1994R0040 — EN — 01.01.1996 — 001.001 — 1
This document is meant purely as a documentation tool and the institutions do not assume any liability for its contents
►B COUNCILREGULATION(EC)No40/94
of20December 1993
ontheCommunitytrademark
(OJ L 11, 14.1.1994, p. 1)
Amended by:
Official Journal
No page date
►M1Council Regulation (EC) No 3288/94 of 22 December 1994 L 349 83 31.12.1994
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COUNCILREGULATION(EC)No40/94
of20December 1993
ontheCommunitytrademark
THE COUNCIL OF THE EUROPEAN UNION,
Having regard to the Treaty establishing the European Community, and
in particular Article 235 thereof,
Having regard to the proposal from the Commission(1),
Having regard to the opinion of the European Parliament(2),
Having regard to the opinion of the Economic and Social
Committee(3),
Whereas it is desirable to promote throughout the Community a harmo-
nious development of economic activities and a continuous andbalanced expansion by completing an internal market which functionsproperly and offers conditions which are similar to those obtaining in a
national market; whereas in order to create a market of this kind and
make it increasingly a single market, not only must be barriers to freemovement of goods and services be removed and arrangements beinstituted which ensure that competition is not distorted, but, in addi-tion, legal conditions must be created which enable undertakings toadapt their activities to the scale of the Community, whether in manu-
facturing and distributing goods or in providing services; whereas for
those purposes, trade marks enabling the products and services ofundertakings to be distinguished by identical means throughout theentire Community, regardless of frontiers, should feature amongst thelegal instruments which undertakings have at their disposal;
Whereas action by the Community would appear to be necessary for
the purpose of attaining the Community's said objectives; whereassuch action involves the creation of Community arrangements for trademarks whereby undertakings can by means of one procedural systemobtain Community trade marks to which uniform protection is given
and which produce their effects throughout the entire area of the
Community; whereas the principle of the unitary character of theCommunity trade mark thus stated will apply unless otherwise providedfor in this Regulation;
Whereas the barrier of territoriality of the rights conferred on proprie-
tors of trade marks by the laws of the Member States cannot be
removed by approximation of laws; whereas in order to open up unrest-ricted economic activity in the whole of the common market for thebenefit of undertakings, trade marks need to be created which aregoverned by a uniform Community law directly applicable in all
Member States;
Whereas since the Treaty has not provided the specific powers to estab-
lish such a legal instrument, Article 235 of the Treaty should beapplied;
Whereas the Community law relating to trade marks nevertheless does
not replace the laws of the Member States on trade marks; whereas itwould not in fact appear to be justified to require undertakings to applyfor registration of their trade marks as Community trade marks;whereas national trade marks continue to be necessary for those under-takings which do not want protection of their trade marks at
Community level;
Whereas the rights in a Community trade mark may not be obtained
otherwise than by registration, and registration is to be refused in parti-cular if the trade mark is not distinctive, if it is unlawful or if itconflicts with earlier rights;1994R0040 — EN — 01.01.1996 — 001.001 — 2
(1) OJ No C 351, 31. 12. 1980, p. 1 and OJ No C 230, 31. 8. 1984, p. 1.
(2) OJ No C 307, 14. 11. 1983, p. 46 and OJ No C 280, 28. 10. 1991, p. 153.
(3) OJ No C 310, 30. 11. 1981, p. 22.
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Whereas the protection afforded by a Community trade mark, the func-
tion of which is in particular to guarantee the trade mark as anindication of origin, is absolute in the case of identity between the
mark and the sign and the goods or services; whereas the protection
applies also in cases of similarity between the mark and the sign andthe goods or services; whereas an interpretation should be given ofthe concept of similarity in relation to the likelihood of confusion;whereas the likelihood of confusion, the appreciation of which depends
on numerous elements and, in particular, on the recognition of the trade
mark on the market, the association which can be made with the usedor registered sign, the degree of similarity between the trade mark andthe sign and between the goods or services identified, constitutes thespecific condition for such protection;
Whereas it follows from the principle of free flow of goods that the
proprietor of a Community trade mark must not be entitled to prohibitits use by a third party in relation to goods which have been put intocirculation in the Community, under the trade mark, by him or with his
consent, save where there exist legitimate reasons for the proprietor to
oppose further commercialization of the goods;
Whereas there is no justification for protecting Community trade marks
or, as against them, any trade mark which has been registered before
them, except where the trade marks are actually used;
Whereas a Community trade mark is to be regarded as an object of
property which exists separately from the undertakings whose goods
or services are designated by it; whereas accordingly, it must becapable of being transferred, subject to the overriding need to preventthe public being misled as a result of the transfer. It must also becapable of being charged as security in favour of a third party and of
being the subject matter of licences;
Whereas administrative measures are necessary at Community level for
implementing in relation to every trade mark the trade mark law
created by this Regulation; whereas it is therefore essential, while
retaining the Community's existing institutional structure and balanceof powers, to establish an Office for Harmonization in the InternalMarket (trade marks and designs) which is independent in relation totechnical matters and has legal, administrative and financial autonomy;whereas to this end it is necessary and appropriate that it should be a
body of the Community having legal personality and exercising the
implementing powers which are conferred on it by this Regulation,and that it should operate within the framework of Community lawwithout detracting from the competencies exercised by the Communityinstitutions;
Whereas it is necessary to ensure that parties who are affected by deci-
sions made by the Office are protected by the law in a manner which issuited to the special character of trade mark law; whereas to that endprovision is made for an appeal to lie from decisions of the examiners
and of the various divisions of the Office; whereas if the department
whose decision is contested does not rectify its decision it is to remitthe appeal to a Board of Appeal of the Office, which is to decide onit; whereas decisions of the Boards of Appeal are, in turn, amenableto actions before the Court of Justice of the European Communities,
which has jurisdiction to annul or to alter the contested decision;
Whereas under Council Decision 88/591/ECSC, EEC, Euratom of 24
October 1988 establishing a Court of First Instance of the European
Communities(
1), as amended by Decision 93/350/Euratom, ECSC,
EEC of 8 June 1993(2), that Court shall exercise at the first instance
the jurisdiction conferred on the Court of Justice by the Treaties estab-lishing the Communities — with particular regard to appeals lodgedunder the second subparagraph of Article 173 of the EC Treaty —and by the acts adopted in implementation thereof, save as otherwise1994R0040 — EN — 01.01.1996 — 001.001 — 3
(1) OJ No L 319, 25. 11. 1988, p. 1 and corrigendum in OJ No L 241, 17. 8.
1989, p. 4.
(2) OJ No L 144, 16. 6. 1993, p. 21.
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provided in an act setting up a body governed by Community law;
whereas the jurisdiction which this Regulation confers on the Court ofJustice to cancel and reform decisions of the appeal courts shall
accordingly be exercised at the first instance by the Court in accor-
dance with the above Decision;
Whereas in order to strengthen the protection of Community trade
marks the Member States should designate, having regard to their ownnational system, as limited a number as possible of national courts of
first and second instance having jurisdiction in matters of infringement
and validity of Community trade marks;
Whereas decisions regarding the validity and infringement of Commu-
nity trade marks must have effect and cover the entire area of theCommunity, as this is the only way of preventing inconsistent decisionson the part of the courts and the Office and of ensuring that the unitary
character of Community trade marks is not undermined; whereas the
rules contained in the Brussels Convention of Jurisdiction and theEnforcement of Judgments in Civil and Commercial Matters will applyto all actions at law relating to Community trade marks, save wherethis Regulation derogates from those rules;
Whereas contradictory judgments should be avoided in actions which
involve the same acts and the same parties and which are brought on
the basis of a Community trade mark and parallel national trade marks;whereas for this purpose, when the actions are brought in the sameMember State, the way in which this is to be achieved is a matter fornational procedural rules, which are not prejudiced by this Regulation,
whilst when the actions are brought in different Member States, provi-
sions modelled on the rules on lis pendens and related actions of theabovementioned Brussels Convention appear appropriate;
Whereas in order to guarantee the full autonomy and independence of
the Office, it is considered necessary to grant it an autonomous budgetwhose revenue comes principally from fees paid by the users of the
system; whereas however, the Community budgetary procedure
remains applicable as far as any subsidies chargeable to general budgetof the European Communities are concerned; whereas moreover, theauditing of accounts should be undertaken by the Court of Auditors;
Whereas implementing measures are required for the Regulation's
application, particularly as regards the adoption and amendment of
fees regulations and an Implementing Regulation; whereas suchmeasures should be adopted by the Commission, assisted by aCommittee composed of representatives of the Member States, inaccordance with the procedural rules laid down in Article 2, procedureIII(b), of Council Decisions 87/373/EEC of 13 July 1987 laying down
the procedures for the exercise of implementing powers conferred on
the Commission(
1),
HAS ADOPTED THIS REGULATION:
TITLE I
GENERALPROVISIONS
Article 1
Communitytrademark
1. A trade mark for goods or services which is registered in accor-
dance with the conditions contained in this Regulation and in the
manner herein provided is hereinafter referred to as a ‘Communitytrade mark’.
2. A Community trade mark shall have a unitary character. It shall
have equal effect throughout the Community: it shall not be registered,transferred or surrendered or be the subject of a decision revoking the1994R0040 — EN — 01.01.1996 — 001.001 — 4
(1) OJ No L 197, 18. 7. 1987, p. 33.
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rights of the proprietor or declaring it invalid, nor shall its use be
prohibited, save in respect of the whole Community. This principleshall apply unless otherwise provided in this Regulation.
Article 2
Office
An Office for Harmonization in the Internal Market (trade marks and
designs), hereinafter referred to as ‘the Office’, is hereby established.
Article 3
Capacitytoact
For the purpose of implementing this Regulation, companies or firms
and other legal bodies shall be regarded as legal persons if, under theterms of the law governing them, they have the capacity in their ownname to have rights and obligations of all kinds, to make contracts or
accomplish other legal acts and to sue and be sued.
TITLE II
THELAWRELATINGTOTRADEMARKS
SECTION 1
DEFINITION OF A COMMUNITY TRADE MARK OBTAINING A
COMMUNITYTRADEMARK
Article 4
SignsofwhichaCommunitytrademarkmayconsist
A Community trade mark may consist of any signs capable of being
represented graphically, particularly words, including personal names,
designs, letters, numerals, the shape of goods or of their packaging,provided that such signs are capable of distinguishing the goods orservices of one undertaking from those of other undertakings.
Article 5
PersonswhocanbeproprietorsofCommunitytrademarks
1. The following natural or legal persons, including authorities
established under public law, may be proprietors of Community trademarks:
(a) nationals of the Member States; or
(b) nationals of other States which are parties to the Paris Convention
for the protection of industrial property, hereinafter referred to as‘the Paris Convention’, or to the Agreement establishing the WorldTrade Organization;
(c) nationals of States which are not parties to the Paris Convention
who are domiciled or have their seat or who have real and effectiveindustrial or commercial establishments within the territory of theCommunity or of a State which is party to the Paris Convention; or
(d) nationals, other than those referred to under subparagraph (c), of
any State which is not party to the Paris Convention or to the
Agreement establishing the World Trade Organization and which,
according to published findings, accords to nationals of all theMember States the same protection for trade marks as it accordsto its own nationals and, if nationals of the Member States arerequired to prove registration in the country of origin, recognizesthe registration of Community trade marks as such proof.1994R0040 — EN — 01.01.1996 — 001.001 — 5
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2. With respect to the application of paragraph 1, stateless persons
as defined by Article 1 of the Convention relating to the Status ofStateless Persons signed at New York on 28 September 1954, and refu-gees as defined by Article 1 of the Convention relating to the Status ofRefugees signed at Geneva on 28 July 1951 and modified by the
Protocol relating to the Status of Refugees signed at New York on 31
January 1967, shall be regarded as nationals of the country in whichthey have their habitual residence.
