COMMISSION REGULATION (EC) No 2082/2004
of 6 December 2004
amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal
of the Office for Harmonization in the Internal Market (Trade Marks and Designs)
THE COMMISSION OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European
Community,
Having regard to Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark (1), and in
particular Article 157(3) thereof,
Whereas:
(1) Regulation (EC) No 422/2004 amended Regulation (EC)
No 40/94 with regard, inter alia , to the organisation and
procedures of the Boards of Appeal provided for inArticles 130 and 131.
(2) Regulation (EC) No 422/2004 introduced, inter alia , the
new post of President of the Boards of Appeal, created anenlarged Board of Appeal and laid down that, undercertain conditions, decisions of the Boards of Appealmay be taken by a single member. It is thereforenecessary to set out in detail the powers of thePresident of the Boards of Appeal, the composition andpowers of the Boards of Appeal, the allocation of casesto the Boards of Appeal and the composition of theenlarged Board, cases to be referred to the enlargedBoard and cases to be decided by a single member.
(3) The practical operation of the Boards of Appeal hasshown the need to make certain changes to their orga-nisation and procedures, including changes to the role ofthe Registry and certain procedural aspects. Centralisationof the Registry and revision of its powers, and rules onexchanges of submissions between parties, are designedto ensure greater efficiency in the handling of cases bythe Boards of Appeal. In order not to interfere withproceedings already pending when this Regulationenters into force, a transitional period must beprovided for with respect to the exchange of submissionsby the parties.
(4) The measures provided for in this Regulation are inaccordance with the opinion of the Committee on fees,Implementation Rules and the Procedure of the Boards ofAppeal of the Office for Harmonization in the InternalMarket (trade mark and designs),HAS ADOPTED THIS REGULATION:
Article 1
Regulation (EC) No 216/96 is amended as follows:
1. Article 1 is replaced by the following:
‘Article 1
Presidium of the Boards of Appeal
1. The authority referred to in Articles 130 and 131 of
the Regulation shall be the Presidium of the Boards ofAppeal (referred to hereinafter as ‘the Presidium ’).
2. The Presidium shall comprise the President of theBoards of Appeal, who shall chair it, the chairmen of theBoards and Board members elected for each calendar year byand from among all the members of the Boards other thanthe President of the Boards of Appeal and the chairmen ofthe Boards. The number of Board members so elected shallbe a quarter of the number of Board members, other thanthe President of the Boards of Appeal and the chairmen ofthe Boards, rounded up if necessary.
3. If the President of the Boards of Appeal is unable to act
or if the post of President is vacant, the Presidium shall bechaired by:
(a) the chairman of the Board having the longest service on
the Boards of Appeal; or
(b) where chairmen have the same length of service, by the
eldest of those qualifying under the preceding subpar-
agraph.
4. The Presidium may validly deliberate only if at leasttwo-thirds of its members are present, including itschairman and two Board chairmen. Decisions of thePresidium shall be taken by a majority vote. In the eventof a tie, the vote of the chairman shall be decisive.EN L 360/8 Official Journal of the European Union 7.12.2004
(1) OJ L 11, 14.1.1994, p. 1. Regulation as last amended by Regulation
(EC) No 422/2004 (OJ L 70, 9.3.2004, p. 1).
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        - 3 -5. Before the beginning of each calendar year, and
without prejudice to Article 1(b), the Presidium shalldecide on objective criteria for allocating cases among theBoards for the calendar year in question and shall designatethe full and alternate members of each of the Boards for thatyear. Each member of the Boards of Appeal may be assignedto several Boards as a full or alternate member. Thesemeasures may be modified, as necessary, in the course of
the calendar year in question. Decisions adopted by the
Presidium pursuant to this paragraph shall be published inthe Official Journal of the Office.
