COMMISSION REGULATION (EC) No 1041/2005
of 29 June 2005
amending Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the
Community trade mark
(Text with EEA relevance)
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 thereof,
Whereas:
(1) According to Regulation (EC) No 40/94, it is necessary to
adopt technical measures to implement dispositions
concerning the standard form for the searches reports,
division of the application and registration, revocation ofdecisions, authorisations, and decisions taken by a singlemember of the Opposition or Cancellation Division.
(2) After 10 March 2008 the search system will remaincompulsory for Community trade marks, but it shouldbe made optional, subject to the payment of a fee, for
searches in the trade mark registers of the Member States
which notified their own decision to carry out a search.A standard form comprising essential elements for the
search report is hereby laid out with a view to improving
the quality and uniformity of such search reports.
(3) The declaration of division and registration must comply
with the elements set out in the present regulation. The
new ex officio revocation of a decision or an entry in the
register by the Office for Harmonization in the InternalMarket (trade marks and designs) (The Office) mustcomply with the specific procedure as established inthe present regulation. The exceptional cases where an
authorisation is mandatory are specified. A list of simple
cases where a decision can be taken by a single memberof the Opposition or Cancellation Divisions is providedfor.
(4) Furthermore, existing rules should be amended in order
to improve or clarify the procedure for registration. In
addition, certain procedural points should be amendedwithout changing the substance of the system.
(5) In order to cover the specificities and facilities of thee-filing procedure, the following provisions areamended: Rule 1(1)(c), Rule 3(2), Rule 61, Rule 72(4),
Rule 79, Rule 82, Rule 89(1) and (2).
(6) The electronic filing and electronic publication ofCommunity trade mark applications should facilitate
the filing of trade marks in general and in particular
enhance the filing of trade marks consisting of coloursper se or sounds by means of a representation of themark which is clear, precise, self-contained, easilyaccessible, intelligible, durable and objective. Thetechnical conditions, in particular the data format forsound files, should be laid down by the President ofthe Office. E-filing of trade marks consisting of soundscan be accompanied by an electronic sound file and thisfile can be included in the electronic publication of theCommunity trade mark applications to facilitate publicaccess to the sound itself.
(7) The provisions concerning the opposition procedureshould be reframed completely as to specify the admis-sibility requirements, to specify clearly the legal conse-quences of deficiencies and to bring the provisions in thechronological order of the proceedings.
(8) Following the additional competence of the Office for theexamination of the admissibility of conversion the refusalof a request for conversion may become partial in thesense that conversion can be acceptable for someMember States but inadmissible for others. In addition,some criteria to be used for examining absolute groundsby reference to the language of a Member State should
be added.
(9) Regarding costs to be born by the losing party in oppo-
sition and cancellation procedures, reimbursable costs ofthe representation should be limited but the presentmaximum amounts should be increased slightly in viewof the time elapsed since adoption of the ImplementingRegulation. Where witnesses or experts are summoned,no such maximum rate should be provided but the reim-bursable costs shall comprise the actual amounts thosewitnesses and experts can claim.
(10) Commission Regulation (EC) No 2868/95 (2) should
therefore be amended accordingly.EN L 172/4 Official Journal of the European Union 5.7.2005
(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).(2) OJ L 303, 15.12.1995, p. 1. Regulation as amended by Regulation
(EC) No 782/2004 (OJ L 123, 27.4.2004, p. 88).(11) The measures provided for in this Regulation are in
accordance 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 marks and designs),
HAS ADOPTED THIS REGULATION:
Article 1
Article 1 of Regulation (EC) No 2868/95 is amended as follows:
1.Rule 1(1) is amended as follows:
(a) point (b) is replaced by the following:
‘(b) the name, address and nationality of the applicant
and the State in which he is domiciled or has hisseat or an establishment. Names of natural personsshall be indicated by the persons family name andgiven name(s). Names of legal entities, as well asbodies falling under Article 3 of the Regulation,shall be indicated by their official designation andinclude the legal form of the entity, which may beabbreviated in a customary manner. The telephonenumbers, fax numbers, electronic mail address anddetails of other data communications links underwhich the applicant accepts to receive communi-cations may be given. Only one address shall, in
principle, be indicated for each applicant. Where
several addresses are indicated, only the addressmentioned first shall be taken into account,
except where the applicant designates one of the
addresses as an address for service; ’
(b) in point (c), the following is added:
‘, or a reference to the list of the goods and services of
a previous Community trade mark application; ’
(c) point (k) is replaced by the following:
‘(k) the signature of the applicant or his representative
in accordance with Rule 79; ’
(d) point (l) is added:
‘(l) where applicable, the request of a search report
referred to in Article 39(2) of the Regulation. ’;
2.Rule 3 is amended as follows:
(a) paragraph 2 is replaced by the following:
‘2. In cases other than those referred to in paragraph
1 and save where the application is filed by electronicmeans, the mark shall be reproduced on a sheet of
paper separate from the sheet on which the text ofthe application appears. The sheet on which the mark
is reproduced shall not exceed DIN A4 size (29,7 cmhigh, 21 cm wide) and the space used for the repro-duction (type-area) shall not be larger than26,2 cm × 17 cm. A margin of at least 2,5 cm shallbe left on the left-hand side. Where it is not obvious,the correct position of the mark shall be indicated byadding the word “top ”to each reproduction. The repro-
duction of the mark shall be of such quality as to
enable it to be reduced or enlarged to a size notmore than 8 cm wide by 16 cm high for publicationin the Community Trade Mark Bulletin. ’;
(b) paragraphs 5 and 6 are replaced by the following:
‘5. Where registration in colour is applied for, the
representation of the mark under paragraph 2 shallconsist of the colour reproduction of the mark. Thecolours making up the mark shall also be indicatedin words and a reference to a recognized colour codemay be added.