3. Persons who are nationals of a State covered by paragraph 1 (d)
must prove that the trade mark for which an application for a Commu-
nity trade mark has been submitted is registered in the State of origin,unless, according to published findings, the trade marks of nationals ofthe Member States are registered in the State of origin in questionwithout proof of prior registration as a Community trade mark or as anational trade mark in a Member State.
Article 6
MeanswherebyaCommunitytrademarkisobtained
A Community trade mark shall be obtained by registration.
Article 7
Absolutegroundsforrefusal
1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which
may serve, in trade, to designate the kind, quality, quantity,intended purpose, value, geographical origin or the time of produc-
tion of the goods or of rendering of the service, or other
characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which
have become customary in the current language or in the bona fideand established practices of the trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods them-
selves; or
(ii) the shape of goods which is necessary to obtain a technical
result; or
(iii) the shape which gives substantial value to the goods;
(f) trade marks which are contrary to public policy or to accepted prin-
ciples of morality;
(g) trade marks which are of such a nature as to deceive the public, for
instance as to the nature, quality or geographical origin of the
goods or service;
(h) trade marks which have not been authorized by the competent
authorities and are to be refused pursuant to Article 6ter of theParis Convention;
(i) trade marks which include badges, emblems or escutcheons other
than those covered by Article 6ter of the Paris Convention andwhich are of particular public interest, unless the consent of theappropriate authorities to their registration has been given.
(j) trade marks for wines which contain or consist of a geographical
indication identifying wines or for spirits which contain or consistof a geographical indication identifying spirits with respect to suchwines or spirits not having that origin.1994R0040 — EN — 01.01.1996 — 001.001 — 6
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2. Paragraph 1 shall apply notwithstanding that the grounds of non-
registrability obtain in only part of the Community.
3. Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has
become distinctive in relation to the goods or services for which regis-tration is requested in consequence of the use which has been made ofit.
Article 8
Relative groundsforrefusal
1. Upon opposition by the proprietor of an earlier trade mark, the
trade mark applied for shall not be registered:
(a) if it is identical with the earlier trade mark and the goods or
services for which registration is applied for are identical with thegoods or services for which the earlier trade mark is protected;
(b) if because of its identity with or similarity to the earlier trade mark
and the identity or similarity of the goods or services covered by
the trade marks there exists a likelihood of confusion on the partof the public in the territory in which the earlier trade mark isprotected; the likelihood of confusion includes the likelihood ofassociation with the earlier trade mark.
2. for the purposes of paragraph 1, ‘Earlier trade marks’ means:
(a) trade marks of the following kinds with a date of application for
registration which is earlier than the date of application for registra-tion of the Community trade mark, taking account, whereappropriate, of the priorities claimed in respect of those trademarks:
(i) Community trade marks;
(ii) trade marks registered in a Member State, or, in the case of
Belgium, the Netherlands or Luxembourg, at the BeneluxTrade Mark Office;
(iii) trade marks registered under international arrangements which
have effect in a Member State;
(b) applications for the trade marks referred to in subparagraph (a),
subject to their registration;
(c) trade marks which, on the date of application for registration of the
Community trade mark, or, where appropriate, of the priority
claimed in respect of the application for registration of the Commu-
nity trade mark, are well known in a Member State, in the sense inwhich the words ‘well known’ are used in Article 6 bis of the ParisConvention.
3. Upon opposition by the proprietor of the trade mark, a trade mark
shall not be registered where an agent or representative of theproprietor of the trade mark applies for registration thereof in his ownname without the proprietor's consent, unless the agent or representa-
tive justifies his action.
4. Upon opposition by the proprietor of a non-registered trade mark
or of another sign used in the course of trade of more than mere local
significance, the trade mark applied for shall not be registered where
and to the extent that, pursuant to the law of the Member Stategoverning that sign,
(a) rights to that sign were acquired prior to the date of application for
registration of the Community trade mark, or the date of thepriority claimed for the application for registration of the Commu-nity trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a
subsequent trade mark.
5. Furthermore, upon opposition by the proprietor of an earlier trade
mark within the meaning of paragraph 2, the trade mark applied forshall not be registered where it is identical with or similar to the earlier1994R0040 — EN — 01.01.1996 — 001.001 — 7
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trade mark and is to be registered for goods or services which are not
similar to those for which the earlier trade mark is registered, where inthe case of an earlier Community trade mark the trade mark has a repu-
tation in the Community and, in the case of an earlier national trade
mark, the trade mark has a reputation in the Member State concernedand where the use without due cause of the trade mark applied forwould take unfair advantage of, or be detrimental to, the distinctivecharacter or the repute of the earlier trade mark.
SECTION 2
EFFECTSOFCOMMUNITYTRADEMARKS
Article 9
Rightsconferred byaCommunitytrademark
1. A Community trade mark shall confer on the proprietor exclusive
rights therein. The proprietor shall be entitled to prevent all third
parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in rela-
tion to goods or services which are identical with those for whichthe Community trade mark is registered;
(b) any sign where, because of its identity with or similarity to the
Community trade mark and the identity or similarity of the goodsor services covered by the Community trade mark and the sign,
there exists a likelihood of confusion on the part of the public; the
likelihood of confusion includes the likelihood of associationbetween the sign and the trade mark;
(c) any sign which is identical with or similar to the Community trade
mark in relation to goods or services which are not similar to thosefor which the Community trade mark is registered, where the latterhas a reputation in the Community and where use of that signwithout due cause takes unfair advantage of, or is detrimental to,
the distinctive character or the repute of the Community trade
mark.
2. The following, inter alia , may be prohibited under paragraph 1:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market or stocking them for
these purposes under that sign, or offering or supplying servicesthereunder;
(c) importing or exporting the goods under that sign;
(d) using the sign on business papers and in advertising.
3. The rights conferred by a Community trade mark shall prevail
against third parties from the date of publication of registration of thetrade mark. Reasonable compensation may, however, be claimed in
respect of matters arising after the date of publication of a Community
trade mark application, which matters would, after publication of theregistration of the trade mark, be prohibited by virtue of that publica-tion. The court seized of the case may not decide upon the merits ofthe case until the registration has been published.
Article 10
ReproductionofCommunitytrademarksindictionaries
If the reproduction of a Community trade mark in a dictionary, ency-
clopaedia or similar reference work gives the impression that it
constitutes the generic name of the goods or services for which the
trade mark is registered, the publisher of the work shall, at the requestof the proprietor of the Community trade mark, ensure that the repro-duction of the trade mark at the latest in the next edition of thepublication is accompanied by an indication that it is a registered trademark.1994R0040 — EN — 01.01.1996 — 001.001 — 8
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Article 11
Prohibition on the use of a Community trade mark registered in
thenameofanagentorrepresentative
Where a Community trade mark is registered in the name of the agent
or representative of a person who is the proprietor of that trade mark,
without the proprietor's authorization, the latter shall be entitled tooppose the use of his mark by his agent or representative if he hasnot authorized such use, unless the agent or representative justifies hisaction.
Article 12
LimitationoftheeffectsofaCommunitytrademark
A Community trade mark shall not entitle the proprietor to prohibit a
third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose,
value, geographical origin, the time of production of the goods orof rendering of the service, or other characteristics of the goods or
service;
(c) the trade mark where it is necessary to indicate the intended
purpose of a product or service, in particular as accessories or spareparts,
provided he uses them in accordance with honest practices in industrial
or commercial matters.
Article 13
Exhaustionoftherightsconferred byaCommunitytrademark
1. A Community trade mark shall not entitle the proprietor to
prohibit its use in relation to goods which have been put on the marketin the Community under that trade mark by the proprietor or with hisconsent.
2. Paragraph 1 shall not apply where there exist legitimate reasons
for the proprietor to oppose further commercialization of the goods,
especially where the condition of the goods is changed or impaired
after they have been put on the market.
Article 14
Complementary application of national law relating to infringe-
ment
1. The effects of Community trade marks shall be governed solely
by the provisions of this Regulation. In other respects, infringement ofa Community trade mark shall be governed by the national law relating
to infringement of a national trade mark in accordance with the provi-
sions of Title X.
2. This Regulation shall not prevent actions concerning a Commu-
nity trade mark being brought under the law of Member Statesrelating in particular to civil liability and unfair competition.
3. The rules of procedure to be applied shall be determined in accor-
dance with the provisions of Title X.
SECTION 3
USEOFCOMMUNITYTRADEMARKS
Article 15
UseofCommunitytrademarks
1. If, within a period of five years following registration, the
proprietor has not put the Community trade mark to genuine use inthe Community in connection with the goods or services in respect of1994R0040 — EN — 01.01.1996 — 001.001 — 9
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which it is registered, or if such use has been suspended during an
uninterrupted period of five years, the Community trade mark shall besubject to the sanctions provided for in this Regulation, unless there are
proper reasons for non-use.
2. The following shall also constitute use within the meaning of
paragraph 1:
(a) use of the Community trade mark in a form differing in elements
which do not alter the distinctive character of the mark in the
form in which it was registered;
(b) affixing of the Community trade mark to goods or to the packaging
thereof in the Community solely for export purposes.
3. Use of the Community trade mark with the consent of the
proprietor shall be deemed to constitute use by the proprietor.
SECTION 4
COMMUNITYTRADEMARKSASOBJECTSOFPROPERTY
Article 16
DealingwithCommunitytrademarksasnationaltrademarks
1. Unless Articles 17 to 24 provide otherwise, a Community trade
mark as an object of property shall be dealt with in its entirety, and
for the whole area of the Community, as a national trade mark regis-
tered in the Member State in which, according to the Register ofCommunity trade marks,
(a) the proprietor has his seat or his domicile on the relevant date; or
(b) where subparagraph (a) does not apply, the proprietor has an estab-
lishment on the relevant date.
2. In cases which are not provided for by paragraph 1, the Member
State referred to in that paragraph shall be the Member State in which
the seat of the Office is situated.
3. If two or more persons are mentioned in the Register of Commu-
nity trade marks as joint proprietors, paragraph 1 shall apply to thejoint proprietor first mentioned; failing this, it shall apply to the subse-
quent joint proprietors in the order in which they are mentioned. Where
paragraph 1 does not apply to any of the joint proprietors, paragraph 2shall apply.
Article 17
Transfer
1. A Community trade mark may be transferred, separately from any
transfer of the undertaking, in respect of some or all of the goods orservices for which it is registered.
2. A transfer of the whole of the undertaking shall include the
transfer of the Community trade mark except where, in accordance
with the law governing the transfer, there is agreement to the contraryor circumstances clearly dictate otherwise. This provision shall apply tothe contractual obligation to transfer the undertaking.
3. Without prejudice to paragraph 2, an assignment of the Commu-
nity trade mark shall be made in writing and shall require the signature
of the parties to the contract, except when it is a result of a judgment;otherwise it shall be void.
4. Where it is clear from the transfer documents that because of the
transfer the Community trade mark is likely to mislead the public
concerning the nature, quality or geographical origin of the goods orservices in respect of which it is registered, the Office shall not registerthe transfer unless the successor agrees to limit registration of theCommunity trade mark to goods or services in respect of which it isnot likely to mislead.1994R0040 — EN — 01.01.1996 — 001.001 — 10
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5. On request of one of the parties a transfer shall be entered in the
Register and published.
6. As long as the transfer has not been entered in the Register, the
successor in title may not invoke the rights arising from the registration
of the Community trade mark.
7. Where there are time limits to be observed vis-à-vis the Office,
the successor in title may make the corresponding statements to theOffice once the request for registration of the transfer has beenreceived by the Office.
8. All documents which require notification to the proprietor of the
Community trade mark in accordance with Article 77 shall be
addressed to the person registered as proprietor.