6. The Presidium shall also be competent to:
(a) lay down such rules of a procedural nature as are
necessary for the processing of cases brought before
the Boards and such rules as are necessary on the orga-nisation of the Boards ’work;
(b) rule on any conflict concerning the allocation of cases
among the Boards of Appeal;
(c) lay down its internal rules;
(d) lay down practical instructions of a procedural nature for
parties involved in proceedings before the Boards of
Appeal, for example, with regard to the submission ofwritten statements and to oral proceedings;
(e) exercise any other powers as are conferred to it by the
present Regulation.
7. The President of the Boards of Appeal shall consult thePresidium on the expenditure requirements of the Boards,which he shall communicate to the President of the Officewith a view to drawing up the expenditure estimates andwhere he considers it appropriate, on any other question
relating to the management of the Boards of Appeal. ’
2. Articles 1(a) to (d) are inserted as follows:
‘Article 1(a)
Grand Board
1. The enlarged Board set up by Article 130(3) of the
Regulation shall be the Grand Board.
2. The Grand Board shall comprise nine members,
including the President of the Boards of Appeal, who shallchair it, the chairmen of the Boards, the rapporteurdesignated prior to referral to the Grand Board, if applicable,and members drawn in rotation from a list comprising thenames of all members of the Boards of Appeal other thanthe President of the Boards of Appeal and the chairmen ofthe Boards.
The Presidium shall draw up the list referred to in the first
paragraph and establish the rules according to whichmembers are drawn from that list on the basis of objectivecriteria. The list and such rules shall be published in theOfficial Journal of the Office. If a rapporteur has not beendesignated prior to referral to the Grand Board, the chairmanof the Grand Board shall designate a rapporteur from amongthe members of the Grand Board.
3. If the President of the Boards of Appeal is unable to act
or if the post of President is vacant, or in the event ofexclusion or objection within the meaning of Article 132of the Regulation, the Grand Board shall be chaired by:
(a) the chairman having the longest service on the Boards of
Appeal; or
(b) where chairmen have the same length of service, by the
eldest of those qualifying under the preceding subpar-
agraph 4.
4. If another member of the Grand Board is unable to actor in the event of exclusion or objection within the meaningof Article 132 of the Regulation, he or she shall be replacedby the person highest on the list referred to in paragraph 2
of this Article.
5. The Grand Board may not hear cases and oral
proceedings may not take place before it unless seven ofits members are present, including its chairman and therapporteur.
If the Grand Board hears a case in the presence of only eight
of its members, the member with the least seniority in theBoards of Appeal shall not take part in the vote, unless thatmember is the chairman or the rapporteur, in which case themember with the next highest seniority to that of thechairman or rapporteur shall not vote.
Article 1(b)
Referral to the Grand Board
1. A Board may refer a case allocated to it to the Grand
Board if it believes that this is justified by the legal difficultyor importance of the case or by special circumstances, forexample, if Boards of Appeal have issued diverging decisions
on a point of law raised by that case.
2. A Board shall refer a case allocated to it to the Grand
Board if it believes that it must deviate from an interpre-tation of the relevant legislation given in an earlier decisionof the Grand Board.
3. The Presidium may, on a proposal made by the
President of the Boards of Appeal on his or her owninitiative or at the request of a member of the Presidium,refer to the Grand Board a case allocated to a Board if itbelieves that this is justified by the legal difficulty orimportance of the case or by special circumstances, forexample, if Boards of Appeal have issued divergingdecisions on a point of law raised by that case.EN 7.12.2004 Official Journal of the European Union L 360/9
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        - 4 -4. The Grand Board shall, without delay, refer the case
back to the Board to which it was originally allocated if itbelieves that the conditions for the original referral are notmet.
5. All decisions relating to referral to the Grand Board
shall be reasoned and shall be communicated to theparties to the case.
Article 1(c)
Decisions by a single member
1. The Presidium shall draw up an indicative list of the
types of cases which the Boards may, unless special circum-stances apply, devolve to a single member, such as decisionsclosing the proceedings following agreement between the
parties, and decisions on the award of costs and the admis-
sibility of the appeal.
The Presidium may also draw up a list of the types of cases
which may not be devolved to a single member.