6. Where registration of a sound mark is applied for,
the representation of the trade mark shall consist of agraphical representation of the sound, in particular amusical notation; where the application is filedthrough electronic means, it may be accompanied byan electronic file containing the sound. The President of
the Office shall determine the formats and maximum
size of the electronic file. ’;
3.Rule 4 is replaced by the following:
‘Rule 4
Fees for the application
The fees payable for the application shall be:
(a) the basic fee;(b) a class fee for each class exceeding three to which the
goods or services belong according to Rule 2;
(c) where applicable, the search fee. ’;
4.The following Rule 5a is inserted:
‘Rule 5a
Search report
The search reports shall be prepared using a standard form
which contains at least the following information:
(a) the name of the central industrial property offices that
carried out the search;EN 5.7.2005 Official Journal of the European Union L 172/5(b) the number of the trademark applications or regis-
trations mentioned in the search report;
(c) the date of application and if applicable date of priority
of the trademark applications or registrations
mentioned in the search report;
(d) the date of registration of the trademarks mentioned in
the search report;
(e) the name and contact address of the holder of the
trademarks applications or registrations mentioned inthe search report;
(f) a representation of the trademarks applied for or
registered mentioned in the search report;
(g) an indication of the classes, according to the Nice Clas-
sification, for which the earlier national trademarks areapplied for or registered or of the goods and servicesfor which the trademarks mentioned in the searchreport are either applied for or registered. ’;
5.In Rule 6(1) the following sentence is added:
‘If the previous application is a Community trade mark
application, the Office shall ex officio include a copy of
the previous application in the file of the Community
trade mark application. ’;
6.Rule 8(2) is replaced by the following:
‘2. Where the applicant wishes to claim the seniority of
one or more earlier registered trade marks as referred to inArticle 34 of the Regulation, subsequent to the filing of the
application, the declaration of seniority, indicating the
Member State or Member States in or for which themark is registered, the number and the filing date of therelevant registration, and the goods and services for which
the mark is registered, shall be submitted within a period of
two months from the filing date. The evidence requiredunder paragraph 1 shall be submitted to the Officewithin a period of three months from receipt of thedeclaration of seniority. ’;
7.Rule 10 is replaced by the following:
‘Rule 10
Searches by national offices
1. If the request for a search report referred to in Article
39(2) of the Regulation is not made in the application for aCommunity trade mark, or if the search fee referred to inRule 4(c) is not paid within the time limit for paying thebasic application fee, the application shall not be subjectedto a search by the central industrial property offices.2. An international registration designating the European
Community shall not be subjected to a search by thecentral industrial property offices if the request for asearch report pursuant to Article 39(2) of the Regulationis not made to the Office within one month starting withthe date on which the International Bureau notifies theinternational registration to the Office, or if the searchfee is not paid within the same period. ’;
8.Point (c) of Rule 12 is replaced by the following:
‘(c) the reproduction of the mark, together with the
elements and descriptions referred to in Rule 3; wherethe reproduction of the mark is in colour or containscolours, the publication shall be in colour and shall
indicate the colour or colours making up the mark,
as well as, where applicable, the colour code indicated ’;
9.In Rule 13, point (c) of paragraph 1, and paragraph 2
are deleted;
10.The following Rule 13a is inserted:
‘Rule 13a
Division of the application
1. A declaration of the division of the application
pursuant to Article 44a of the Regulation shall contain:
(a) the file number of the application;
(b) the name and address of the applicant in accordance
with Rule 1(1)(b);
(c) the list of goods and services which shall form the
divisional application, or, where the division intomore than one divisional application is sought, thelist of goods and services for each divisional application;
(d) the list of goods and services which shall remain in the
original application.
2. Where the Office finds that the requirements laid
down in paragraph 1 are not fulfilled or the list of goodsand services which shall form the divisional application
overlap with the goods and services which shall remain
in the original application, it shall invite the applicant to
remedy the deficiencies noted within such period as it mayspecify.
If the deficiencies are not remedied before the time limit
expires, the Office shall refuse the declaration of division.EN L 172/6 Official Journal of the European Union 5.7.20053. The periods as referred to in Article 44a(2)(b) of the
Regulation during which a declaration of division of theapplication is not admissible shall be:
(a) the period before a date of filing has been accorded;
(b) the period of three months following the publication of
the application provided for in Article 42(1) of theRegulation;
(c) the period after the date of issue of the notification to
pay the registration fee referred to in Rule 23(1).
4. Where the Office finds, that the declaration of
division is inadmissible pursuant to Article 44a of theRegulation or pursuant to paragraph 3(a) and (b), it shallrefuse the declaration of division.
5. The Office shall establish a separate file for the divi-
sional application, which shall consist of a complete copyof the file of the original application, including thedeclaration of division and the correspondence relating
thereto. The Office shall assign a new application number
to the divisional application.
6. Where the declaration of division relates to an appli-
cation which has already been published pursuant to Article
40 of the Regulation, the division shall be published in the
Community Trade Marks Bulletin. The divisional appli-cation shall be published; the publication shall containthe indications and elements referred to in Rule 12. The
publication does not open a new period for the filing of
oppositions. ’;
11.Rules 15 to 20 are replaced by the following:
‘Rule 15
Notice of opposition
1. A notice of opposition may be entered on the basis
of one or more earlier marks within the meaning of Article8(2) of the Regulation (earlier marks) and one and/or moreother earlier rights within the meaning of Article 8(4) ofthe Regulation (earlier rights), provided that the earliermarks or earlier rights all belong to the same proprietoror proprietors. If an earlier mark and/or an earlier right hasmore than one proprietor (co-ownership), the oppositionmay be filed by any or all of them.
2. The notice of opposition shall contain:(a) the file number of the application against which oppo-
sition is entered and the name of the applicant for theCommunity trade mark;
(b) a clear identification of the earlier mark or earlier right
on which the opposition is based, namely:
(i) where the opposition is based on an earlier mark
within the meaning of Article 8(2)(a) or (b) of theRegulation or where the opposition is based onArticle 8(3) of the Regulation, the indication ofthe file number or registration number of the
earlier mark, the indication whether the earlier
mark is registered or an application for registration,as well as the indication of the Member Statesincluding, where applicable, the Benelux, in or forwhich the earlier mark is protected, or, ifapplicable, the indication that it is a Communitytrade mark;
(ii) where the opposition is based on a well-known
mark within the meaning of Article 8(2)(c) of theRegulation, the indication of the Member Statewhere the mark is well-known and either the indi-
cations referred to in point (i) or a representation
of the mark;
(iii) where the opposition is based on an earlier right
within the meaning of Article 8(4), an indication of
its kind or nature, a representation of the earlier
right, and an indication of whether this earlier rightexists in the whole Community or in one or moreMember States, and if so, an indication of the
Member States;
(c) the grounds on which the opposition is based, namely a
statement to the effect that the respective requirementsunder Article 8(1), (3), (4) and (5) of the Regulation arefulfilled;
(d) the filing date and, where available, the registration date
and the priority date of the earlier mark, unless it is anunregistered well-known trade mark;
(e) a representation of the earlier mark as registered or
applied for; if the earlier mark is in colour, the repre-sentation shall be in colour;
(f) the goods and services on which the opposition is
based;EN 5.7.2005 Official Journal of the European Union L 172/7(g) where the opposition is based on an earlier mark
having a reputation within the meaning of Article8(5) of the Regulation, an indication of the MemberState in which, and the goods and services for which,the mark has a reputation;
(h) as concerns the opposing party:
(i) the name and address of the opposing party in
accordance with Rule 1(1)(b);
(ii) where the opposing party has appointed a repre-
sentative, the name and business address of therepresentative in accordance with Rule 1(1)(e);
(iii) where the opposition is entered by a licensee or by
a person who is entitled under the relevant nationallaw to exercise an earlier right, a statement to that
effect and indications concerning the authorisation
or entitlement to file the opposition.
3. The notice of opposition may contain:
(a) an indication of the goods and services against which
the opposition is directed; in the absence of such anindication the opposition shall be considered to bedirected against all of the goods and services of theopposed Community trade mark application;
(b) a reasoned statement setting out the main facts and
arguments on which the opposition relies, andevidence to support the opposition.
4. Where the opposition is based on more than one
earlier mark or earlier right, paragraphs 2 and 3 shallapply for each of these rights.