Article 18
Transferofatrademarkregistered inthenameofanagent
Where a Community trade mark is registered in the name of the agent
or representative of a person who is the proprietor of that trade mark,without the proprietor's authorization, the latter shall be entitled todemand the assignment in his favour of the said registration, unless
such agent or representative justifies his action.
Article 19
Rightsinrem
1. A Community trade mark may, independently of the undertaking,
be given as security or be the subject of rights in rem.
2. On request of one of the parties, rights mentioned in paragraph 1
shall be entered in the Register and published.
Article 20
Levyofexecution
1. A Community trade mark may be levied in execution.2. As regards the procedure for levy of execution in respect of a
Community trade mark, the courts and authorities of the Member
States determined in accordance with Article 16 shall have exclusivejurisdiction.
3. On request of one the parties, levy of execution shall be entered
in the Register and published.
Article 21
Bankruptcyorlikeproceedings
1. Until such time as common rules for the Member States in this
field enter into force, the only Member State in which a Community
trade mark may be involved in bankruptcy or like proceedings shallbe that in which such proceedings are first brought within the meaningof national law or of conventions applicable in this field.
2. Where a Community trade mark is involved in bankruptcy or like
proceedings, on request of the competent national authority an entry to
this effect shall be made in the Register and published.
Article 22
Licensing
1. A Community trade mark may be licensed for some or all of the
goods or services for which it is registered and for the whole or part ofthe Community. A licence may be exclusive or non-exclusive.
2. The proprietor of a Community trade mark may invoke the rights
conferred by that trade mark against a licensee who contravenes anyprovision in his licensing contract with regard to its duration, the form1994R0040 — EN — 01.01.1996 — 001.001 — 11
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covered by the registration in which the trade mark may be used, the
scope of the goods or services for which the licence is granted, theterritory in which the trade mark may be affixed, or the quality of the
goods manufactured or of the services provided by the licensee.
3. Without prejudice to the provisions of the licensing contract, the
licensee may bring proceedings for infringement of a Community trademark only if its proprietor consents thereto. However, the holder of anexclusive licence may bring such proceedings if the proprietor of the
trade mark, after formal notice, does not himself bring infringement
proceedings within an appropriate period.
4. A licensee shall, for the purpose of obtaining compensation for
damage suffered by him, be entitled to intervene in infringementproceedings brought by the proprietor of the Community trade mark.
5. On request of one of the parties the grant or transfer of a licence
in respect of a Community trade mark shall be entered in the Registerand published.
Article 23
Effectsvis-à-visthirdparties
1. Legal acts referred to in Article 17, 19 and 22 concerning a
Community trade mark shall only have effects vis-à-vis third parties
in all the Member States after entry in the Register. Nevertheless,such an act, before it is so entered, shall have effect vis-à-vis third
parties who have acquired rights in the trade mark after the date ofthat act but who knew of the act at the date on which the rights were
acquired.
2. Paragraph 1 shall not apply in the case of a person who acquires
the Community trade mark or a right concerning the Community trademark by way of transfer of the whole of the undertaking or by anyother universal succession.
3. The effects vis-à-vis third parties of the legal acts referred to in
Article 20 shall be governed by the law of the Member State deter-mined in accordance with Article 16.
4. Until such time as common rules for the Member States in the
field of bankruptcy enter into force, the effects vis-à-vis third parties
of bankruptcy or like proceedings shall be governed by the law of the
Member State in which such proceedings are first brought within themeaning of national law or of conventions applicable in this field.
Article 24
TheapplicationforaCommunitytrademarkasanobjectofprop-
erty
Articles 16 to 23 shall apply to applications for Community trade
marks.
TITLE III
APPLICATIONFORCOMMUNITYTRADEMARKS
SECTION 1
FILING OF APPLICATIONS AND THE CONDITIONS WHICH
GOVERNTHEM
Article 25
Filingofapplications
1. An application for a Community trade mark shall be filed, at the
choice of the applicant,
(a) at the Office; or
(b) at the central industrial property office of a Member State or at the
Benelux Trade Mark Office. An application filed in this way shall1994R0040 — EN — 01.01.1996 — 001.001 — 12
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have the same effect as if it had been filed on the same date at the
Office.
2. Where the application is filed at the central industrial property
office of a Member State or at the Benelux Trade Mark Office, thatoffice shall take all steps to forward the application to the Office withintwo weeks after filing. It may charge the applicant a fee which shall
not exceed the administrative costs of receiving and forwarding the
application.
3. Applications referred to in paragraph 2 which reach the Office
more than one month after filing shall be deemed withdrawn.
4. Ten years after the entry into force of this Regulation, the
Commission shall draw up a report on the operation of the system of
filing applications for Community trade marks, together with any
proposals for modifying this system.
Article 26
Conditionswithwhichapplicationsmustcomply
1. An application for a Community trade mark shall contain:
(a) a request for the registration of a Community trade mark;
(b) information identifying the applicant;
(c) a list of the goods or services in respect of which the registration is
requested;
(d) a representation of the trade mark.
2. The application for a Community trade mark shall be subject to
the payment of the application fee and, when appropriate, of one ormore class fees.
3. An application for a Community trade mark must comply with
the conditions laid down in the implementing Regulation referred toin Article 140.
Article 27
Dateoffiling
The date of filing of a Community trade mark application shall be the
date on which documents containing the information specified inArticle 26 (1) are filed with the Office by the applicant or, if the appli-cation has been filed with the central office of a Member State or withthe Benelux Trade Mark Office, with that office, subject to payment ofthe application fee within a period of one month of filing the above-
mentioned documents.
Article 28
Classification
Goods and services in respect of which Community trade marks are
applied for shall be classified in conformity with the system of classi-
fication specified in the Implementing Regulation.
SECTION 2
PRIORITY
Article 29
Rightofpriority
1. A person who has duly filed an application for a trade mark in or
for any State party to the Paris Convention or to the Agreement estab-lishing the World Trade Organization, or his successors in title, shallenjoy, for the purpose of filing a Community trade mark applicationfor the same trade mark in respect of goods or services which are iden-tical with or contained within those for which the application has been1994R0040 — EN — 01.01.1996 — 001.001 — 13
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filed, a right or priority during a period of six months from the date of
filing of the first application.
2. Every filing that is equivalent to a regular national filing under
the national law of the State where it was made or under bilateral ormultilateral agreements shall be recognized as giving rise to a right ofpriority.
3. By a regular national filing is meant any filing that is sufficient to
establish the date on which the application was filed, whatever may be
the outcome of the application.
4. A subsequent application for a trade mark which was the subject
of a previous first application in respect of the same goods or services,
and which is filed in or in respect of the same State shall be considered
as the first application for the purposes of determining priority,provided that, at the date of filing of the subsequent application, theprevious application has been withdrawn, abandoned or refused,without being open to public inspection and without leaving any rights
outstanding, and has not served as a basis for claiming a right of
priority. The previous application may not thereafter serve as a basisfor claiming a right of priority.
5. If the first filing has been made in a State which is not a party to
the Paris Convention or to the Agreement establishing the World Trade
Organization, paragraphs 1 to 4 shall apply only in so far as that State,according to published findings, grants, on the basis of the first filingmade at the Office and subject to conditions equivalent to those laiddown in this Regulation, a right of priority having equivalent effect.
Article 30
Claimingpriority
An applicant desiring to take advantage of the priority of a previous
application shall file a declaration of priority and a copy of the
previous application. If the language of the latter is not one of the
languages of the Office, the applicant shall file a translation of theprevious application in one of those languages.
Article 31
Effectofpriorityright
The right of priority shall have the effect that the date of priority shall
count as the date of filing of the Community trade mark application forthe purposes of establishing which rights take precedence.
Article 32
EquivalenceofCommunityfilingwithnationalfiling
A Community trade mark application which has been accorded a date
of filing shall, in the Member States, be equivalent to a regular national
filing, where appropriate with the priority claimed for the Community
trade mark application.
SECTION 3
EXHIBITIONPRIORITY
Article 33
Exhibitionpriority
1. If an applicant for a Community trade mark has displayed goods
or services under the mark applied for, at an official or officially recog-nized international exhibition falling within the terms of theConvention on International Exhibitions signed at Paris on 22November 1928 and last revised on 30 November 1972, he may, if he1994R0040 — EN — 01.01.1996 — 001.001 — 14
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files the application within a period of six months from the date of the
first display of the goods or services under the mark applied for, claima right of priority from that date within the meaning of Article 31.
2. An applicant who wishes to claim priority pursuant to paragraph
1 must file evidence of the display of goods or services under the mark
applied for under the conditions laid down in the Implementing Regu-
lation.
3. An exhibition priority granted in a Member State or in a third
country does not extend the period of priority laid down in Article 29.
SECTION 4
CLAIMINGTHESENIORITYOFANATIONALTRADEMARK
Article 34
Claimingtheseniorityofanationaltrademark
1. The proprietor of an earlier trade mark registered in a Member
State, including a trade mark registered in the Benelux countries, orregistered under international arrangements having effect in a MemberState, who applies for an identical trade mark for registration as aCommunity trade mark for goods or services which are identical with
or contained within those for which the earlier trade mark has been
registered, may claim for the Community trade mark the seniority ofthe earlier trade mark in respect of the Member State in or for whichit is registered.
2. Seniority shall have the sole effect under this Regulation that,
where the proprietor of the Community trade mark surrenders theearlier trade mark or allows it to lapse, he shall be deemed to continueto have the same rights as he would have had if the earlier trade mark
had continued to be registered.
3. The seniority claimed for the Community trade mark shall lapse
if the earlier trade mark the seniority of which is claimed is declared
to have been revoked or to be invalid or if it is surrendered prior tothe registration of the Community trade mark.
Article 35
ClaimingseniorityafterregistrationoftheCommunitytrademark
1. The proprietor of a Community trade mark who is the proprietor
of an earlier identical trade mark registered in a Member State,including a trade mark registered in the Benelux countries, or of a trade
mark registered under international arrangements having effect in a
Member State, for identical goods or services, may claim the seniorityof the earlier trade mark in respect of the Member State in or for whichit is registered.
2. Article 34 (2) and (3) shall apply.
TITLE IV
REGISTRATIONPROCEDURE
SECTION 1
EXAMINATIONOFAPPLICATIONS
Article 36
Examinationoftheconditionsoffiling
1. The Office shall examine whether:
(a) the Community trade mark application satisfies the requirements
for the accordance of a date of filing in accordance with Article 27;
(b) the Community trade mark application complies with the condi-
tions laid down in the Implementing Regulation;1994R0040 — EN — 01.01.1996 — 001.001 — 15
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(c) where appropriate, the class fees have been paid within the
prescribed period.
2. Where the Community trade mark application does not satisfy the
requirements referred to in paragraph 1, the Office shall request theapplicant to remedy the deficiencies or the default on payment withinthe prescribed period.
3. If the deficiencies or the default on payment established pursuant
to paragraph 1 (a) are not remedied within this period, the applicationshall not be dealt with as a Community trade mark application. If theapplicant complies with the Office's request, the Office shall accord asthe date of filing of the application the date on which the deficiencies
or the default on payment established are remedied.
4. If the deficiencies established pursuant to paragraph 1 (b) are not
remedied within the prescribed period, the Office shall refuse the appli-cation.
5. If the default on payment established pursuant to paragraph 1 (c)
is not remedied within the prescribed period, the application shall bedeemed to be withdrawn unless it is clear which categories of goodsor services the amount paid is intended to cover.
6. Failure to satisfy the requirements concerning the claim to
priority shall result in loss of the right of priority for the application.
7. Failure to satisfy the requirements concerning the claiming of
seniority of a national trade mark shall result in loss of that right for
the application.
Article 37
Examination of the conditions relating to the entitlement of the
proprietor
1. Where, pursuant to Article 5, the applicant may not be the
proprietor of a Community trade mark, the application shall be refused.
2. The application may not be refused before the applicant has been
given the opportunity to withdraw his application or submit his obser-
vations.
