist er shall have 
the same effect as the entr y of a transfer in the Registe r pursuant to Article 17. 
Article 158b 
Legal effect of regis tration of licences and other rights 
The recordal of a licence or a restr iction of the holder's right of disposal in respect of an internati onal registration 
in the Internati onal Regist er shall have the same effect as the registration of a right in rem, a levy of execution, 
insolvency proceedings or a licence in the Registe r pursuant to Articles 19, 20, 21 and 22 respectively . 
Article 158c 
Exa mination of reques ts for registration of transfers, licences or restrictions of a holder's right of 
disposal 
The Office shall transmit requests to register a chang e in ownership, a licence or a restr iction of the holder's right 
of disposal, the amendment or cancellation of a licence or the remo val of a restr iction of the holder's right of 
disposal which have been filed with it to the Internati onal Bureau, if accompan ied by appropr iate proof of the 
transfer , licence, or the restr iction of the right of disposal, or by proof that the licence no long er exists or that it 
has been amended, or that the restr iction of the right of disposal has been remo ved.’.  
(137) Article 159 is amended as follows: 
(a)  in paragraph 1, point (b) is replaced by the following: 
‘(b)  into a designation of a Member State party to the Madr id Protocol , provided that on the date when 
conver sion was request ed it was possible to have designat ed that Member State directly under the Madr id 
Protocol . Articles 112, 113 and 114 of this Regulation shall apply .’; 24.12.2015 L 341/84 Official Jour nal of the European Union EN     (b)  paragraph 2 is replaced by the following: 
‘2. The national trade mark application or the designation of a Member State party to the Madr id Protocol 
resulting from the conversion of the designation of the Union through an international registration shall 
enjo y, in respect of the Member State concer ned, the date of the intern ational registration pursuant to 
Article 3(4) of the Madr id Protocol or the date of the extension to the Union pursuant to Article 3ter(2) of the 
Madr id Protocol , if the latter was made subsequent to the internati onal registration, or the date of priority of 
that registration and, where appropr iate, the senior ity of a trade mark of that State claimed under Article 153 
of this Regulation.’; 
(c)  the following paragraphs are added: 
‘4. The request for conversion of an international registration designating the Union into a national trade 
mark application shall include the information and indications refer red to in Article 113(1). 
5. Where conversion is request ed pursuant to this Article and Article 112(5) of this Regulation following a 
failure to renew the internati onal registration, the request refer red to in paragraph 4 of this Article shall 
contain an indication to that effect and the date on whic h the prot ection expired. The period of three months 
provided for in Article 112(5) of this Regulation shall begin to run on the day following the last day on 
which the renewal may still be effected pursuant to Article 7(4) of the Madr id Protocol . 
6. Article 113(3) and (5) shall apply to the request for conver sion referred to in paragraph 4 of this Article 
mutatis mutandis. 
7. The request for conversion of an international registration designating the Union into a designation of a 
Member State party to the Madr id Prot ocol shall include the indications and elements referred to in 
paragraphs 4 and 5. 
8. Article 113(3) shall apply to the request for convers ion refer red to in paragraph 7 of this Article mutatis 
mutandis. The Office shall also reject the request for conversion where the conditions to designat e the Member 
State whic h is a party to the Madr id Protocol or to the Madr id Agreement were fulfilled neither on the date of 
the designation of the Union nor on the date on which the application for conversion was received or, 
pursuant to the last senten ce of Article 113(1), is deemed to have been received by the Office. 
9. Where the request for conver sion refer red to in paragraph 7 complies with the requirements of this 
Regulation and rules adopt ed pursuant to it, the Office shall transmit the request without dela y to the Inter­
national Bureau. The Office shall inform the holder of the internatio nal registration of the date of 
transmission. 
10. The Commission shall adopt implementing acts specifying: 
(a)  the details to be contained in the requests for conversion referred to in paragraphs 4 and 7; 
(b)  the details to be contained in the publication of the requests for conversion pursuant to paragraph 3. 
Those implementing acts shall be adopt ed in accordance with the examination procedure refer red to in 
Article 163(2).’.  