Rule 16
Use of languages in the notice of opposition
1. The time limit referred to in Article 115(6) of the
Regulation within which the opposing party has to file atranslation of his opposition shall be one month from the
expiry of the opposition period.
2. Where the opposing party or the applicant, before the
date on which the opposition proceedings are deemed tocommence pursuant to Rule 18(1), informs the Office that
the applicant and the opposing party have agreed on a
different language for the opposition proceedingspursuant to Article 115(7) of the Regulation, theopposing party shall, where the notice of opposition hasnot been filed in that language, file a translation of thenotice of opposition in that language within a period ofone month from the said date. Where the translation is not
filed or filed late, the language of the proceedings shallremain unchanged.
Rule 16a
Information of the applicant
Any notice of opposition and any document submitted by
the opposing party, as well as any communicationaddressed to one of the parties by the Office prior to theexpiry of the period referred to in Rule 18 shall be sent by
the Office to the other party for purposes of informing of
the introduction of an opposition.
Rule 17
Examination of admissibility
1. If the opposition fee has not been paid within the
opposition period, the opposition shall be deemed not tohave been entered. If the opposition fee has been paid afterthe expiry of the opposition period, it shall be refunded tothe opposing party.
2. If the notice of opposition has not been filed within
the opposition period, or if the notice of opposition does
not clearly identify the application against which oppo-sition is entered or the earlier mark or the earlier righton which the opposition is based in accordance withRule 15(2)(a) and (b), or does not contain grounds foropposition in accordance with Rule 15(2)(c), and if those
deficiencies have not been remedied before the expiry of
the opposition period, the Office shall reject the oppositionas inadmissible.
3. Where the opposing party does not submit a trans-
lation as required under Rule 16(1), the opposition shall berejected as inadmissible. Where the opposing party submitsan incomplete translation, the part of the notice of oppo-sition that has not been translated shall not be taken intoaccount in the examination of admissibility.
4. If the notice of opposition does not comply with the
other provisions of Rule 15, the Office shall inform theopposing party accordingly and shall invite him toremedy the deficiencies noted within a period of twomonths. If the deficiencies are not remedied before thetime limit expires, the Office shall reject the opposition
as inadmissible.
5. Any finding pursuant to paragraph 1 that the notice
of opposition is deemed not to have been entered and anydecision to reject an opposition as inadmissible under para-graphs 2, 3 and 4 shall be notified to the applicant.EN L 172/8 Official Journal of the European Union 5.7.2005Rule 18
Commencement of opposition proceedings
1. When the opposition is found admissible pursuant to
Rule 17, the Office shall send a communication to theparties informing them that the opposition proceedingsshall be deemed to commence two months after receiptof the communication. This period may be extended up
to a total of 24 months if both parties submit requestsfor such an extension before the period expires.
2. If, within the period referred to in paragraph 1, the
application is withdrawn or restricted to goods and servicesagainst which the opposition is not directed, or the Officeis informed about a settlement between the parties, or the
application is rejected in parallel proceedings, the oppo-
sition proceedings shall be closed.
3. If, within the period referred to in paragraph 1, the
applicant restricts the application by deleting some of thegoods and services against which the opposition is directed,the Office shall invite the opposing party to state, withinsuch a period as it may specify, whether he maintains theopposition, and if so, against which of the remaining goodsand services. If the opposing party withdraws the oppo-
sition in view of the restriction the opposition proceedings
shall be closed.
4. If before expiry of the period referred to in paragraph
1 the opposition proceedings are closed pursuant to para-graphs 2 or 3, no decision on costs shall be taken.
5. If before expiry of the period referred to in paragraph
1 the opposition proceedings are closed following a with-drawal or restriction of the application or pursuant toparagraph 3, the opposition fee shall be refunded.
Rule 19
Substantiation of the opposition
1. The Office shall give the opposing party the oppor-
tunity to present the facts, evidence and arguments in
support of his opposition or to complete any facts,
evidence or arguments that have already been submittedpursuant to Rule 15(3), within a time limit specified by itand which shall be at least 2 months starting on the dateon which the opposition proceedings shall be deemed tocommence in accordance with Rule 18(1).2. Within the period referred to in paragraph 1, the
opposing party shall also file proof of the existence,validity and scope of protection of his earlier mark orearlier right, as well as evidence proving his entitlementto file the opposition. In particular, the opposing partyshall provide the following evidence:
(a) if the opposition is based on a trade mark which is not
a Community trade mark, evidence of its filing or regis-tration, by submitting:
(i) if the trade mark is not yet registered, a copy of the
relevant filing certificate or an equivalent documentemanating from the administration with which thetrade mark application was filed; or
(ii) if the trade mark is registered, a copy of the relevant
registration certificate and, as the case may be, ofthe latest renewal certificate, showing that the termof protection of the trade mark extends beyond thetime limit referred to in paragraph 1 and any
extension thereof, or equivalent documents
emanating from the administration by which thetrade mark was registered;
(b) if the opposition is based on a well-known mark within
the meaning of Article 8(2)(c) of the Regulation,evidence showing that this mark is well-known in the
relevant territory;
(c) if the opposition is based on a mark with reputation
within the meaning of Article 8(5) of the Regulation, in
addition to the evidence referred to in point (a) of this
paragraph, evidence showing that the mark has a repu-
tation, as well as evidence or arguments showing that
use without due cause of the trade mark applied forwould take unfair advantage of, or be detrimental to,the distinctive character or the repute of the earliertrade mark;
(d) if the opposition is based on an earlier right within the
meaning of Article 8(4) of the Regulation, evidence ofits acquisition, continued existence and scope ofprotection of that right;
(e) if the opposition is based on Article 8(3) of the Regu-
lation, evidence of the opposing party's proprietorshipand of the nature of his relationship with the agent orrepresentative.EN 5.7.2005 Official Journal of the European Union L 172/93. The information and evidence referred to in para-
graphs 1 and 2 shall be in the language of the proceedingsor accompanied by a translation. The translation shall besubmitted within the time limit specified for submitting theoriginal document.
4. The Office shall not take into account written
submissions or documents, or parts thereof, that have notbeen submitted, or that have not been translated into thelanguage of the proceedings, within the time limit set bythe Office.
Rule 20
Examination of the opposition
1. If until expiry of the period referred to in Rule 19(1)
the opposing party has not proven the existence, validity
and scope of protection of his earlier mark or earlier right,
as well his entitlement to file the opposition, the opposition
shall be rejected as unfounded.
2. If the opposition is not rejected pursuant to
paragraph 1, the Office shall communicate the submissionof the opposing party to the applicant and shall invite himto file his observations within a period specified by theOffice.
3. If the applicant submits no observations, the Office
shall base its ruling on the opposition on the evidencebefore it.
4. The observations submitted by the applicant shall be
communicated to the opposing party who shall be invited
by the Office, if it considers it necessary to do so, to replywithin a period specified by the Office.
5. Rule 18(2) and (3) shall apply mutatis mutandis after
the date on which the opposition proceedings are deemedto commence.