Article 38
Examinationastoabsolutegroundsforrefusal
1. Where, under Article 7, a trade mark is ineligible for registration
in respect of some or all of the goods or services covered by theCommunity trade mark application, the application shall be refused asregards those goods or services.
2. Where the trade mark contains an element which is not distinc-
tive, and where the inclusion of said element in the trade mark couldgive rise to doubts as to the scope of protection of the trade mark, theOffice may request, as a condition for registration of said trade mark,
that the applicant state that he disclaims any exclusive right to such
element. Any disclaimer shall be published together with the applica-tion or the registration of the Community trade mark, as the case maybe.
3. The application shall not be refused before the applicant has been
allowed the opportunity of withdrawing or amending the application orof submitting his observations.
SECTION 2
SEARCH
Article 39
Search
1. Once the Office has accorded a date of filing to a Community
trade mark application and has established that the applicant satisfies1994R0040 — EN — 01.01.1996 — 001.001 — 16
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the conditions referred to in Article 5, it shall draw upa Community
search report citing those earlier Community trade marks or Commu-nity trade mark applications discovered which may be invoked under
Article 8 against the registration of the Community trade mark applied
for.
2. As soon as a Community trade mark application has been
accorded a date of filing, the Office shall transmit a copy thereof to
the central industrial property office of each Member State which has
informed the Office of its decision to operate a search in its ownregister of trade marks in respect of Community trade mark applica-tions.
3. Each of the central industrial property offices referred to in para-
graph 2 shall communicate to the Office within three months as fromthe date on which it received the Community trade mark application asearch report which shall either cite those earlier national trade marksor trade mark applications discovered which may be invoked underArticle 8 against the registration of the Community trade mark applied
for, or state that the search has revealed no such rights.
4. An amount shall be paid by the Office to each central industrial
property office for each search report provided by that office in accor-dance with paragraph 3. The amount, which shall be the same for each
office, shall be fixed by the Budget Committee by means of a decision
adopted by a majority of three-quarters of the representatives of theMember States.
5. The Office shall transmit without delay to the applicant for the
Community trade mark the Community search report and the national
search reports received within the time limit laid down in paragraph 3.
6. Upon publication of the Community trade mark application,
which may not take place before the expiry of a period of one monthas from the date on which the Office transmits the search reports to the
applicant, the Office shall inform the proprietors of any earlier
Community trade marks or Community trade mark applications citedin the Community search report of the publication of the Communitytrade mark application.
7. The Commission shall, five years after the opening of the Office
for the filing of applications, submit to the Council a report on theoperation of the system of searching resulting from this Article,including the payments made to Member States under paragraph 4,and, if necessary, appropriate proposals for amending this Regulationwith a view to adapting the system of searching on the basis of the
experience gained and bearing in mind developments in searching tech-
niques.
SECTION 3
PUBLICATIONOFTHEAPPLICATION
Article 40
Publicationoftheapplication
1. If the conditions which the application for a Community trade
mark must satisfy have been fulfilled and if the period referred to inArticle 39 (6) has expired, the application shall be published to the
extent that it has not been refused pursuant to Articles 37 and 38.
2. Where, after publication, the application is refused under Articles
37 and 38, the decision that it has been refused shall be published uponbecoming final.1994R0040 — EN — 01.01.1996 — 001.001 — 17
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SECTION 4
OBSERVATIONSBYTHIRDPARTIESANDOPPOSITION
Article 41
Observationsbythirdparties
1. Following the publication of the Community trade mark applica-
tion, any natural or legal person and any group or body representing
manufacturers, producers, suppliers of services, traders or consumers
may submit to the Office written observations, explaining on whichgrounds under Article 7, in particular, the trade mark shall not be regis-teredex officio . They shall not be parties to the proceedings before the
Office.
2. The observations referred to in paragraph 1 shall be communi-
cated to the applicant who may comment on them.
Article 42
Opposition
1. Within a period of three months following the publication of a
Community trade mark application, notice of opposition to registration
of the trade mark may be given on the grounds that it may not be regis-
tered under Article 8:
(a) by the proprietors of earlier trade marks referred to in Article 8 (2)
as well as licensees authorized by the proprietors of those trade
marks, in respect of Article 8 (1) and (5);
(b) by the proprietors of trade marks referred to in Article 8 (3);
(c) by the proprietors of earlier marks or signs referred to in Article 8
(4) and by persons authorized under the relevant national law to
exercise these rights.
2. Notice of opposition to registration of the trade mark may also be
given, subject to the conditions laid down in paragraph 1, in the eventof the publication of an amended application in accordance with the
second sentence of Article 44 (2).
3. Opposition must be expressed in writing and must specify the
grounds on which it is made. It shall not be treated as duly entereduntil the opposition fee has been paid. Within a period fixed by the
Office, the opponent may submit in support of his case facts, evidence
and arguments.
Article 43
Examinationofopposition
1. In the examination of the opposition the Office shall invite the
parties, as often as necessary, to file observations, within a period setthem by the Office, on communications from the other parties or issued
by itself.
2. If the applicant so requests, the proprietor of an earlier Commu-
nity trade mark who has given notice of opposition shall furnish proofthat, during the period of five years preceding the date of publication of
the Community trade mark application, the earlier Community trade
mark has been put to genuine use in the Community in connectionwith the goods or services in respect of which it is registered andwhich he cites as justification for his opposition, or that there areproper reasons for non-use, provided the earlier Community 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. Ifthe earlier Community trade mark has been used in relation to part onlyof the goods or services for which it is registered it shall, for thepurposes of the examination of the opposition, be deemed to be regis-tered in respect only of that part of the goods or services.1994R0040 — EN — 01.01.1996 — 001.001 — 18
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3. Paragraph 2 shall apply to earlier national trade marks referred to
in Article 8 (2) (a), by substituting use in the Member State in whichthe earlier national trade mark is protected for use in the Community.
4. The Office may, if it thinks fit, invite the parties to make a
friendly settlement.
5. If examination of the opposition reveals that the trade mark may
not be registered in respect of some or all of the goods or services for
which the Community trade mark application has been made, the appli-cation shall be refused in respect of those goods or services. Otherwisethe opposition shall be rejected.
6. The decision refusing the application shall be published upon
becoming final.
SECTION 5
WITHDRAWAL, RESTRICTION AND AMENDMENT OF THE APPLI-
CATION
Article 44
Withdrawal,restriction andamendmentoftheapplication
1. The applicant may at any time withdraw his Community trade
mark application or restrict the list of goods or services containedtherein. Where the application has already been published, the with-drawal or restriction shall also be published.
2. In other respects, a Community trade mark application may be
amended, upon request of the applicant, only by correcting the nameand address of the applicant, errors of wording or of copying, orobvious mistakes, provided that such correction does not substantiallychange the trade mark or extend the list of goods or services. Wherethe amendments affect the representation of the trade mark or the list
of goods or services and are made after publication of the application,
the trade mark application shall be published as amended.
SECTION 6
REGISTRATION
Article 45
Registration
Where an application meets the requirements of this Regulation and
where no notice of opposition has been given within the period referred
to in Article 42 (1) or where opposition has been rejected by a defini-
tive decision, the trade mark shall be registered as a Community trademark, provided that the registration fee has been paid within the periodprescribed. If the fee is not paid within this period the application shallbe deemed to be withdrawn.
TITLE V
DURATION,RENEWALANDALTERATIONOFCOMMUNITY
TRADEMARKS
Article 46
Durationofregistration
Community trade marks shall be registered for a period of ten years
from the date of filing of the application. Registration may be renewedin accordance with Article 47 for further periods of ten years.1994R0040 — EN — 01.01.1996 — 001.001 — 19
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Article 47
Renewal
1. Registration of the Community trade mark shall be renewed at the
request of the proprietor of the trade mark or any person expressly
authorized by him, provided that the fees have been paid.
2. The Office shall inform the proprietor of the Community trade
mark, and any person having a registered right in respect of the
Community trade mark, of the expiry of the registration in good timebefore the said expiry. Failure to give such information shall notinvolve the responsibility of the Office.
3. The request for renewal shall be submitted within a period of six
months ending on the last day of the month in which protection ends.The fees shall also be paid within this period. Failing this, the requestmay be submitted and the fees paid within a further period of six
months following the day referred to in the first sentence, provided
that an additional fee is paid within this further period.
4. Where the request is submitted or the fees paid in respect of only
some of the goods or services for which the Community trade mark is
registered, registration shall be renewed for those goods or servicesonly.
5. Renewal shall take effect from the day following the date on
which the existing registration expires. The renewal shall be registered.
Article 48
Alteration
1. The Community trade mark shall not be altered in the register
during the period of registration or on renewal thereof.
2. Nevertheless, where the Community trade mark includes the
name and address of the proprietor, any alteration thereof not substan-
tially affecting the identity of the trade mark as originally registered
may be registered at the request of the proprietor.
3. The publication of the registration of the alteration shall contain a
representation of the Community trade mark as altered. Third parties
whose rights may be affected by the alteration may challenge the regis-tration thereof within a period of three months following publication.
TITLE VI
SURRENDER,REVOCATIONANDINVALIDITY
SECTION 1
SURRENDER
Article 49
Surrender
1. A Community trade mark may be surrendered in respect of some
or all of the goods or services for which it is registered.
2. The surrender shall be declared to the Office in writing by the
proprietor of the trade mark. It shall not have effect until it has beenentered in the Register.
3. Surrender shall be entered only with the agreement of the
proprietor of a right entered in the Register. If a licence has been regis-tered, surrender shall only be entered in the Register if the proprietor ofthe trade mark proves that he has informed the licensee of his intentionto surrender; this entry shall be made on expiry of the periodprescribed by the Implementing Regulation.1994R0040 — EN — 01.01.1996 — 001.001 — 20
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SECTION 2
GROUNDSFORREVOCATION
Article 50
Groundsforrevocation
1. The rights of the proprietor of the Community trade mark shall be
declared to be revoked on application to the Office or on the basis of acounterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not
been put to genuine use in the Community in connection with thegoods or services in respect of which it is registered, and there are
no proper reasons for non-use; however, no person may claim that
the proprietor's rights in a Community trade mark should berevoked where, during the interval between expiry of the five-yearperiod and filing of the application or counterclaim, genuine use ofthe trade mark has been started or resumed; the commencement or
resumption of use within a period of three months preceding the
filing of the application or counterclaim which began at the earlieston expiry of the continuous period of five years of non-use shall,however, be disregarded where preparations for the commencementor resumption occur only after the proprietor becomes aware thatthe application or counterclaim may be filed;
(b) if, in consequence of acts or inactivity of the proprietor, the trade
mark has become the common name in the trade for a product orservice in respect of which it is registered;
(c) if, in consequence of the use made of it by the proprietor of the
trade mark or with his consent in respect of the goods or services
for which it is registered, the trade mark is liable to mislead the
public, particularly as to the nature, quality or geographical originof those goods or services;
(d) if the proprietor of the trade mark no longer satisfies the conditions
laid down by Article 5.
2. Where the grounds for revocation of rights exist in respect of
only some of the goods or services for which the Community trade
mark is registered, the rights of the proprietor shall be declared to berevoked in respect of those goods or services only.
SECTION 3
GROUNDSFORINVALIDITY
Article 51
Absolutegroundsforinvalidity
1. A Community trade mark shall be declared invalid on application
to the Office or on the basis of a counterclaim in infringement proceed-ings,
(a) where the Community trade mark has been registered in breach of
the provisions of Article 5 or of Article 7;
(b) where the applicant was acting in bad faith when he filed the appli-
cation for the trade mark.
2. Where the Community trade mark has been registered in breach
of the provisions of Article 7 (1) (b), (c) or (d), it may nevertheless
not be declared invalid if, in consequence of the use which has been
made of it, it has after registration acquired a distinctive character inrelation to the goods or services for which it is registered.