(138) In Article 161, the following paragraphs are added: 
‘3. In order to be considered a transf ormation of an internatio nal registration whic h has been cancelled at the 
request of the office of origin by the Intern ational Bureau pursuant to Article 9quinquies of the Madr id Protocol , 
an EU trade mark application shall contain an indication to that effect. That indication shall be made when filing 
the application. 24.12.2015 L 341/85 Official Jour nal of the European Union EN     4. Where, in the course of the examination in accordance with Article 36(1)(b), the Offi ce finds that the 
application was not filed within three months of the date on which the internati onal registration was cancelled by 
the International Bureau; or the goods and services for which the EU trade mark is to be register ed are not 
contained in the list of goods and services for whic h the international registration was registered in respect of the 
Union, the Office shall invit e the applicant to remedy the deficiencies. 
5. If the deficien cies refer red to in paragraph 4 are not remedied within the time period specifi ed by the Office, 
the right to the date of the intern ational registration or the territorial extension and, if any, of the priority of the 
internatio nal registration shall be lost. 
6. The Commission shall adopt implementing acts specifying the details to be contained in an application for 
transf ormation pursuant to paragraph 3 of this Article. Those implementing acts shall be adopt ed in accordance 
with the examination procedure refer red to in Article 163(2).’.  
(139) The following articles are inser ted: 
‘Article 161a 
Communication with the Inter national Bureau 
Communication with the Internati onal Bureau shall be in a manner and format agreed on between the Internat­
ional Bureau and the Offi ce, and preferably be by electronic means. Any referen ce to forms shall be constr ued as 
including forms made available in electronic format. 
Article 161b 
Use of languages 
For the purpose of applying this Regulation, and rules adopt ed pursuant to it, to intern ational registrations 
designating the Union, the language of filing of the international application shall be the languag e of the 
proceedings within the meaning of Article 119(4), and the second language indicated in the internatio nal 
application shall be the second languag e within the meaning of Article 119(3).’.  
(140) Article 162 is delet ed.  
(141) Article 163 is replaced by the following: 
‘Article 163 
Committee Procedure 
1. The Commission shall be assisted by a Committ ee on Implementation Rules. That committee shall be a 
committee within the meaning of Regulation (EU) No 182/2011 of the European Parliament and of the 
Council (*). 
2. Where reference is made to this paragraph, Article 5 of Regulation (EU) No 182/2011 shall apply .  
(*)Regulation (EU) No 182/2011 of the European Parliament and of the Council of 16 Febr uary 2011 laying 
down the rules and general principles concer ning mechanisms for control by the Member States of the 
Commission's exercise of implementing powers (OJ L 55, 28.2.2011, p. 13).’.  
(142) The following article is inser ted: 
‘Article 163a 
Exercise of the delegation 
1. The power to adopt delega ted acts is conferr ed on the Commission subject to the conditions laid down in 
this Article. 24.12.2015 L 341/86 Official Jour nal of the European Union EN     2. The delega tion of power refer red to in Article 42a, Article 43(3), Articles 57a and 65a, Article 77(4), 78(6), 
79(5), 79b(2), 79c(5), 80(3), and 82a(3), Articles 93a and 136b, and Articles 154a(3) and 156(4) shall be 
conferr ed on the Commission for an indet erminate period of time from 23 March 2016. It is of particular 
importance that the Commission follow its usual practice and carry out consultations with exper ts, including 
Member States' exper ts, before adoptin g those delegat ed acts. 
3. The delega tion of power refer red to in paragraph 2 may be revok ed at any time by the European Parliament 
or by the Council. A decision to revok e shall put an end to the delegatio n of the power specifi ed in that decision. 
It shall take effect the day following the publication of the decision in the Official Journal of the European Union or 
at a later date specif ied therein. It shall not affect the validity of any delegat ed acts already in force. 
4. As soon as it adopts a delegat ed act, the Commission shall notify it simultaneously to the European 
Parliament and to the Council. 
5. A delegat ed act adopt ed pursuant to Article 42a, Article 43(3), Articles 57a and 65a, Articles 77(4), 78(6), 
79(5), 79b(2), 79c(5), 80(3), and 82a(3), Articles 93a and 136b, and Articles 154a(3) and 156(4) shall enter into 
force only if no objection has been expressed either by the European Parliament or the Council within a period of 
two months of notific ation of that act to the European Parliament and the Council or if, before the expir y of that 
period, the European Parliament and the Council have both informed the Commission that they will not object. 
That period shall be extended by 2 months at the initiative of the European Parliament or the Council.’.  
(143) Article 164 is delet ed.  
(144) The following article is inser ted: 
‘Article 165a 
Evaluation and review 
1. By 24 March 2021, and ever y five years thereaf ter, the Commission shall evaluate the implementation of 
this Regulation. 