6. In appropriate cases, the Office may invite the parties
to limit their observations to particular issues, in whichcase it shall allow the party to raise the other issues at alater stage of the proceedings. In no case shall the Office berequired to inform the parties which facts or evidence could
be or have not been submitted.
7. The Office may suspend opposition proceedings:(a) where the opposition is based on an application for
registration pursuant to Article 8(2)(b) of the Regu-
lation until a final decision is taken in that proceeding;(b) where the opposition is based on an application for
registration for a geographical indication or designationof origin under Council Regulation (EEC) No2081/92 (*) until a final decision is taken in thatproceeding; or
(c) where a suspension is appropriate under the circum-
stances.
___________
(*) OJ L 208, 24.7.1992, p. 1. ’;
12.Rule 22 is replaced by the following:
‘Rule 22
Proof of use
1. A request for proof of use pursuant to Article 43(2)
or (3) of the Regulation shall be admissible only if the
applicant submits such a request within the period
specified by the Office pursuant to Rule 20(2).
2. Where the opposing party has to furnish proof of use
or show that there are proper reasons for non-use, the
Office shall invite him to provide the proof required
within such period as it shall specify. If the opposingparty does not provide such proof before the time limitexpires, the Office shall reject the opposition.
3. The indications and evidence for the furnishing of
proof of use shall consist of indications concerning the
place, time, extent and nature of use of the opposingtrade mark for the goods and services in respect ofwhich it is registered and on which the opposition isbased, and evidence in support of these indications inaccordance with paragraph 4.
4. The evidence shall be filed in accordance with Rules
79 and 79a and shall, in principle, be confined to thesubmission of supporting documents and items such aspackages, labels, price lists, catalogues, invoices, photo-graphs, newspaper advertisements, and statements in
writing as referred to in Article 76(1)(f) of the Regulation.
5. A request for proof of use may be made with or
without submitting at the same time observations on the
grounds on which the opposition is based. Such obser-vations may be filed together with the observations inreply to the proof of use.
6. Where the evidence supplied by the opposing party is
not in the language of the opposition proceedings, theOffice may require the opposing party to submit a trans-lation of that evidence in that language, within a period
specified by the Office. ’EN L 172/10 Official Journal of the European Union 5.7.200513.Rule 24(2) is replaced by the following:
‘2. The Office shall provide certified or uncertified copies
of the certificate of registration, upon payment of a fee. ’;
14.In Rule 25(1) point (c) is deleted;
15.The following Rule 25a is inserted:
‘Rule 25a
Division of a registration
1. A declaration of the division of a registration
pursuant to Article 48a of the Regulation shall contain:
(a) the registration number;(b) the name and address of the proprietor of the trade
mark in accordance with Rule 1(1)(b);
(c) the list of goods and services which shall form the
divisional registration, or, where the division into
more than one divisional registration is sought, the
list of goods and services for each divisional regis-tration;
(d) the list of goods and services which shall remain in the
original registration.
2. Where the Office finds that the requirements laid
down in paragraph 1 are not fulfilled or the list of goodsand services which shall form the divisional registrationoverlap with the goods and services which shall remainin the original registration, it shall invite the applicant toremedy the deficiencies noted within such period as it may
specify.
If the deficiencies are not remedied before the time limit
expires, the Office shall refuse the declaration of division.
3. Where the Office finds, that the declaration of
division is inadmissible pursuant to Article 48a of theRegulation, it shall refuse the declaration of division.
4. The Office shall establish a separate file for the divi-
sional registration, which shall consist of a complete copyof the file of the original registration, including thedeclaration of division and the correspondence relating
thereto. The Office shall assign a new registration number
to the divisional registration. ’;
16.In Rule 26(2), point (d) is deleted;17.Rule 28(1) is amended as follows:
(a) point (c) is deleted;(b) point (d) is replaced by the following:
‘(d) an indication of the Member State or Member
States in or for which the earlier mark is registered,
the number and the filing date of the relevantregistration, and the goods and services forwhich the earlier mark is registered; ’
18.Rule 30 is replaced by the following:
‘Rule 30
Renewal of registration
1. An application for renewal shall contain:
(a) the name of the person requesting renewal;(b) the registration number of the Community trade mark
to be renewed;
(c) if the renewal is requested for only part of the goods
and services for which the mark is registered, an indi-cation of those classes or those goods and services forwhich renewal is requested or those classes or thosegoods and services for which renewal is not
requested, grouped according to the classes of theNice classification, each group being preceded by the
number of the class of that classification to which thatgroup of goods or services belongs and presented in theorder of the classes of that classification.
2. The fees payable under Article 47 of the Regulation
for the renewal of a Community trade mark shall consist ofthe following:
(a) a basic fee;
(b) a class fee for each class exceeding three in respect of
which renewal is applied for; and
(c) where applicable, the additional fee for late payment of
the renewal fee or late submission of the request for
renewal, pursuant to Article 47(3) of the Regulation, as
specified in the Fees Regulation.EN 5.7.2005 Official Journal of the European Union L 172/113. It shall be deemed to constitute a request for renewal
if the payment referred to in paragraph 2 is made by ameans of payment referred to in Article 5(1) of the FeesRegulation, provided that it contains all the indicationsrequired under paragraph 1 (a) and (b) of this Rule andArticle 7(1) of the Fees Regulation.
4. Where the application for renewal is filed within the
periods provided for in Article 47(3) of the Regulation, but
the other conditions governing renewal provided for inArticle 47 of the Regulation and these Rules are notsatisfied, the Office shall inform the applicant of the defi-ciencies found.
5. Where an application for renewal is not submitted or
is submitted after expiry of the period provided for in thethird sentence of Article 47(3) of the Regulation, or wherethe fees are not paid or are paid only after the period inquestion has expired, or where the deficiencies are notremedied within that period, the Office shall determine
that the registration has expired and shall so notify the
proprietor of the Community trade mark.
Where the fees paid are insufficient to cover all the classes
of goods and services for which renewal is requested, sucha determination shall not be made if it is clear which class
or classes are to be covered. In the absence of other criteria,
the Office shall take the classes into account in the order of
classification.
6. Where the determination made pursuant to paragraph
5 has become final, the Office shall cancel the mark from
the register. The cancellation shall take effect from the day
following the day on which the existing registrationexpired.
7. Where the renewal fees provided for in paragraph 2
have been paid but the registration is not renewed, thosefees shall be refunded.
8. A single application for renewal may be submitted for
two or more marks, upon payment of the required fees foreach of the marks, provided that the proprietors or therepresentatives are the same in each case. ’;
19.Rule 31(3) and (4) is deleted;
20.Rule 32(4) is replaced by the following:
‘4. The Office shall establish a separate file for the new
registration, which shall consist of a complete copy of thefile of the original registration, including the application forregistration of the partial transfer and the correspondencerelating thereto. The Office shall assign a new registrationnumber to the new registration. ’;21.Rule 33 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. Rule 31(1), (2), (5) and (7) shall apply mutatis
mutandis to the registration of a licence, of a transfer
of a licence, of a right in rem , of a transfer of a right in
rem, of an enforcement measure or of insolvency
proceedings, subject to the following:
(a) Rule 31(1)(c) shall not apply in respect of a request
for registration of a right in rem , of a levy of
execution or of insolvency proceedings;
(b) Rule 31(1)(d) and (5) shall not apply where the
request was made by the proprietor of theCommunity trade mark. ’;
(b) paragraph 2 is replaced by the following:
‘2. The application for registration of a licence, a
transfer of a licence, a right in rem , a transfer of a
right in rem or an enforcement measure shall not be
deemed to have been filed until the required fee has
been paid. ’;
(c) in paragraph 3, ‘Articles 19, 20 or 22 ’is replaced by
‘Articles 19 to 22 ’and ‘in paragraphs 1 and 2 above, ’is
replaced by ‘in paragraph 1 of this Rule and in Rule
34(2) ’.