3. Where the ground for invalidity exists in respect of only some of
the goods or services for which the Community trade mark is regis-tered, the trade mark shall be declared invalid as regards those goodsor services only.1994R0040 — EN — 01.01.1996 — 001.001 — 21
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Article 52
Relative groundsforinvalidity
1. A Community trade mark shall be declared invalid on application
to the Office or on the basis of a counterclaim in infringement proceed-
ings:
(a) where there is an earlier trade mark as referred to in Article 8 (2)
and the conditions set out in paragraph 1 or paragraph 5 of thatArticle are fulfilled;
(b) where there is a trade mark as referred to in Article 8 (3) and the
conditions set out in that paragraph are fulfilled;
(c) where there is an earlier right as referred to in Article 8 (4) and the
conditions set out in that paragraph are fulfilled.
2. A Community trade mark shall also be declared invalid on appli-
cation to the Office or on the basis of a counterclaim in infringement
proceedings where the use of such trade mark may be prohibited
pursuant to the national law governing the protection of any otherearlier right an in particular:
(a) a right to a name;
(b) a right of personal portrayal;
(c) a copyright;
(d) an industrial property right.
3. A Community trade mark may not be declared invalid where the
proprietor of a right referred to in paragraphs 1 or 2 consents expressly
to the registration of the Community trade mark before submission of
the application for a declaration of invalidity or the counterclaim.
4. Where the proprietor of one of the rights referred to in paragraphs
1 or 2 has previously applied for a declaration that a Community trademark is invalid or made a counterclaim in infringement proceedings, hemay not submit a new application for a declaration of invalidity orlodge a counterclaim on the basis of another of the said rights which
he could have invoked in support of his first application or counter-
claim.
5. Article 51 (3) shall apply.
Article 53
Limitationinconsequenceofacquiescence
1. Where the proprietor of a Community trade mark has acquiesced,
for a period of five successive years, in the use of a later Communitytrade mark in the Community while being aware of such use, he shallno longer be entitled on the basis of the earlier trade mark either toapply for a declaration that the later trade mark is invalid or to oppose
the use of the later trade mark in respect of the goods or services for
which the later trade mark has been used, unless registration of thelater Community trade mark was applied for in bad faith.
2. Where the proprietor of an earlier national trade mark as referred
to in Article 8 (2) or of another earlier sign referred to in Article 8 (4)has acquiesced, for a period of five successive years, in the use of a
later Community trade mark in the Member State in which the earlier
trade mark or the other earlier sign is protected while being aware ofsuch use, he shall no longer be entitled on the basis of the earlier trademark or of the other earlier sign either to apply for a declaration thatthe later trade mark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trade
mark has been used, unless registration of the later Community trade
mark was applied for in bad faith.
3. In the cases referred to in paragraphs 1 and 2, the proprietor of a
later Community trade mark shall not be entitled to oppose the use ofthe earlier right, even though that right may no longer be invokedagainst the later Community trade mark.1994R0040 — EN — 01.01.1996 — 001.001 — 22
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SECTION 4
CONSEQUENCESOFREVOCATIONANDINVALIDITY
Article 54
Consequencesofrevocation andinvalidity
1. The Community trade mark shall be deemed not to have had, as
from the date of the application for revocation or of the counterclaim,
the effects specified in this Regulation, to the extent that the rights of
the proprietor have been revoked. An earlier date, on which one of thegrounds for revocation occurred, may be fixed in the decision at therequest of one of the parties.
2. The Community trade mark shall be deemed not to have had, as
from the outset, the effects specified in this Regulation, to the extentthat the trade mark has been declared invalid.
3. Subject to the national provisions relating either to claims for
compensation for damage caused by negligence or lack of good faith
on the part of the proprietor of the trade mark, or to unjust enrichment,the retroactive effect of revocation or invalidity of the trade mark shallnot affect:
(a) any decision on infringement which has acquired the authority of a
final decision and been enforced prior to the revocation or inva-lidity decision;
(b) any contract concluded prior to the revocation or invalidity deci-
sion, in so far as it has been performed before that decision;however, repayment, to an extent justified by the circumstances,of sums paid under the relevant contract, may be claimed ongrounds of equity.
SECTION 5
PROCEEDINGSINTHEOFFICEINRELATIONTOREVOCATIONOR
INVALIDITY
Article 55
Applicationforrevocationorforadeclarationofinvalidity
1. An application for revocation of the rights of the proprietor of a
Community trade mark or for a declaration that the trade mark isinvalid may be submitted to the Office:
(a) where Articles 50 and 51 apply, by any natural or legal person and
any group or body set up for the purpose of representing the inter-
ests of manufacturers, producers, suppliers of services, traders orconsumers, which under the terms of the law governing it has thecapacity in its own name to sue and be sued;
(b) where Article 52 (1) applies, by the persons referred to in Article
42 (1);
(c) where Article 52 (2) applies, by the owners of the earlier rights
referred to in that provision or by the persons who are entitledunder the law of the Member State concerned to exercise the rights
in question.
2. The application shall be filed in a written reasoned statement. It
shall not be deemed to have been filed until the fee has been paid.
3. An application for revocation or for a declaration of invalidity
shall be inadmissible if an application relating to the same subjectmatter and cause of action, and involving the same parties, has beenadjudicated on by a court in a Member State and has acquired theauthority of a final decision.1994R0040 — EN — 01.01.1996 — 001.001 — 23
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Article 56
Examinationoftheapplication
1. On the examination of the application for revocation of rights or
for a declaration of invalidity, the Office shall invite the parties, asoften as necessary, to file observations, within a period to be fixed bythe Office, on communications from the other parties or issued byitself.
2. If the proprietor of the Community trade mark so requests, the
proprietor of an earlier Community trade mark, being a party to theinvalidity proceedings, shall furnish proof that, during the period of
five years preceding the date of the application for a declaration of
invalidity, the earlier Community trade mark has been put to genuineuse in the Community in connection with the goods or services inrespect of which it is registered and which he cites as justification forhis application, or that there are proper reasons for non-use, provided
the earlier Community trade mark has at that date been registered for
non-use, provided the earlier Community trade mark has at that datebeen registered for not less than five years. If, at the date on whichthe Community trade mark application was published, the earlierCommunity trade mark had been registered for not less than five years,the proprietor of the earlier Community trade mark shall furnish proof
that, in addition, the conditions contained in Article 43 (2) were satis-
fied at that date. In the absence of proof to this effect the applicationfor a declaration of invalidity shall be rejected. If the earlier Commu-nity trade mark has been used in relation to part only of the goods orservices for which it is registered it shall, for the purpose of the exam-ination of the application for a declaration of invalidity, be deemed to
be registered in respect only of that part of the goods or services.
3. Paragraph 2 shall apply to earlier national trade marks referred to
in Article 8 (2) (a), by substituting use in the Member State in which
the earlier national trade mark is protected for use in the Community.
4. The Office may, if it thinks fit, invite the parties to make a
friendly settlement.
5. If the examination of the application for revocation of rights or
for a declaration of invalidity reveals that the trade mark should not
have been registered in respect of some or all of the goods or servicesfor which it is registered, the rights of the proprietor of the Communitytrade mark shall be revoked or it shall be declared invalid in respect ofthose goods or services. Otherwise the application for revocation of
rights or for a declaration of invalidity shall be rejected.
6. The decision revoking the rights of the proprietor of the Commu-
nity trade mark or declaring it invalid shall be entered in the Register
upon becoming final.
TITLE VII
APPEALS
Article 57
Decisionssubjecttoappeal
1. An appeal shall lie from decisions of the examiners, Opposition
Divisions, Administration of Trade Marks and Legal Divisions andCancellation Divisions. It shall have suspensive effect.
2. A decision which does not terminate proceedings as regards one
of the parties can only be appealed together with the final decision,unless the decision allows separate appeal.1994R0040 — EN — 01.01.1996 — 001.001 — 24
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Article 58
Personsentitledtoappealandtobepartiestoappealproceedings
Any party to proceedings adversely affected by a decision may appeal.
Any other parties to the proceedings shall be parties to the appealproceedings as of right.
Article 59
Timelimit andformofappeal
Notice of appeal must be filed in writing at the Office within two
months after the date of notification of the decision appealed from.The notice shall be deemed to have been filed only when the fee for
appeal has been paid. Within four months after the date of notification
of the decision, a written statement setting out the grounds of appealmust be filed.
Article 60
Interlocutoryrevision
1. If the department whose decision is contested considers the
appeal to be admissible and well founded, it shall rectify its decision.This shall not apply where the appellant is opposed by another party tothe proceedings.
2. If the decision is not rectified within one month after receipt of
the statement of grounds, the appeal shall be remitted to the Board ofAppeal without delay, and without comment as to its merit.
Article 61
Examinationofappeals
1. If the appeal is admissible, the Board of Appeal shall examine
whether the appeal is allowable.
2. In the examination of the appeal, the Board of Appeal shall invite
the parties, as often as necessary, to file observations, within a period
to be fixed by the Board of Appeal, on communications from the other
parties or issued by itself.
Article 62
Decisionsinrespectofappeals
1. Following the examination as to the allowability of the appeal,
the Board of Appeal shall decide on the appeal. The Board of Appeal
may either exercise any power within the competence of the depart-ment which was responsible for the decision appealed or remit thecase to that department for further prosecution.
2. If the Board of Appeal remits the case for further prosecution to
the department whose decision was appealed, that department shall bebound by the ratio decidendi of the Board of Appeal, in so far as the
facts are the same.
3. The decisions of the Boards of Appeal shall take effect only as
from the date of expiration of the period referred to in Article 63 (5)or, if an action has been brought before the Court of Justice withinthat period, as from the date of rejection of such action.
Article 63
Actionsbefore theCourtofJustice
1. Actions may be brought before the Court of Justice against deci-
sions of the Boards of Appeal on appeals.
2. The action may be brought on grounds of lack of competence,
infringement of an essential procedural requirement, infringement ofthe Treaty, of this Regulation or of any rule of law relating to theirapplication or misuse of power.1994R0040 — EN — 01.01.1996 — 001.001 — 25
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3. The Court of Justice has jurisdiction to annul or to alter the
contested decision.
4. The action shall be open to any party to proceedings before the
Board of Appeal adversely affected by its decision.
5. The action shall be brought before the Court of Justice within two
months of the date of notification of the decision of the Board of
Appeal.
6. The Office shall be required to take the necessary measures to
comply with the judgment of the Court of Justice.
TITLE VIII
COMMUNITYCOLLECTIVEMARKS
Article 64
Communitycollective marks
1. A Community collective mark shall be a Community trade mark
which is described as such when the mark is applied for and is capable
of distinguishing the goods or services of the members of the associa-tion which is the proprietor of the mark from those of otherundertakings. Associations of manufacturers, producers, suppliers ofservices, or traders which, under the terms of the law governing them,have the capacity in their own name to have rights and obligations of
all kinds, to make contracts or accomplish other legal acts and to sue
and be sued, as well as legal persons governed by public law, mayapply for Community collective marks.
2. In derogation from Article 7 (1) (c), signs or indications which
may serve, in trade, to designate the geographical origin of the goods
or services may constitute Community collective marks within themeaning of paragraph 1. A collective mark shall not entitle theproprietor to prohibit a third party from using in the course of tradesuch signs or indications, provided he uses them in accordance with
honest practices in industrial or commercial matters; in particular,
such a mark may not be invoked against a third party who is entitledto use a geographical name.
3. The provisions of this Regulation shall apply to Community
collective marks, unless Articles 65 to 72 provide otherwise.
Article 65
Regulationsgoverninguseofthemark
1. An applicant for a Community collective mark must submit regu-
lations governing its use within the period prescribed.