2. The evaluation shall review the legal framew ork for cooperation between the Offi ce and the central 
industr ial proper ty office s of the Member State s and the Benelux Office for Intellectual Proper ty, paying particular 
attention to the financing mech anism laid down in Article 123c. The evaluation shall further assess the impact, 
effectiveness and efficiency of the Offi ce and its working practices. The evaluation shall, in particular , address the 
possible need to modify the mandate of the Office, and the financial implicati ons of any such modifi cation. 
3. The Commission shall forward the evaluation repor t together with its conclusions drawn on the basis of 
that repor t to the European Parliament, the Council and the Manag ement Board. The findings of the evaluation 
shall be made public. 
4. On the occasion of ever y second evaluation, there shall be an assessment of the results achi eved by the 
Offi ce having regar d to its objectives, mandate and tasks. ’;  
(145) The Annex set out in Annex I to this Regulation is inser ted. 
Article 2 
Regulation (EC) No 2868/95 is amended as follows:  
(1) Rule 1(3) is deleted;  
(2) Rule 2 is deleted;  
(3) Rule 4 is deleted;  
(4) Rule 5 is deleted;  
(5) Rule 5a is deleted; 24.12.2015 L 341/87 Official Jour nal of the European Union EN     (6) Rule 9(3) is amended as follows: 
(a)  in point (a), the words ‘Rules 1, 2 and 3’ are replaced by the words ‘Rules 1 and 3 and Article 28 of the 
Regulation’; 
(b)  in point (b), the reference to ‘Rule 4(b)’ is replaced by a reference to ‘Article 26(2) of the Regulation’;  
(7) Rule 11(2) is deleted;  
(8) Rule 12(k) is delet ed;  
(9) Title IV is delet ed;  
(10) In paragraph 2 of Rule 62, the words ‘in the Community’ are replaced by ‘in the European Economic Area’;  
(11) In paragraph 1 of Rule 71, the words ‘within the Community’ are replaced by ‘within the European Economic 
Area’;  
(12) Rule 76(2) is deleted;  
(13) Rule 78 is amended as follows: 
(a)  in point (c) of paragraph 2, the words ‘in the Community’ are replaced by ‘in the European Economic Area’; 
(b)  in paragraphs (2)(b), (3) and (5), the words ‘Member State’ and ‘Member States’ are replaced by ‘Member State 
of the European Economic Area’ and ‘Member States of the European Economic Area’ respectively ;  
(14) Rule 84 is delet ed;  
(15) Rule 87 is delet ed;  
(16) In Title XI, Part K is delet ed;  
(17) Rule 112(2) is delet ed. 
Article 3 
Regulation (EC) No 2869/95 is repealed. 
References to the repealed Regulation shall be constr ued as references to Regulation (EC) No 207/2009 and shall be read 
in accordance with the correlation table set out in Annex II. 
Article 4 
This Regulation shall enter into force on 23 March 2016. 
The following points of Article 1 of this Regulation shall apply from 1 October 2017: 
points (8); (18); (19); (20); (21); (22); (23); (24); (26) in so far as it relat es to paragraph 1, point (d), and paragraph 3 of 
Article 26 of Regulation (EC) No 207/2009; (29); (30) in so far it relat es to paragraphs 1 and 3 of Article 30 of 
Regulation (EC) No 207/2009; (31) in so far as it relates to paragraphs 1 and 2 of Article 33 of Regulation (EC) 
No 207/2009; (32) in so far as it relates to paragraphs 1a, 4 and 6 of Article 34 of Regulation (EC) No 207/2009; (33); 
(34); (35) in so far as it relat es to paragraph 3 of Article 37 of Regulation (EC) No 207/2009; (37) in so far as it relat es 
to paragraph 1, second senten ce, and paragraphs 3 and 4 of Article 39 of Regulation (EC) No 207/2009; (43) in so far 