(d) paragraph 4 is replaced by the following:
‘4. Paragraphs 1 and 3 shall apply mutatis mutandis
to applications for Community trade marks. Licences,rights in rem , insolvency proceedings and enforcement
measures shall be recorded in the files kept by theOffice concerning the Community trade mark appli-cation. ’;
22.Rule 34 is replaced by the following:
‘Rule 34
Special provisions for the registration of a licence
1. The application for registration of a licence may
contain a request to record the licence in the Register asone or more of the following:
(a) an exclusive licence;EN L 172/12 Official Journal of the European Union 5.7.2005(b) a sub-licence in case where the licence is granted by a
licensee whose licence is recorded in the Register;
(c) a licence limited to only a part of the goods or services
for which the mark is registered;
(d) a licence limited to part of the Community;
(e) a temporary licence.2. Where a request is made to record the licence as a
licence pursuant to paragraph 1(c), (d) and (e), the appli-cation for registration of a licence shall indicate the goods
and services and the part of the Community and the time
period for which the licence is granted. ’;
23.Rule 35(3) is replaced by the following:
‘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. ’;
24.Point (c) of Rule 36(1) is deleted;
25.Rule 38 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. The time limit referred to in Article 115(6) of the
Regulation within which the applicant for revocation ora declaration of invalidity has to file a translation of hisapplication shall be one month, starting with the dateof the filing of his application, failing which the appli-
cation shall be rejected as inadmissible. ’;
(b) in paragraph 3, the following sentence is added:
‘Where the translation is not filed or filed late, the
language of the proceedings shall remain unchanged. ’;
26.Rule 39 is replaced by the following:
‘Rule 39
Rejection of the application for revocation or for
declaration of invalidity as inadmissible
1. Where the Office finds that the required fee has not
been paid, it shall invite the applicant to pay the fee withina period specified by it. If the required fee is not paidwithin the period specified by the Office, the Office shallinform the applicant that the application for revocation or
for declaration of invalidity is deemed not to have beenfiled. If the fee has been paid after expiry of the periodspecified, it shall be refunded to the applicant.
2. Where the translation required under Rule 38(1) is
not filed within the prescribed period, the Office shallreject the application for revocation or for declaration ofinvalidity as inadmissible.
3. If the Office finds that the application does not
comply with Rule 37, it shall invite the applicant toremedy the deficiencies found within such period as itmay specify. If the deficiencies are not remedied beforeexpiry of the time limit, the Office shall reject the appli-cation as inadmissible.
4. Any decision to reject an application for revocation
or declaration of invalidity under paragraph 2 or 3 shall becommunicated to the applicant and the proprietor of theCommunity trade mark. ’;
27.Rule 40 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. Every application for revocation or for
declaration of invalidity which is deemed to havebeen filed shall be notified to the proprietor of the
Community trade mark. When the Office has found
the application admissible, it shall invite the proprietorof the Community trade mark to file his observationswithin such period as it may specify. ’
(b) paragraph 4 is replaced by the following:
‘4. Save where Rule 69 otherwise provides or allows,
all observations filed by the parties shall be sent to theother party concerned. ’;
(c) paragraph 5 is replaced by the following:
‘5. In the case of an application for revocation based
on Article 50(1)(a) of the Regulation, the Office shallinvite the proprietor of the Community trade mark tofurnish proof of genuine use of the mark, within suchperiod as it may specify. If the proof is not providedwithin the time limit set, the Community trade mark
shall be revoked. Rule 22(2), (3) and (4) shall apply
mutatis mutandis .’;EN 5.7.2005 Official Journal of the European Union L 172/13(d) a new paragraph 6 is added:
‘6. If the applicant has to furnish proof of use or
proof that there are proper reasons for non-use underArticle 56(2) or (3) of the Regulation, the Office shallinvite the applicant to furnish proof of genuine use ofthe mark, within such period as it may specify. If theproof is not provided within the time limit set, theapplication for declaration of invalidity shall berejected. Rule 22(2), (3) and (4) shall apply mutatis
mutandis .’;
28.Rules 44 and 45 are replaced by the following:
‘Rule 44
Application for conversion
1. An application for conversion of a Community trade
mark application or a registered Community trade markinto a national trade mark application pursuant to Article108 of the Regulation shall contain:
(a) the name and the address of the applicant for
conversion in accordance with Rule 1(1)(b);
(b) the filing number of the Community trade mark appli-
cation or the registration number of the Communitytrade mark;
(c) the indication of the ground for conversion in
accordance with Article 108(1)(a) or (b) of the Regu-lation;
(d) the specification of the Member State or the Member
States in respect of which conversion is requested;
(e) where the request does not relate to all of the goods
and services for which the application has been filed orfor which the trade mark has been registered, the appli-
cation shall contain an indication of the goods and
services for which conversion is requested, and, whereconversion is requested in respect of more than one
Member State and the list of goods and services is
not the same for all Member States, an indication ofthe respective goods and services for each MemberState;
(f) where conversion is requested pursuant to Article
108(6) of the Regulation, the application shall containthe indication of the date on which the decision of thenational court has become final, and a copy of thatdecision; that copy may be submitted in the languagein which the decision was given.2. The application for conversion shall be filed within
the relevant period pursuant to Article 108(4), (5) or (6) ofthe Regulation. Where conversion is requested following afailure to renew the registration, the period of three monthsprovided for in Article 108(5) of the Regulation shall beginto run on the day following the last day on which the
request for renewal can be presented pursuant to Article
47(3) of the Regulation.
Rule 45
Examination of application for conversion
1. Where the application for conversion does not
comply with the requirements of Article 108(1) or (2) ofthe Regulation or has not been filed within the relevantperiod of three months or does not comply with Rule 44or other Rules, the Office shall notify the applicantaccordingly and specify a period within which he mayamend the application or furnish any missing informationor indications.
2. Where the conversion fee has not been paid within
the relevant period of three months, the Office shall informthe applicant that the application for conversion is deemed
not to have been filed.
3. Where the missing indications have not been
furnished within the period specified by the Office, theOffice shall reject the application for conversion.
Where Article 108(2) of the Regulation applies, the Office
shall reject the application for conversion as inadmissible
only with respect to those Member States for which
conversion is excluded under that provision.