2. The regulations governing use shall specify the persons author-
ized to use the mark, the conditions of membershipof the association
and, where they exist, the conditions of use of the mark including sanc-tions. The regulations governing use of a mark referred to in Article 64(2) must authorize any person whose goods or services originate in thegeographical area concerned to become a member of the associationwhich is the proprietor of the mark.
Article 66
Refusaloftheapplication
1. In addition to the grounds for refusal of a Community trade mark
application provided for in Articles 36 and 38, an application for aCommunity collective mark shall be refused where the provisions ofArticle 64 or 65 are not satisfied, or where the regulations governinguse are contrary to public policy or to accepted principles of morality.
2. An application for a Community collective mark shall also be
refused if the public is liable to be misled as regards the character orthe significance of the mark, in particular if it is likely to be taken tobe something other than a collective mark.1994R0040 — EN — 01.01.1996 — 001.001 — 26
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3. An application shall not be refused if the applicant, as a result of
amendment of the regulations governing use, meets the requirements ofparagraphs 1 and 2.
Article 67
Observationsbythirdparties
Apart from the cases mentioned in Article 41, any person, group or
body referred to in that Article may submit to the Office written obser-
vations based on the particular grounds on which the application for aCommunity collective mark should be refused under the terms ofArticle 66.
Article 68
Useofmarks
Use of a Community collective mark by any person who has authority
to use it shall satisfy the requirements of this Regulation, provided thatthe other conditions which this Regulation imposes with regard to the
use of Community trade marks are fulfilled.
Article 69
Amendmentoftheregulationsgoverninguseofthemark
1. The proprietor of a Community collective mark must submit to
the Office any amended regulations governing use.
2. The amendment shall not be mentioned in the Register if the
amended regulations do not satisfy the requirements of Article 65 orinvolve one of the grounds for refusal referred to in Article 66.
3. Article 67 shall apply to amended regulations governing use.
4. For the purposes of applying this Regulation, amendments to the
regulations governing use shall take effect only from the date of entryof the mention of the amendment in the Register.
Article 70
Personswhoareentitledtobringanactionforinfringement
1. The provisions of Article 22 (3) and (4) concerning the rights of
licensees shall apply to every person who has authority to use a
Community collective mark.
2. The proprietor of a Community collective mark shall be entitled
to claim compensation on behalf of persons who have authority to usethe mark where they have sustained damage in consequence of
unauthorized use of the mark.
Article 71
Groundsforrevocation
Apart from the grounds for revocation provided for in Article 50, the
rights of the proprietor of a Community collective mark shall berevoked on application to the Office or on the basis of a counterclaimin infringement proceedings, if:
(a) the proprietor does not take reasonable steps to prevent the mark
being used in a manner incompatible with the conditions of use,
where these exist, laid down in the regulations governing use,amendments to which have, where appropriate, been mentioned inthe Register;
(b) the manner in which the mark has been used by the proprietor has
caused it to become liable to mislead the public in the mannerreferred to in Article 66 (2);
(c) an amendment to the regulations governing use of the mark has
been mentioned in the Register in breach of the provisions ofArticle 69 (2), unless the proprietor of the mark, by further1994R0040 — EN — 01.01.1996 — 001.001 — 27
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amending the regulations governing use, complies with the require-
ments of those provisions.
Article 72
Groundsforinvalidity
Apart from the grounds for invalidity provided for in Articles 51 and
52, a Community collective mark which is registered in breach of theprovisions of Article 66 shall be declared invalid on application to theOffice or on the basis of a counterclaim in infringement proceedings,unless the proprietor of the mark, by amending the regulations
governing use, complies with the requirements of those provisions.
TITLE IX
PROCEDURE
SECTION 1
GENERALPROVISIONS
Article 73
Statementofreasonsonwhichdecisionsarebased
Decisions of the Office shall state the reasons on which they are based.
They shall be based only on reasons or evidence on which the partiesconcerned have had on opportunity to present their comments.
Article 74
ExaminationofthefactsbytheOffice ofitsownmotion
1. In proceedings before it the Office shall examine the facts of its
own motion; however, in proceedings relating to relative grounds forrefusal of registration, the Office shall be restricted in this examinationto the facts, evidence and arguments provided by the parties and therelief sought.
2. The Office may disregard facts or evidence which are not
submitted in due time by the parties concerned.
Article 75
Oral proceedings
1. If the Office considers that oral proceedings would be expedient
they shall be held either at the instance of the Office or at the requestof any party to the proceedings.
2. Oral proceedings before the examiners, the Opposition Division
and the Administration of Trade Marks and Legal Division shall notbe public.
3. Oral proceedings, including delivery of the decision, shall be
public before the Cancellation Division and the Boards of Appeal, in
so far as the department before which the proceedings are taking place
does not decide otherwise in cases where admission of the public couldhave serious and unjustified disadvantages, in particular for a party tothe proceedings.
Article 76
Takingofevidence
1. In any proceedings before the Office, the means of giving or
obtaining evidence shall include the following:
(a) hearing the parties;
(b) requests for information;
(c) the production of documents and items of evidence;
(d) hearing witnesses;1994R0040 — EN — 01.01.1996 — 001.001 — 28
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(e) opinions by experts;
(f) statements in writing sworn or affirmed or having a similar effect
under the law of the State in which the statement is drawn up.
2. The relevant department may commission one of its members to
examine the evidence adduced.
3. If the Office considers it necessary for a party, witness or expert
to give evidence orally, it shall issue a summons to the person
concerned to appear before it.
4. The parties shall be informed of the hearing of a witness or expert
before the Office. They shall have the right to be present and to putquestions to the witness or expert.
Article 77
Notification
The Office shall, as a matter of course, notify those concerned of deci-
sions and summonses and of any notice or other communication fromwhich a time limit is reckoned, or of which those concerned must benotified under other provisions of this Regulation or of the Imple-
menting Regulation, or of which notification has been ordered by the
President of the Office.
Article 78
Restitutioinintegrum
1. The applicant for or proprietor of a Community trade mark or any
other party to proceedings before the Office who, in spite of all due
care required by the circumstances having been taken, was unable to
observe a time limit vis-à-vis the Office shall, upon application, have
his rights reestablished if the non-observance in question has the directconsequence, by virtue of the provisions of this Regulation, of causingthe loss of any right or means of redress.
2. The application must be filed in writing within two months from
the removal of the cause of non-compliance with the time limit. The
omitted act must be completed within this period. The application shallonly be admissible within the year immediately following the expiry ofthe unobserved time limit. In the case of non-submission of the requestfor renewal of registration or of non-payment of a renewal fee, the
further period of six months provided in Article 47 (3), third sentence,
shall be deducted from the period of one year.
3. The application must state the grounds on which it is based and
must set out the facts on which it relies. It shall not be deemed to befiled until the fee for re-establishment of rights has been paid.
4. The department competent to decide on the omitted act shall
decide upon the application.
5. The provisions of this Article shall not be applicable to the time
limits referred to in paragraph 2 of this Article, Articles 29 (1) and 42(1).
6. Where the applicant for or proprietor of a Community trade mark
has his rights re-established, he may not invoke his rights vis-à-vis a
third party who, in good faith, has put goods on the market or suppliedservices under a sign which is identical with or similar to the Commu-nity trade mark in the course of the period between the loss of rights inthe application or in the Community trade mark and publication of themention of re-establishment of those rights.
7. A third party who may avail himself of the provisions of para-
graph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of a Commu-nity trade mark within a period of two months as from the date ofpublication of the mention of re-establishment of those rights.1994R0040 — EN — 01.01.1996 — 001.001 — 29
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8. Nothing in this Article shall limit the right of a Member State to
grant restitutio in integrum in respect of time limits provided for in thisRegulation and to be observed vis-à-vis the authorities of such State.
Article 79
Reference togeneral principles
In the absence of procedural provisions in this Regulation, the Imple-
menting Regulation, the fees regulations or the rules of procedure ofthe Boards of Appeal, the Office shall take into account the principles
of procedural law generally recognized in the Member States.
Article 80
Terminationoffinancialobligations
1. Rights of the Office to the payment of a fee shall be extinguished
after four years from the end of the calendar year in which the fee felldue.
2. Rights against the Office for the refunding of fees or sums of
money paid in excess of a fee shall be extinguished after four yearsfrom the end of the calendar year in which the right arose.
3. The period laid down in paragraphs 1 and 2 shall be interrupted
in the case covered by paragraph 1 by a request for payment of the feeand in the case covered by paragraph 2 by a reasoned claim in writing.
On interruption it shall begin again immediately and shall end at the
latest six years after the end of the year in which it originally began,unless, in the meantime, judicial proceedings to enforce the right havebegun; in this case the period shall end at the earliest one year after thejudgement has acquired the authority of a final decision.
SECTION 2
COSTS
Article 81
Costs
1. The losing party in opposition proceedings, proceedings for revo-
cation, proceedings for a declaration of invalidity or appeal proceedings
shall bear the fees incurred by the other party as well as all costs,without prejudice to Article 115 (6), incurred by him essential to theproceedings, including travel and subsistence and the remuneration ofan agent, adviser or advocate, within the limits of the scales set foreach category of costs under the conditions laid down in the Imple-
menting Regulation.
2. However, where each party succeeds on some and fails on other
heads, or if reasons of equity so dictate, the Opposition Division,
Cancellation Division or Board of Appeal shall decide a different
apportionment of costs.
3. The party who terminates the proceedings by withdrawing the
Community trade mark application, the opposition, the application for
revocation of rights, the application for a declaration of invalidity orthe appeal, or by not renewing registration of the Community trademark or by surrendering the Community trade mark, shall bear thefees and the costs incurred by the other party as stipulated in para-graphs 1 and 2.
4. Where a case does not proceed to judgment the costs shall be at
the discretion of the Opposition Division, Cancellation Division orBoard of Appeal.
5. Where the parties conclude before the Opposition Division,
Cancellation Division or Board of Appeal a settlement of costsdiffering from that provided for in the preceding paragraphs, thedepartment concerned shall take note of that agreement.1994R0040 — EN — 01.01.1996 — 001.001 — 30
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6. On request the registry of the Opposition Division or Cancellation
Division or Board of Appeal shall fix the amount of the costs to bepaid pursuant to the preceding paragraphs. The amount so determined
may be reviewed by a decision of the Opposition Division or Cancella-
tion Division or Board of Appeal on a request filed within theprescribed period.
Article 82
Enforcementofdecisionsfixingtheamountofcosts
1. Any final decision of the Office fixing the amount of costs shall
be enforceable.
2. Enforcement shall be governed by the rules of civil procedure in
force in the State in the territory of which it is carried out. The order
for its enforcement shall be appended to the decision, without otherformality than verification of the authenticity of the decision, by thenational authority which the Government of each Member State shalldesignate for this purpose and shall make known to the Office and to
the Court of Justice.
3. When these formalities have been completed on application by
the party concerned, the latter may proceed to enforcement in accor-dance with the national law, by bringing the matter directly before thecompetent authority.
4. Enforcement may be suspended only by a decision of the Court
of Justice. However, the courts of the country concerned shall have
jurisdiction over complaints that enforcement is being carried out inan irregular manner.
SECTION 3
INFORMATIONOFTHEPUBLICANDOFTHEOFFICIALAUTHORI-
TIESOFTHEMEMBERSTATES
Article 83
RegisterofCommunitytrademarks
The Office shall keepa register to the known as the Register of
Community trade marks, which shall contain those particulars the
registration or inclusion of which is provided for by this Regulation or
by the Implementing Regulation. The Register shall be open to publicinspection.
Article 84
Inspectionoffiles
1. The files relating to Community trade mark applications which
have not yet been published shall not be made available for inspectionwithout the consent of the applicant.
2. Any person who can prove that the applicant for a Community
trade mark has stated that after the trade mark has been registered hewill invoke the rights under it against him may obtain inspection of thefiles prior to the publication of that application and without the consentof the applicant.