as it relat es to paragraphs 2, 3, 4a and 8 of Article 44 of Regulation (EC) No 207/2009; (46) in so far as it relat es to 24.12.2015 L 341/88 Official Jour nal of the European Union EN     paragraph 5, third senten ce of Article 48 of Regulation (EC) No 207/2009; (47) in so far as it relat es to paragraph 1, 
first subparagraph, and paragraphs 2 to 5 of Article 48a of Regulation (EC) No 207/2009; (48) in so far as it relates to 
paragraph 3 of Article 49 of Regulation (EC) No 207/2009; (49) in so far as it relates to paragraphs 2, 3 and 4 of 
Article 50 of Regulation (EC) No 207/2009; (61); (62); (63); (64) in so far as it relat es to paragraph 1 of Article 67 of 
Regulation (EC) No 207/2009; (67) with the excep tion of paragraph 3 of Article 74b of Regulation (EC) No 207/2009; 
(68); (71) in so far as it relat es to paragraphs 3 and 5 of Article 78 of Regulation (EC) No 207/2009; (72) in so far as it 
relat es to paragraphs 1 to 4 of Article 79 of Regulation (EC) No 207/2009; (73) with the excep tion of paragraph 2 of 
Article 79b of Regulation (EC) No 207/2009, and paragraph 5 of Article 79c of Regulation (EC) No 207/2009; (74) in 
so far as it relat es to paragraphs 1, 2 and 4 of Article 80 of Regulation (EC) No 207/2009; (75) in so far as it relates to 
paragraph 2 of Article 82 of Regulation (EC) No 207/2009; (76) in so far as it relates to paragraphs 1 and 2 of 
Article 82a of Regulation (EC) No 207/2009; (77), (78) in so far as it relates to paragraphs 1, 6 and 7 of Article 85 of 
Regulation (EC) No 207/2009; (80) in so far as it relat es to point (m) of paragraph 2 and point (y) of paragraph 3 of 
Article 87 of Regulation (EC) No 207/2009; (84) in so far as it relates to paragraphs 1, 2 and 3 of Article 89 of 
Regulation (EC) No 207/2009; (97) with the excep tion of paragraph 6 of Article 113 of Regulation (EC) No 207/2009; 
(98); (102) in so far as it relat es to paragraphs 5, 5a, 6, 8 and 9 of Article 119 of Regulation (EC) No 207/2009; (103); 
(108) in so far as it relates to Article 128(4)(o) of Regulation (EC) No 207/2009; (111) in so far as it relat es to the third 
senten ce in paragraph 2 of Article 132 of Regulation (EC) No 207/2009; (113); (125); (126) in so far as it relat es to 
paragraphs 1 and 3 to 8 of Article 147 of Regulation (EC) No 207/2009; (127) in so far as it relates to paragraph 1 of 
Article 148a of Regulation (EC) No 207/2009; (128) in so far as it relat es to paragraphs 1, 3 and 4 of Article 149 of 
Regulation (EC) No 207/2009; (129) in so far as it relates to Article 153 of Regulation (EC) No 207/2009; (130) in so 
far as it relates to paragraphs 1 to 5 of Article 153a of Regulation (EC) No 207/2009; (132); (135) in so far as it relates 
to paragraph 3 of Article 158 of Regulation (EC) No 207/2009; (136); (137) in so far as it relat es to paragraphs 4 to 9 
of Article 159 of Regulation (EC) No 207/2009; (138) in so far as it relates to paragraphs 3 to 5 of Article 161 of 
Regulation (EC) No 207/2009; and (139). 
Point (108) of Article 1 of this Regulation, in so far as it relates to Articles 124(1)(f) and 128(4)(n) of Regulation (EC) 
No 207/2009, shall apply from the date on which the decision provided for in Article 124(2) of Regulation (EC) 
No 207/2009 enters into force, or 12 months following the date specified in the second paragraph of this Article, 
whic hever is earlier . Until that date, the powers refer red to in Article 124(1)(f) of Regulation (EC) No 207/2009 shall be 
exer cised by the Executive Direct or. 
This Regulation shall be binding in its entirety and directly applicable in all Member State s. 
Done at Strasbourg, 16 December 2015. 