4. If the Office or a Community trade mark court has
refused the Community trade mark application or hasdeclared the Community trade mark invalid on absolutegrounds by reference to the language of a Member State,
conversion shall be excluded under Article 108(2) of the
Regulation for all the Member States in which that
language is one of the official languages. If the Office or
a Community trade mark court has refused the Communitytrade mark application or has declared the Communitytrade mark invalid on absolute grounds which are foundto apply in the whole Community or on account of anearlier Community trade mark or other Communityindustrial property right, conversion is excluded under
Article 108(2) of the Regulation for all Member States. ’;EN L 172/14 Official Journal of the European Union 5.7.200529.Rule 47 is replaced by the following:
‘Rule 47
Transmission to central industrial property offices of
the Member States
Where the application for conversion complies with the
requirements of the Regulation and these Rules, theOffice shall transmit the application for conversion andthe data referred to in Rule 84(2), to the central industrial
property offices of the Member States, including the
Benelux Trade Mark Office, for which the application hasbeen found admissible. The Office shall inform theapplicant of the date of transmission. ’;
30.In Rule 50(1) the following is added:
‘In particular, when the appeal is directed against a decision
taken in opposition proceedings, Article 78a of the Regu-lation shall not be applicable to the time limits fixedpursuant to Article 61(2) of the Regulation.
Where the appeal is directed against a decision of an Oppo-
sition Division, the Board shall limit its examination of theappeal to facts and evidence presented within the time
limits set in or specified by the Opposition Division in
accordance with the Regulation and these Rules, unlessthe Board considers that additional or supplementaryfacts and evidence should be taken into account pursuantto Article 74(2) of the Regulation. ’;
31.Rule 51 is replaced by the following:
‘Rule 51
Reimbursement of appeal fees
The appeal fee shall only be reimbursed by order of either
of the following:
(a) the department whose decision has been impugned,
where it grants revision pursuant to Article 60(1) or
Article 60a of the Regulation;
(b) the Board of Appeal, where it allows the appeal and
considers such reimbursement equitable by reason of asubstantial procedural violation. ’;
32.Rule 53 is replaced by the following:
‘Rule 53
Correction of errors in decisions
Where the Office becomes aware, of its own motion or at
the instance of a party to the proceedings, of a linguisticerror, error of transcription or obvious mistake in a
decision, it shall ensure that error or mistake is correctedby the department or division responsible. ’
33.The following Rule 53a is inserted:
‘Rule 53a
Revocation of a decision or entry in the Register
1. Where the Office finds of its own motion or pursuant
to corresponding information by the parties to theproceedings that a decision or entry in the Register is
subject to revocation pursuant to Article 77a of the Regu-
lation, it shall inform the party affected about the intendedrevocation.
2. The affected party may submit observations on the
intended revocation within a period specified by the Office.
3. Where the affected party agrees to the intended revo-
cation or where he does not submit any observationswithin the period, the Office shall revoke the decision orentry. If the affected party does not agree to the revocation,the Office shall take a decision on the revocation.
4. Paragraphs 1, 2 and 3 shall apply mutatis mutandis if
the revocation is likely to affect more than one party. Inthese cases the observations submitted by one of the parties
pursuant to paragraph 3 shall always be communicated to
the other party or parties with an invitation to submitobservations.
5. Where the revocation of a decision or an entry in the
Register affects a decision or entry that has been published,the revocation shall also be published.
6. Competence for revocation under paragraphs 1 to 4
shall lie with the department or unit which took the
decision. ’;
34.Rule 59(4) is replaced by the following:
‘4. The amounts and the advances for expenses to be
paid pursuant to paragraphs 1, 2 and 3 shall be determinedby the President of the Office and shall be published in theOfficial Journal of the Office. The amounts shall becalculated on the same basis as laid in the Staff Regulations
of the Officials of the European Communities and Annex
VII thereto. ’;EN 5.7.2005 Official Journal of the European Union L 172/1535.Rule 60 is replaced by the following:
‘Rule 60
Minutes of oral proceedings
1. Minutes of oral proceedings or the taking of evidence
shall be drawn up, containing:
(a) the date of the proceedings;(b) the names of the competent officials of the Office, the
parties, their representatives, and of the witnesses andexperts who are present;
(c) the applications and requests made by the parties;(d) the means of giving or obtaining evidence;
(e) where applicable, the orders or the decision issued by
the Office.
2. The minutes shall become part of the file of the
relevant Community trade mark application or registration.The parties shall be provided with a copy of the minutes.
3. Where witnesses, experts or parties are heard in
accordance with Article 76(1)(a) or (d) of the Regulationor Rule 59(2), their statements shall be recorded. ’;
36.Rule 61 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. In proceedings before the Office, notifications to
be made by the Office shall take the form of trans-mitting the original document, an uncertified copythereof or a computer print-out in accordance with
Rule 55, or, as concerns documents emanating from
the parties themselves, duplicates or uncertified copies. ’;
(b) the following paragraph 3 is added:
‘3. Where the addressee has indicated his telecopier
number or contact details for communicating with himthrough other technical means, the Office shall have thechoice between any of these means of notification andnotification by post. ’;
37.Rule 62 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. Decisions subject to a time limit for appeal,
summonses and other documents as determined bythe President of the Office shall be notified byregistered letter with advice of delivery. All other noti-
fications shall be by ordinary mail. ’;
(b) the second sentence of paragraph 2 is deleted;(c) paragraph 5 is replaced by the following:
‘5. Notification by ordinary mail shall be deemed to
have been effected on the tenth day following that ofits posting. ’;
38.In Rule 65(1), the second sentence is replaced by the
following:
‘Notification shall be deemed to have been taken place on
the date on which the communication was received by thetelecopying device of the recipient. ’;
39.Rule 66(1) is replaced by the following:
‘1. If the address of the addressee cannot be established
or if after at least one attempt, notification in accordancewith Rule 62 has proved impossible, notification shall beeffected by public notice. ’;
40.Rule 72(2) is replaced by the following:
‘2. If a time limit expires on a day on which there is a
general interruption in the delivery of mail in the MemberState where the Office is located, or, if and to the extent
that the President of the Office has allowed communi-
cations to be sent by electronic means pursuant to Rule82, on which there is an actual interruption of the Officesconnection to these electronic means of communication,the time limit shall extend until the first day followingthat interruption on which the Office is open for thereceipt of documents and on which ordinary mail isdelivered. The duration of the period of interruption shallbe determined by the President of the Office. ’;
41.Rule 72(4) is replaced by the following:
‘4. If an exceptional occurrence such as a natural disaster
or strike interrupts or dislocates proper communication
from the parties to the proceedings to the Office or vice
versa, the President of the Office may determine that forparties of the proceedings having their residence orregistered office in the State concerned or who have
appointed a representative with a place of business in the
State concerned, all time limits that otherwise would expireon or after the date of commencement of such occurrence,as determined by him, shall extend until a date to bedetermined by him. If the occurrence affects the seat of
the Office, such determination of the President shall
specify that it applies in respect of all parties to theproceedings. ’;EN L 172/16 Official Journal of the European Union 5.7.200542.Rule 76 is amended as follows:
(a) paragraphs 1 to 4 are replaced by the following:
‘1. Legal practitioners and professional represen-
tatives entered on the list maintained by the Office
pursuant to Article 89(2) of the Regulation shall file
with the Office a signed authorisation for insertion in
the files only if the Office expressly requires it, or wherethere are several parties to the proceedings in which therepresentative acts before the Office, if the other partyexpressly asks for it.