2. A Board may delegate to its chairman the decision to
allocate to a single member cases falling within the types ofcases defined by the Presidium in accordance with paragraph 1.
3. The decision to devolve the case upon a single member
shall be communicated to the parties.
The member to whom the case has been devolved shall refer
it to the Board if he finds that the conditions for devolutionare no longer met.
Article 1(d)
Referral of a case following a ruling of the Court of
Justice
1. If, pursuant to Article 63(6) of the Regulation, the
measures necessary to comply with a judgment of theCourt of Justice annulling all or part of a decision of a
Board of Appeal or of the Grand Board include re-exami-
nation by the Boards of Appeal of the case which was thesubject of that decision, the Presidium shall decide if the caseshall be referred to the Board which adopted that decision,or to another Board, or to the Grand Board.
2. If the case is referred to another Board, that Board shall
not comprise members who were party to the contesteddecision. This provision shall not apply if the case isreferred to the Grand Board. ’
3. Article 4(3) is deleted and Article 4(4) is renumbered as
Article 4(3).4. Article 5 is replaced by the following:
‘Article 5
Registry
1. A Registry shall be set up at the Boards of Appeal, and
shall, inter alia, be responsible, under the authority of thePresident of the Boards of Appeal, for the receipt, dispatch,safekeeping and notification of all documents relating to theproceedings before the Boards of Appeal, and for compi-lation of the relevant files.
2. The Registry shall be headed by a Registrar. The
President of the Boards of Appeal shall appoint a Registryagent who shall perform the tasks of the Registrar when thelatter is absent or unable to act or if the post of Registrar isvacant.
3. The Registrar shall, in particular, ensure that the
deadlines and other formal conditions relating to the presen-tation of the appeal and of the statement of grounds arerespected.
If an irregularity is detected which is liable to make the
appeal inadmissible, the Registrar shall, without delay, senda reasoned opinion to the chairman of the Board concerned.
4. The minutes of oral proceedings and of the taking of
evidence shall be drawn up by the Registrar or, if thePresident of the Boards of Appeal agrees, by such agent ofthe Boards of Appeal as the chairman of the Boardconcerned may designate.
5. The President of the Boards of Appeal may delegate to
the Registrar the task of allocating cases to the Boards ofAppeal in accordance with allocation criteria laid down bythe Presidium.
The Presidium may, upon a proposal by the President of the
Boards of Appeal, delegate to the Registry other tasksrelating to the conduct of proceedings before the Boardsof Appeal. ’
5. Article 8 is replaced by the following:
‘Article 8
Procedure
1. If the Registrar sends the chairman of a Board of
Appeal an opinion on the admissibility of an appeal inaccordance with Article 5(3), second paragraph, thechairman of the Board in question may either suspend theproceedings and request the Board to rule on the admissi-bility of the appeal, or reserve judgement on the admissibilityof the appeal for the decision to end the proceedings beforethe Board of Appeal.EN L 360/10 Official Journal of the European Union 7.12.2004
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        - 5 -2. In inter partes proceedings, and without prejudice to
Article 61(2) of the Regulation, the statement setting out
the grounds of appeal and the response to it may be supple-mented by a reply from the appellant, lodged within twomonths of the notification of the response, and a rejoinderby the defendant, lodged within two months of notificationof the reply.
3. In inter partes proceedings, the defendant may, in his or
her response, seek a decision annulling or altering the
contested decision on a point not raised in the appeal.Such submissions shall cease to have effect should theappellant discontinue the proceedings. ’
Article 2
This Regulation shall enter into force on the twentieth dayfollowing its publication in the Official Journal of the European
Union .
The provisions of Article 8(2) and (3) of Regulation (EC) No216/96, as amended by Article 1(5) of this Regulation, shallapply only to proceedings in respect of which the appeal waslodged after the entry into force of this Regulation.
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 6 December 2004.
For the Commission
Charlie McCREEVY
Member of the CommissionEN 7.12.2004 Official Journal of the European Union L 360/11
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