3. Subsequent to the publication of the Community trade mark
application, the files relating to such application and the resulting trade
mark may be inspected on request.
4. However, where the files are inspected pursuant to paragraphs 2
or 3, certain documents in the file may be withheld from inspection inaccordance with the provisions of the Implementing Regulation.
Article 85
Periodical publications
The Office shall periodically publish:1994R0040 — EN — 01.01.1996 — 001.001 — 31
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(a) a Community Trade Marks Bulletin containing entries made in the
Register of Community trade marks as well as other particulars thepublication of which is prescribed by this Regulation or by the
Implementing Regulation;
(b) an Official Journal containing notices and information of a general
character issued by the President of the Office, as well as any other
information relevant to this Regulation or its implementation.
Article 86
Administrativecooperation
Unless otherwise provided in this Regulation or in national laws, the
Office and the courts or authorities of the Member States shall on
request give assistance to each other by communicating information or
opening files for inspection. Where the Office lays files open to inspec-tion by courts, Public Prosecutors' Offices or central industrial propertyoffices, the inspection shall not be subject to the restrictions laid downin Article 84.
Article 87
Exchangeofpublications
1. The Office and the central industrial property offices of the
Member States shall despatch to each other on request and for theirown use one or more copies of their respective publications free of
charge.
2. The Office may conclude agreements relating to the exchange or
supply of publications.
SECTION 4
REPRESENTATION
Article 88
General principlesofrepresentation
1. Subject to the provisions of paragraph 2, no person shall be
compelled to be represented before the Office.
2. Without prejudice to paragraph 3, second sentence, natural or
legal persons not having either their domicile or their principal placeof business or a real and effective industrial or commercial establish-
ment in the Community must be represented before the Office in
accordance with Article 89 (1) in all proceedings established by thisRegulation, other than in filing an application for a Community trademark; the Implementing Regulation may permit other exceptions.
3. Natural or legal persons having their domicile or principal place
of business or a real and effective industrial or commercial establish-
ment in the Community may be represented before the Office by anemployee, who must file with it a signed authorization for insertionon the files, the details of which are set out in the Implementing Regu-lation. An employee of a legal person to which this paragraph appliesmay also represent other legal persons which have economic connec-
tions with the first legal person, even if those other legal persons have
neither their domicile nor their principal place of business nor a realand effective industrial or commercial establishment within theCommunity.
Article 89
Professional representatives
1. Representation of natural or legal persons before the Office may
only be undertaken by;
(a) any legal practitioner qualified in one of the Member States and
having his place of business within the Community, to the extent1994R0040 — EN — 01.01.1996 — 001.001 — 32
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that he is entitled, within the said State, to act as a representative in
trade mark matters; or
(b) professional representatives whose names appear on the list main-
tained for this purpose by the Office.
Representatives acting before the Office must file with it a signed
authorization for insertion on the files, the details of which are set outin the Implementing Regulation.
2. Any natural person who fulfils the following conditions may be
entered on the list of professional representatives:
(a) he must be a national of one of the Member States;
(b) he must have his place of business or employment in the Commu-
nity;
(c) he must be entitled to represent natural or legal persons in trade
mark matters before the central industrial property office of theMember State in which he has his place of business or employ-ment. Where, in that State, the entitlement is not conditional uponthe requirement of special professional qualifications, personsapplying to be entered on the list who act in trade mark matters
before the central industrial property office of the said State must
have habitually so acted for at least five years. However, personswhose professional qualification to represent natural or legalpersons in trade mark matters before the central industrial propertyoffice of one of the Member States is officially recognized in
accordance with the regulations laid down by such State shall not
be subject to the condition of having exercised the profession.
3. Entry shall be effected upon request, accompanied by a certificate
furnished by the central industrial property office of the Member State
concerned, which must indicate that the conditions laid down in para-
graph 2 are fulfilled.
4. The President of the Office may grant exemption from:
(a) the requirement of paragraph 2 (c), second sentence, if the appli-
cant furnishes proof that he has acquired the requisite qualificationin another way;
(b) the requirement of paragraph 2 (a) in special circumstances.
5. The conditions under which a person may be removed from the
list of professional representatives shall be laid down in the Imple-menting Regulation.
TITLE X
JURISDICTION AND PROCEDURE IN LEGAL ACTIONS
RELATINGTOCOMMUNITYTRADEMARKS
SECTION 1
APPLICATION OF THE CONVENTION ON JURISDICTION AND
ENFORCEMENT
Article 90
ApplicationoftheConventiononJurisdictionandEnforcement
1. Unless otherwise specified in this Regulation, the Convention on
Jurisdiction and the Enforcement of Judgments in Civil and Commer-cial Matters, signed in Brussels on 27 September 1968, as amended bythe Conventions on the Accession to that Convention of the Statesacceding to the European Communities, the whole of which Conven-
tion and of which Conventions of Accession are hereinafter referred
to as the ‘Convention on Jurisdiction and Enforcement’, shall apply toproceedings relating to Community trade marks and applications forCommunity trade marks, as well as to proceedings relating to simulta-neous and successive actions on the basis of Community trade marksand national trade marks.1994R0040 — EN — 01.01.1996 — 001.001 — 33
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2. In the case of proceedings in respect of the actions and claims
referred to in Article 92:
(a) Articles 2, 4, 5 (1), (3), (4) and (5) and Article 24 of the Conven-
tion on Jurisdiction and Enforcement shall not apply;
(b) Articles 17 and 18 of that Convention shall apply subject to the
limitations in Article 93 (4) of this Regulation;
(c) the provisions of Title II of that Convention which are applicable to
persons domiciled in a Member State shall also be applicable topersons who do not have a domicile in any Member State but
have an establishment therein.
SECTION 2
DISPUTES CONCERNING THE INFRINGEMENT AND VALIDITY OF
COMMUNITYTRADEMARKS
Article 91
Communitytrademarkcourts
1. The Member States shall designate in their territories as limited a
number as possible of national courts and tribunals of first and secondinstance, hereinafter referred to as ‘Community trade mark courts’,which shall perform the functions assigned to them by this Regulation.
2. Each Member State shall communicate to the Commission within
three years of the entry into force of this Regulation a list of Commu-nity trade mark courts indicating their names and their territorial
jurisdiction.
3. Any change made after communication of the list referred to in
paragraph 2 in the number, names or territorial jurisdiction of thecourts shall be notified without delay by the Member State concerned
to the Commission.
4. The information referred to in paragraphs 2 and 3 shall be noti-
fied by the Commission to the Member States and published in the ---
ENTITY DEFAULT --- .
5. As long as a Member State has not communicated the list as
stipulated in paragraph 2, jurisdiction for any proceedings resultingfrom an action or application covered by Article 92, and for whichthe courts of that State have jurisdiction under Article 93, shall lie
with that court of the State in question which would have jurisdiction
ratione loci andrationemateriae in the case of proceedings relating to
a national trade mark registered in that State.
Article 92
Jurisdictionoverinfringementandvalidity
The Community trade mark courts shall have exclusive jurisdiction:
(a) for all infringement actions and — if they are permitted under
national law — actions in respect of threatened infringementrelating to Community trade marks;
(b) for actions for declaration of non-infringement, if they are
permitted under national law;
(c) for all actions brought as a result of acts referred to in Article 9 (3),
second sentence;
(d) for counterclaims for revocation or for a declaration of invalidity of
the Community trade mark pursuant to Article 96.
Article 93
Internationaljurisdiction
1. Subject to the provisions of this Regulation as well as to any
provisions of the Convention on Jurisdiction and Enforcement applic-able by virtue of Article 90, proceedings in respect of the actions andclaims referred to in Article 92 shall be brought in the courts of the1994R0040 — EN — 01.01.1996 — 001.001 — 34
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Member State in which the defendant is domiciled or, if he is not
domiciled in any of the Member States, in which he has an establish-ment.
2. If the defendant is neither domiciled nor has an establishment in
any of the Member States, such proceedings shall be brought in the
courts of the Member State in which the plaintiff is domiciled or, ifhe is not domiciled in any of the Member States, in which he has anestablishment.
3. If neither the defendant nor the plaintiff is so domiciled or has
such an establishment, such proceedings shall be brought in the courtsof the Member State where the Office has its seat.
4. Notwithstanding the provisions of paragraphs 1, 2 and 3:
(a) Article 17 of the Convention on Jurisdiction and Enforcement shall
apply if the parties agree that a different Community trade mark
court shall have jurisdiction;
(b) Article 18 of that Convention shall apply if the defendant enters an
appearance before a different Community trade mark court.
5. Proceedings in respect of the actions and claims referred to in
Article 92, with the exception of actions for a declaration of non-infrin-gement of a Community trade mark, may also be brought in the courts
of the Member State in which the act of infringement has been
committed or threatened, or in which an act within the meaning ofArticle 9 (3), second sentence, has been committed.
Article 94
Extentofjurisdiction
1. A Community trade mark court whose jurisdiction is based on
Article 93 (1) to (4) shall have jurisdiction in respect of:
— acts of infringement committed or threatened within the territory of
any of the Member States,
— acts within the meaning of Article 9 (3), second sentence,
committed within the territory of any of the Member States.
2. A Community trade mark court whose jurisdiction is based on
Article 93 (5) shall have jurisdiction only in respect of acts committedor threatened within the territory of the Member State in which thatcourt is situated.
Article 95
Presumptionofvalidity—Defenceastothemerits
1. The Community trade mark courts shall treat the Community
trade mark as valid unless its validity is put in issue by the defendantwith a counterclaim for revocation or for a declaration of invalidity.
2. The validity of a Community trade mark may not be put in issue
in an action for a declaration of non-infringement.
3. In the actions referred to in Article 92 (a) and (c) a plea relating
to revocation or invalidity of the Community trade mark submitted
otherwise than by way of a counterclaim shall be admissible in so faras the defendant claims that the rights of the proprietor of the Commu-nity trade mark could be revoked for lack of use or that Communitytrade mark could be declared invalid on account of an earlier right ofthe defendant.
Article 96
Counterclaims
1. A counterclaim for revocation or for a declaration of invalidity
may only be based on the grounds for revocation or invaliditymentioned in this Regulation.1994R0040 — EN — 01.01.1996 — 001.001 — 35
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2. A Community trade mark court shall reject a counterclaim for
revocation or for a declaration of invalidity if a decision taken by theOffice relating to the same subject matter and cause of action and
involving the same parties has already become final.
3. If the counterclaim is brought in a legal action to which the
proprietor of the trade mark is not already a party, he shall be informedthereof and may be joined as a party to the action in accordance withthe conditions set out in national law.
4. The Community trade mark court with which a counterclaim for
revocation or for a declaration of invalidity of the Community trademark has been filed shall inform the Office of the date on which thecounterclaim was filed. The latter shall record this fact in the Register
of Community trade marks.
5. Article 56 (3), (4), (5) and (6) shall apply.
6. Where a Community trade mark court has given a judgment
which has become final on a counterclaim for revocation or for inva-
lidity of a Community trade mark, a copy of the judgment shall besent to the Office. Any party may request information about such trans-mission. The Office shall mention the judgment in the Register ofCommunity trade marks in accordance with the provisions of theImplementing Regulation.
7. The Community trade mark court hearing a counterclaim for
revocation or for a declaration of invalidity may stay the proceedings
on application by the proprietor of the Community trade mark and afterhearing the other parties and may request the defendant to submit anapplication for revocation or for a declaration of invalidity to theOffice within a time limit which it shall determine. If the applicationis not made within the time limit, the proceedings shall continue; the
counterclaim shall be deemed withdrawn. Article 100 (3) shall apply.
Article 97
Applicablelaw
1. The Community trade mark courts shall apply the provisions of
this Regulation.
2. On all matters not covered by this Regulation a Community trade
mark court shall apply its national law, including its private interna-tional law.