2. Employees acting on behalf of natural or legal
persons pursuant to Article 88(3) of the Regulationshall file with the Office a signed authorisation forinsertion in the files.
3. The authorisation may be filed in any official
language of the Community. It may cover one or
more applications or registered trade marks or may
be in the form of a general authorisation authorisin-
gauthorising the representative to act in respect of allproceedings before the Office to which the persongiving the authorisation is a party.
4. Where it is required, pursuant to paragraphs 1 or
2, that a signed authorisation be filed, the Office shallspecify a time limit within which such authorisationshall be filed. If the authorisation is not filed in duetime, proceedings shall be continued with the repre-sented person. Any procedural steps other than thefiling of the application taken by the representative
shall be deemed not to have been taken if the repre-
sented person does not approve them within a period
specified by the Office. The application of Article 88(2)
of the Regulation shall remain unaffected. ’;
(b) paragraphs 8 and 9 are replaced by the following:
‘8. Where the appointment of a representative is
communicated to the Office, the name and thebusiness address of the representative shall beindicated in accordance with Rule 1(1)(e). Where a
representative acts before the Office who has already
been appointed, he shall indicate his name andpreferably the identification number attributed to himby the Office. Where several representatives are
appointed by the same party, they may, notwith-
standing any provisions to the contrary in their author-isations, act either jointly or singly.
9. The appointment or authorisation of an asso-
ciation of representatives shall be deemed to be an
appointment or authorisation of any representativewho practices within that association. ’;43.Rule 79 is amended as follows:
(a) points (a) and (b) are replaced by the following:
‘(a) by submitting a signed original of the document in
question at the Office, such as by post, personaldelivery, or by any other means;
(b) by transmitting a document by telecopier in
accordance with Rule 80; ’
(b) point (c) is deleted;
44.The following Rule 79a is inserted:
‘Rule 79a
Annexes to written communications
Where a document or an item of evidence is submitted in
accordance with Rule 79 point (a) by a party in aproceeding before the Office involving more than oneparty to the proceedings, the document or item ofevidence, as well as any annex to the document, shall be
submitted in as many copies as the number of parties to
the proceedings. ’
45.Rule 80 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. Where an application for a Community trade
mark is submitted to the Office by telecopier and theapplication contains a reproduction of the markpursuant to Rule 3(2) which does not satisfy therequirements of that Rule, the required reproduction
suitable for publication shall be submitted to the
Office in accordance with Rule 79(a). Where the repro-duction is received by the Office within a period of onemonth from the date of receipt of the telecopy, thereproduction shall be deemed to have been receivedby the Office on the date on which the telecopy was
received. ’;
(b) in paragraph 3, the following sentence is added:
‘Where the communication has been sent by telecopier
electronically, the indication of the name of the sender
shall be equivalent to the signature. ’;
(c) paragraph 4 is deleted;EN 5.7.2005 Official Journal of the European Union L 172/1746.Rule 81 is deleted;
47.Rule 82 is amended as follows:
(a) paragraph 1 is replaced by the following:
‘1. The President of the Office shall determine
whether, to what extent and under what technicalconditions communications may be sent to the Officeby electronic means. ’;
(b) paragraph 4 is deleted;
48.Rule 83 is replaced by the following:
‘Rule 83
Forms
1. The Office shall make available to the public free of
charge forms for the purposes of:
(a) filing an application for a Community trade mark,
including where appropriate a request for the searchreport;
(b) entering an opposition;
(c) applying for revocation or declaration of invalidity;
(d) applying for the registration of a transfer and the
transfer form and transfer document provided for inRule 31(5);
(e) applying for the registration of a licence;(f) applying for the renewal of a Community trade mark;
(g) making an appeal;
(h) authorising a representative, in the form of an indi-
vidual authorisation or a general authorisation;
(i) submitting an international application or a subsequent
designation under the Madrid Protocol to the Office.
2. Parties to the proceedings before the Office may also
use
(a) forms established under the Trademark Law Treaty or
pursuant to recommendations of the Assembly of theParis Union for the Protection of Industrial Property;
(b) with the exception of the form referred to in point (i)
of paragraph 1, forms with the same content and
format.3. The Office shall make available the forms referred to
in paragraph 1 in all the official languages for theCommunity. ’;
49.Rule 84 is amended as follows:
(a) in Paragraph 2 point (d) is replaced by the following:
‘(d) the name and address of the applicant; ’
(b) paragraph 3 is amended as follows:
(i) point (i) is replaced by the following:
‘(i) levy of execution pursuant to Article 20 of
the Regulation and insolvency proceedingspursuant to Article 21 of the Regulation; ’
(ii) the following points (w) and (x) are added:
‘(w) the division of a registration pursuant to Article
48a of the Regulation and Rule 25a, togetherwith the items referred to in paragraph 2 inrespect of the divisional registration, as wellas the list of goods and services of theoriginal registration as amended;
(x) the revocation of a decision or an entry in the
Register pursuant to Article 77a of the Regu-
lation, where the revocation concerns adecision or entry which has been published. ’;
50.Rule 85(1) is replaced by the following:
‘1. The Community Trade Marks Bulletin shall be
published in the manner and frequency determined bythe President of the Office. ’;
51.Rule 89(1) and (2) is replaced by the following:
‘1. Inspection of the files of Community trade mark
applications and of registered Community trade marksshall either be of the original document, or of copiesthereof, or of technical means of storage if the files arestored in this way. The means of inspection shall be
determined by the President of the Office.
Where inspection takes place as provided for in paragraphs
3, 4 and 5, the request for inspection of the files shall notbe deemed to have been made until the required fee has
been paid. No fee is payable if inspection of technical
means of storage takes place online.EN L 172/18 Official Journal of the European Union 5.7.20052. Where inspection of the files of a Community trade
mark application which has not yet been publishedpursuant to Article 40 of the Regulation is requested, therequest shall contain an indication and evidence to theeffect that the applicant has consented to the inspectionor has stated that after the trade mark has been registeredhe will invoke the rights under it against the partyrequesting the inspection. ’;
52.Rule 91 is replaced by the following:
‘Rule 91
Keeping of files
1. The President of the Office shall determine the form
in which the files shall be kept.
2. Where files are kept electronically, these electronic
files, or back-up copies thereof, shall be kept without
time limitation. The original documents filed by parties to
the proceedings which form the basis of such electronic
files shall be disposed of after a period following theirreception by the Office, which shall be determined by thePresident of the Office.