For the European Parliament 
The President 
M. SCH ULZ  For the Council 
The President 
N. SCHMIT   24.12.2015 L 341/89 Official Jour nal of the European Union EN     ANNEX I 
The following annex is inser ted: 
‘ANNEX -I 
AMOUNT OF FEES 
A.  The fees to be paid to the Offi ce under this Regulation shall be as follows (in EUR):  
1. Basic fee for the application for an individual EU trade mark (Article 26(2)): 
EUR 1 000  
2. Basic fee for the application for an individual EU trade mark by electronic means (Article 26(2)): 
EUR 850  
3. Fee for the second class of goods and services for an individual EU trade mark (Article 26(2)): 
EUR 50  
4. Fee for each class of goods and services excee ding two for an individual EU trade mark (Article 26(2)): 
EUR 150  
5. Basic fee for the application for an EU collective mark or an EU certification mark (Article 26(2) and 
Article 66(3) or Article 74a(3)): 
EUR 1 800  
6. Basic fee for the application for an EU collective mark or an EU certification mark by electronic means 
(Article 26(2) and Article 66(3) or Article 74a(3)): 
EUR 1 500  
7. Fee for the second class of goods and services for an EU collective mark or an EU certification mark: 
(Article 26(2) and Article 66(3) or Article 74a(3)): 
EUR 50  
8. Fee for each class of goods and services exceed ing two for an EU collective mark or an EU certification mark 
(Article 26(2) and 66(3) or Article 74a(3)): 
EUR 150  
9. Searc h fee for an EU trade mark application (Article 38(2)) or for an intern ational registration designating the 
Union (Article 38(2) and Article 155(2)): EUR 12 multiplied by the number of central industr ial proper ty offices 
referred to in Article 38(2); that amount, and the subsequent chang es, shall be published by the Office in the 
Official Jour nal of the Offi ce.  
10. Opposition fee (Article 41(3)): 
EUR 320  
11. Basic fee for the renewal of an individual EU trade mark (Article 47(3)): 
EUR 1 000  
12. Basic fee for the renewal of an individual EU trade mark by electronic means (Article 47(3)): 
EUR 850 24.12.2015 L 341/90 Official Jour nal of the European Union EN     13. Fee for the renewal of the second class of goods and services for an individual EU trade mark (Article 47(3)): 
EUR 50  
14. Fee for the renewal of each class of goods and services exceeding two for an individual EU trade mark 
(Article 47(3)): 
EUR 150  
15. Basic fee for the renewal of an EU collective mark or an EU certification mark (Article 47(3) and Article 66(3) 
or Article 74a(3): 
EUR 1 800  
16. Basic fee for the renewal of an EU collective mark or an EU certification mark by electronic means (Article 47(3) 
and Article 66(3) or Article 74a(3)): 
EUR 1 500  
17. Fee for the renewal of the second class of goods and services for an EU collective mark or an EU certificat ion 
mark (Article 47(3) and Article 66(3) or Article 74a(3)): 
EUR 50 
18. Fee for the renewal of each class of goods and services exceeding two for an EU collective mark or an EU certifi­
cation mark (Article 47(3) and Article 66(3) or Article 74a(3)): 
EUR 150  
19. Additional fee for the late payment of the renewal fee or the late submission of the request for renewal 
(Article 47(3)): 25 % of the belated renewal fee, subject to a maximum of EUR 1 500  
20. Fee for the application for revocation or for a declaration of invalidity (Article 56(2)): 
EUR 630  
21. Appeal fee (Article 60(1)): 
EUR 720  
22. Fee for the application of restitutio in integ rum (Article 81(3)): 
EUR 200  
23. Fee for the application for the conversion of an EU trade mark application or an EU trade mark (Article 113(1), 
also in conjunction with Article 159(1)): 
(a)  into a national trade mark application; 
(b)  into a designation of Member State s under the Madr id Protocol: 
EUR 200  
24. Fee for continuation of proceedings (Article 82(1)): 
EUR 400  
25. Fee for the declaration of division of a registered EU trade mark (Article 49(4) or an application for an EU trade 
mark (Article 44(4)): 
EUR 250 24.12.2015 L 341/91 Official Jour nal of the European Union EN     26. Fee for the application for the registration of a licence or another right in respect of a register ed EU trade mark 
(before 1 October 2017, Rule 33(2) of Regulation (EC) No 2868/95; and from that date , Article 22a(2)) or an 
application for an EU trade mark (before 1 October 2017, Rule 33(2) of Regulation (EC) No 2868/95; and from 
that date, Article 22a(2)): 
(a)  grant of a licence; 
(b)  transfer of a licence; 
(c)  creation of a right in rem; 
(d)  transfer of a right in rem; 
(e)  levy of executi on: 
EUR 200 per registration, but where multiple requests are submitte d in the same application or at the same 
time, not to exceed a total of EUR 1 000  