3. Where and to the extent that files or parts of the files
are kept in any other form 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 inwhich any of the following occurrences takes place:
(a) the application is rejected or withdrawn or is deemed to
be withdrawn;
(b) the registration of the Community trade mark expires
completely pursuant to Article 47 of the Regulation;
(c) the complete surrender of the Community trade mark
is registered pursuant to Article 49 of the Regulation;
(d) the Community trade mark is completely removed
from the Register pursuant to Article 56(6) or Article96(6) of the Regulation. ’;
53.Rule 94 is amended as follows:
(a) paragraph 3 is replaced by the following:
‘3. Where the amount of the costs has not been
fixed pursuant to Article 81(6), first sentence, of the
Regulation, the request for the fixing of costs shall beaccompanied by a bill and supporting evidence. For the
costs of representation referred to in paragraph 7(d) ofthis Rule, an assurance by the representative that thecosts have been incurred shall be sufficient. For othercosts, it shall be sufficient if their plausibility is estab-lished. Where the amount of the costs is fixed pursuantto Article 81(6), first sentence, of the Regulation, repre-sentation costs shall be awarded at the level laid down
in paragraph 7(d) of this Rule and irrespective of
whether they have been actually incurred. ’;
(b) in paragraph 4, the words ‘the second sentence of
Article 81(6) ’are replaced by ‘the third sentence of
Article 81(6) ’;.
(c) paragraph 7 is replaced by the following:
‘7. Subject to paragraph 3 of this Rule, costs
essential to the proceedings and actually incurred bythe successful party shall be borne by the losing partyin accordance with Article 81(1) of the Regulation onthe basis of the following maximum rates:
(a) where the party is not represented by a represen-
tative, travel and subsistence expenses of one party
for one person for the outward and return journeybetween the place of residence or the place ofbusiness and the place where oral proceedings areheld pursuant to Rule 56, as follows:
(i) the cost of the first-class rail-fare including
usual transport supplements where the total
distance by rail does not exceed 800 km;
(ii) the cost of the tourist-class air-fare where the
total distance by rail exceeds 800 km or theroute includes a sea-crossing;
(iii) subsistence expenses as laid down in Article 13
of Annex VII to the Staff Regulations ofOfficials of the European Communities;
(b) travel expenses of representatives within the
meaning of Article 89(1) of the Regulation, at therates provided for in point (a)(i) and (ii) of this Rule;
(c) travel expenses, subsistence expenses, compensation
for loss of earnings and fees to which witnesses andexperts are entitled to be reimbursed pursuant toRule 59(2), (3) or (4), to the extent that finalliability lies with a party to the proceedingspursuant to Rule 59(5)(b);EN 5.7.2005 Official Journal of the European Union L 172/19(d) cost of representation, within the meaning of
Article 89(1) of the Regulation,
(i) of the opposing party in opposition
proceedings:
EUR 300;
(ii) of the applicant in opposition proceedings:
EUR 300;
(iii) of the applicant in proceedings relating to
revocation or invalidity of a Communitytrade mark:
EUR 450;
(iv) of the proprietor of the trade mark in
proceedings relating to revocation or invalidity
of a Community trade mark:
EUR 450;
(v) of the appellant in appeal proceedings:
EUR 550;
(vi) of the defendant in appeal proceedings:
EUR 550;
(vii) where an oral proceedings have taken place to
which the parties have been summonedpursuant to Rule 56, the amount referred toin the points (i) to (vi) shall be incremented byEUR 400;
(e) where there are several applicants or proprietors of
the Community trade mark application or regis-tration or where there are several opposing partiesor applicants for revocation or declaration of inva-
lidity who have filed the opposition or application
for revocation or declaration of invalidity jointly,the losing party shall bear the costs referred to inpoint (a) for one such person only;
(f) where the successful party is represented by more
than one representative within the meaning of
Article 89(1) of the Regulation, the losing partyshall bear the costs referred to in points (b) and(d) of this Rule for one such person only;
(g) the losing party shall not be obliged to reimburse
the successful party for any costs, expenses and fees
other than those referred to in points (a) to (f). ’;54.Rule 98 is replaced by the following:
‘Rule 98
Translations
1. When a translation of a document is to be filed, the
translation shall identify the document to which it refersand reproduce the structure and contents of the originaldocument. The Office may require the filing, within aperiod to be specified by it, of a certificate that the trans-lation corresponds to the original text. The President of theOffice shall determine the manner in which translations
shall be certified.
2. Save where the Regulation or these Rules provide
otherwise, a document for which a translation is to befiled shall be deemed not to have been received by theOffice
(a) where the translation is received by the Office after
expiry of the relevant period for submitting theoriginal document or the translation;
(b) in the case of paragraph 1, where the certificate is not
filed within the period specified. ’;
55.Rule 100 is replaced by the following:
‘Rule 100
Decisions taken by a single member
The cases in which pursuant to Article 127(2), or Article
129(2), of the Regulation a single member of the Oppo-sition Division or of the Cancellation Division may take adecision shall be the following:
(a) decisions on the apportionment of costs;
(b) decisions to fix the amount of the costs to be paid
pursuant to Article 81(6), first sentence, of the Regu-
lation;
(c) decisions to close the file or not to proceed to
judgment;
(d) decisions to reject an opposition as inadmissible before
expiry of the period referred to in Rule 18(1);
(e) decisions to stay proceedings;
(f) decisions to join or separate multiple oppositions
pursuant to Rule 21(1). ’;EN L 172/20 Official Journal of the European Union 5.7.200556.Paragraphs 1, 2 and 3 of Rule 101 are replaced by the
following:
‘1. If necessary, the President of the Office shall request
the Commission to enquire whether a State which is notparty to the Paris Convention or to the Agreement estab-lishing the World Trade Organization accords reciprocaltreatment within the meaning of Article 29(5) of the Regu-lation.
2. If the Commission determines that reciprocal
treatment in accordance with paragraph 1 is accorded, itshall publish a communication to this effect in the Official
Journal of the European Union .
3. Article 29(5) of the Regulation shall apply from the
date of publication in the Official Journal of the European
Union of the communication referred to in paragraph 2,
unless the communication states an earlier date from whichit 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 thatreciprocal treatment is no longer accorded, unless thecommunication states an earlier date from which it isapplicable. ’;
57.Rule 114 is amended as follows:(a) in paragraph 1 point (d) is replaced by the following:
‘(d) the indications and elements referred to in Rule
15(2)(b) to (h). ’;
(b) in paragraph 2, the introductory phrase is replaced by
the following:
‘Rules 15(1), (3) and (4) and 16 to 22 shall apply,
subject to the following: ’;
58.Point (c) of Rule 122(1) is replaced by the following:
‘(c) the indications and elements referred to in Rule
44(1)(a), (c), (d), (e) and (f) ’.
Article 2
1. This Regulation shall enter into force on the 20th day
following its publication in the Official Journal of the European
Union .
2. In Article 1 point (1)(d), point (3), point (4) and point (7)
shall apply from 10 March 2008, as shall the second part,
commencing with the word ‘including ’, of point (a) of Rule
83(1), set out at point 48 of Article 1 of this Regulation.
This Regulation shall be binding in its entirety and directly applicable in all Member States.
Done at Brussels, 29 June 2005.
For the Commission
Charlie McCREEVY
Member of the CommissionEN 5.7.2005 Official Journal of the European Union L 172/21