27. Fee for the cancellation of the registration of a licence or other right (before 1 October 2017, Rule 35(3) of 
Regulation (EC) No 2868/95; and from that date , Article 24a(3)): EUR 200 per cancellation, but where multiple 
requests are submitt ed in the same application or at the same time, not to exceed a total of EUR 1 000  
28. Fee for the alteration of a register ed EU trade mark (Article 48(4)): 
EUR 200  
29. Fee for the issue of a copy of the application for an EU trade mark (Article 88(7)), a copy of the certificate of 
registration (Article (45(2)), or an extract from the registe r (Article 87(7)): 
(a)  uncer tified copy or extract: 
EUR 10 
(b)  certified copy or extract: 
EUR 30  
30. Fee for the inspection of the files (Article 88(6)): 
EUR 30  
31. Fee for the issue of copies of file documents (Article 88(7)): 
(a)  uncer tified copy: 
EUR 10 
(b)  certified copy: 
EUR 30 
plus per page, excee ding 10 
EUR 1  
32. Fee for the communication of information in a file (Article 88(9)): 
EUR 10  
33. Fee for the review of the determination of the procedural costs to be refunded (before 1 October 2017, 
Rule 94(4) of Regulation (EC) No 2868/95; and from that date , Article 85(7)): 
EUR 100 24.12.2015 L 341/92 Official Jour nal of the European Union EN     34. Fee for the filing of an internati onal application at the Offi ce (before 1 October 2017, Article 147(5); and from 
that date, Article 147(4)): 
EUR 300 
B.  Fees to be paid to the International Bureau 
I.  Individual fee for an intern ational registration designating the Union  
1. The applicant for an internatio nal registration designating the Union shall be required to pay to the International 
Bureau an individual fee for the designation of the Union in accordance with Article 8(7) of the Madr id Prot ocol.  
2. The holder of an international registration who files a request for territorial extension designating the Union 
made subsequent to the international registration shall be required to pay to the Internati onal Bureau an 
individual fee for the designation of the Union in accordance with Article 8(7) of the Madr id Prot ocol.  
3. The amount of the fee under B.I.1 or B.I.2 shall be the equivalent in Swiss Francs, as established by the 
Direct or-General of the WIPO pursuant to Rule 35(2) of the Common Regulations under the Madr id Agreement 
and Prot ocol, of the following amounts: 
(a)  for an individual trade mark: EUR 820 plus, where applicable, EUR 50 for the second class of goods and 
services and EUR 150 for each class of goods and services contained in the intern ational registration 
exceed ing two; 
(b)  for a collective mark or a certification mark: EUR 1 400 plus, where applicable, EUR 50 for the second class 
of goods and services and EUR 150 for each class of goods or services exceeding two. 
II.  Individual fee for a renewal of an internatio nal registration designating the Union  
1. The holder of an intern ational registration designating the Union shall be required to pay to the International 
Bureau, as a part of the fees for a renewal of the intern ational registration, an individual fee for the designation of 
the Union in accordance with Article 8(7) of the Madr id Protocol .  
2. The amount of the fee refer red to in B.II.1 shall be the equivalent in Swiss Francs, as established by the 
Direct or-General of the WIPO pursuant to Rule 35(2) of the Common Regulations under the Madr id Agreement 
and Prot ocol, of the following amounts: 
(a)  for an individual trade mark: EUR 820 plus, where applicable, EUR 50 for the second class of goods and 
services and EUR 150 for each class of goods and services contained in the intern ational registration 
exceed ing two; 
(b)  for a collective mark or a certification mark: EUR 1 400 plus, where applicable, EUR 50 for the second class 
of goods and services and EUR 150 for each class of goods and services contained in the international 
registration exceed ing two. ’   24.12.2015 L 341/93 Official Jour nal of the European Union EN     ANNEX II 
CORREL ATION TABLE 
Regulation (EC) No 2869/95 Regulation (EC) No 207/2009 
Article 1 — 
Article 2 Annex -I, Part A, points 1 to 34 
Article 3 Article 144(1) 
Article 4 Article 144(2) 
Article 5(1) Article 144a(1), first subparagraph 
Article 5(2) Article 144a(1), second subparagraph 
Article 5(3) Article 144a(1), third subparagraph 
Article 6 Article 144a(1), fourth subparagraph 
Article 7(1) Article 144a(2) 
Article 7(2) Article 144a(3) 
Article 8 Article 144b 
Article 9 Article 144c(1) and (2) 
Article 10 Article 144c(4) 
Article 11 Annex -I, Part B(I), points 1 to 3 
Article 12 Annex -I, Part B(II), points 1 and 2 
Article 13 — 
Article 14 — 
Article 15 —   24.12.2015 L 341/94 Official Jour nal of the European Union EN