3. Unless otherwise provided in this Regulation, a Community trade
mark court shall apply the rules of procedure governing the same type
of action relating to a national trade mark in the Member State where ithas its seat.
Article 98
Sanctions
1. Where a Community trade mark court finds that the defendant
has infringed or threatened to infringe a Community trade mark, it
shall, unless there are special reasons for not doing so, issue an orderprohibiting the defendant from proceeding with the acts whichinfringed or would infringe the Community trade mark. It shall alsotake such measures in accordance with its national law as are aimedat ensuring that this prohibition is complied with.
2. In all other respects the Community trade mark court shall apply
the law of the Member State to which the acts of infringement or threa-
tened infringement were committed, including the private international
law.
Article 99
Provisionalandprotective measures
1. Application may be made to the courts of a Member State,
including Community trade mark courts, for such provisional, including1994R0040 — EN — 01.01.1996 — 001.001 — 36
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protective, measures in respect of a Community trade mark or Commu-
nity trade mark application as may be available under the law of thatState in respect of a national trade mark, even if, under this Regulation,
a Community trade mark court of another Member State has jurisdic-
tion as to the substance of the matter.
2. A Community trade mark court whose jurisdiction is based on
Article 93 (1), (2), (3) or (4) shall have jurisdiction to grant provisionaland protective measures which, subject to any necessary procedure forrecognition and enforcement pursuant to Title III of the Convention onJurisdiction and Enforcement, are applicable in the territory of anyMember State. No other court shall have such jurisdiction.
Article 100
Specific rulesonrelated actions
1. A Community trade mark court hearing an action referred to in
Article 92, other than an action for a declaration of non-infringement
shall, unless there are special grounds for continuing the hearing, ofits own motion after hearing the parties or at the request of one of theparties and after hearing the other parties, stay the proceedings wherethe validity of the Community trade mark is already in issue beforeanother Community trade mark court on account of a counterclaim or
where an application for revocation or for a declaration of invalidity
has already been filed at the Office.
2. The Office, when hearing an application for revocation or for a
declaration of invalidity shall, unless there are special grounds forcontinuing the hearing, of its own motion after hearing the parties orat the request of one of the parties and after hearing the other parties,stay the proceedings where the validity of the Community trade markis already in issue on account of a counterclaim before a Community
trade mark court. However, if one of the parties to the proceedings
before the Community trade mark court so requests, the court may,after hearing the other parties to these proceedings, stay the proceed-ings. The Office shall in this instance continue the proceedingspending before it.
3. Where the Community trade mark court stays the proceedings it
may order provisional and protective measures for the duration of thestay.
Article 101
JurisdictionofCommunitytrademarkcourtsofsecondinstance—
Furtherappeal
1. An appeal to the Community trade mark courts of second instance
shall lie from judgments of the Community trade mark courts of first
instance in respect of proceedings arising from the actions and claimsreferred to in Article 92.
2. The conditions under which an appeal may be lodged with a
Community trade mark court of second instance shall be determinedby the national law of the Member State in which that court is located.
3. The national rules concerning further appeal shall be applicable in
respect of judgments of Community trade mark courts of secondinstance.
SECTION 3
OTHERDISPUTESCONCERNINGCOMMUNITYTRADEMARKS
Article 102
Supplementary provisions on the jurisdiction of national courts
otherthanCommunitytrademarkcourts
1. Within the Member State whose courts have jurisdiction under
Article 90 (1) those courts shall have jurisdiction for actions otherthan those referred to in Article 92, which would have jurisdiction1994R0040 — EN — 01.01.1996 — 001.001 — 37
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ratione loci andratione materiae in the case of actions relating to a
national trade mark registered in that State.
2. Actions relating to a Community trade mark, other than those
referred to in Article 92, for which no court has jurisdiction under
Article 90 (1) and paragraph 1 of this Article may be heard before thecourts of the Member State in which the Office has its seat.
Article 103
Obligationofthenationalcourt
A national court which is dealing with an action relating to a Commu-
nity trade mark, other than the action referred to in Article 92, shalltreat the trade mark as valid.
SECTION 4
TRANSITIONALPROVISION
Article 104
TransitionalprovisionrelatingtotheapplicationoftheConvention
onJurisdictionandEnforcement
The provisions of the Convention on Jurisdiction and Enforcement
which are rendered applicable by the preceding Articles shall haveeffect in respect of any Member State solely in the text of the Conven-tion which is in force in respect of that State at any given time.
TITLE XI
EFFECTSONTHELAWSOFTHEMEMBERSTATES
SECTION 1
CIVIL ACTIONS ON THE BASIS OF MORE THAN ONE TRADE
MARK
Article 105
Simultaneous and successive civil actions on the basis of Commu-
nitytrademarksandnationaltrademarks
1. Where actions for infringement involving the same cause of
action and between the same parties are brought in the courts of
different Member States, one seized on the basis of a Community trademark and the other seized on the basis of a national trade mark:
(a) the court other than the court first seized shall of its own motion
decline jurisdiction in favour of that court where the trade marksconcerned are identical and valid for identical goods or services.
The court which would be required to decline jurisdiction may
stay its proceedings if the jurisdiction of the other court iscontested;
(b) the court other than the court first seized may stay its proceedings
where the trade marks concerned are identical and valid for similar
goods or services and where the trade marks concerned are similarand valid for identical or similar goods or services.
2. The court hearing an action for infringement on the basis of a
Community trade mark shall reject the action if a final judgment onthe merits has been given on the same cause of action and betweenthe same parties on the basis of an identical national trade mark valid
for identical goods or services.
3. The court hearing an action for infringement on the basis of a
national trade mark shall reject the action if a final judgment on themerits has been given on the same cause of action and between thesame parties on the basis of an identical Community trade mark validfor identical goods or services.1994R0040 — EN — 01.01.1996 — 001.001 — 38
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4. Paragraphs 1, 2 and 3 shall not apply in respect of provisional,
including protective, measures.
SECTION 2
APPLICATIONOFNATIONALLAWSFORTHEPURPOSEOFPROHI-
BITINGTHEUSEOFCOMMUNITYTRADEMARKS
Article 106
ProhibitionofuseofCommunitytrademarks
1. This Regulation shall, unless otherwise provided for, not affect
the right existing under the laws of the Member States to invoke claimsfor infringement of earlier rights within the meaning of Article 8 or
Article 52 (2) in relation to the use of a later Community trade mark.
Claims for infringement of earlier rights within the meaning of Article8 (2) and (4) may, however, no longer be invoked if the proprietor ofthe earlier right may no longer apply for a declaration that the Commu-nity trade mark is invalid in accordance with Article 53 (2).
2. This Regulation shall, unless otherwise provided for, not affect
the right to bring proceedings under the civil, administrative or crim-
inal law of a Member Sate or under provisions of Community law forthe purpose of prohibiting the use of a Community trade mark to theextent that the use of a national trade mark may be prohibited underthe law of that Member State or under Community law.
Article 107
Prior rightsapplicabletoparticular localities
1. The proprietor of an earlier right which only applies to a parti-
cular locality may oppose the use of the Community trade mark in theterritory where his right is protected in so far as the law of the Member
State concerned so permits.
2. Paragraph 1 shall cease to apply if the proprietor of the earlier
right has acquiesced in the use of the Community trade mark in theterritory where his right is protected for a period of five successiveyears, being aware of such use, unless the Community trade mark wasapplied for in bad faith.
3. The proprietor of the Community trade mark shall not be entitled
to oppose use of the right referred to in paragraph 1 even though that
right may no longer be invoked against the Community trade mark.
SECTION 3
CONVERSIONINTOANATIONALTRADEMARKAPPLICATION
Article 108
Requestfortheapplicationofnationalprocedure
1. The applicant for or proprietor of a Community trade mark may
request the conversion of his Community trade mark application orCommunity trade mark into a national trade mark application
(a) to the extent that the Community trade mark application is refused,
withdrawn, or deemed to be withdrawn;
(b) to the extent that the Community trade mark ceases to have effect.
2. Conversion shall not take place:
(a) where the rights of the proprietor of the Community trade mark
have been revoked on the grounds of non-use, unless in theMember State for which conversion is requested the Communitytrade mark has been put to use which would be considered to be
genuine use under the laws of that Member State;
(b) for the purpose of protection in a Member State in which, in accor-
dance with the decision of the Office or of the national court,grounds for refusal of registration or grounds for revocation or1994R0040 — EN — 01.01.1996 — 001.001 — 39
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invalidity apply to the Community trade mark application or
Community trade mark.
3. The national trade mark application resulting from the conversion
of a Community trade mark application or a Community trade mark
shall enjoy in respect of the Member State concerned the date of filing
or the date of priority of that application or trade mark and, whereappropriate, the seniority of a trade mark of that State claimed underArticle 34 or 35.
4. Where:— the Community trade mark application is deemed to be withdrawn
or is refused by a decision of the Office which has become final,
— the Community trade mark ceases to have effect as a result of a
decision of the Office which has become final or as a result ofregistration of surrender of the Community trade mark,
the Office shall notify to the applicant or proprietor a communication
fixing a period of three months from the date of that communication
in which a request for conversion may be filed.
5. Where the Community trade mark application is withdrawn or the
Community trade mark ceases to have effect as a result of failure torenew the registration, the request for conversion shall be filed withinthree months after the date on which the Community trade mark appli-cation is withdrawn or on which the registration of the Community
trade mark expires.
6. Where the Community trade mark ceases to have effect as a
result of a decision of a national court, the request for conversion shallbe filed within three months after the date on which that decisionacquired the authority of a final decision.
7. The effect referred to in Article 32 shall lapse if the request is not
filed in due time.
Article 109
Submission,publicationandtransmissionoftherequestforconver-
sion
1. A request for conversion shall be filed with the Office and shall
specify the Member States in which application of the procedure for
registration of a national trade mark is desired. The request shall not
be deemed to be filed until the conversion fee has been paid.
2. If the Community trade mark application has been published,
receipt of any such request shall be recorded in the Register ofCommunity trade marks and the request for conversion shall bepublished.
3. The Office shall check whether conversion may be requested in
accordance with Article 108 (1), whether the request has been filed
within the period laid down in Article 108 (4), (5) or (6), as the casemay be, and whether the conversion fee has been paid. If these condi-tions are fulfilled, the Office shall transmit the request to the centralindustrial property offices of the States specified therein. At the requestof the central industrial property office of a State concerned, the Office
shall give it any information enabling that office to decide as to the
admissibility of the request.
Article 110
Formal requirementsforconversion
1. Any central industrial property office to which the request is
transmitted shall decide as to its admissibility,
2. A Community trade mark application or a Community trade mark
transmitted in accordance with Article 109 shall not be subjected toformal requirements of national law which are different from or addi-tional to those provided for in this Regulation or in the ImplementingRegulation.1994R0040 — EN — 01.01.1996 — 001.001 — 40
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3. Any central industrial property office to which the request is
transmitted may require that the applicant shall, within not less thantwo months:
(a) pay the national application fee;
(b) file a translation in one of the official languages of the State in
question of the request and of the documents accompanying it;
(c) indicate an address for service in the State in question;
(d) supply a representation of the trade mark in the number of copies
specified by the State in question.
TITLE XII
THEOFFICE
SECTION 1
GENERALPROVISIONS
Article 111
Legalstatus
1. The Office shall be a body of the Community. It shall have legal
personality.
2. In each of the Member States the Office shall enjoy the most
extensive legal capacity accorded to legal persons under their laws; itmay, in particular, acquire or dispose of movable and immovable prop-erty and may be a party to legal proceedings.
3. The Office shall be represented by its President.
Article 112
Staff
1. The Staff Regulations of officials of the European Communities,
the Conditions of Employment of other servants of the European
Communities, and the rules adopted by agreement between the Institu-
tions of the European Communities for giving effect to those StaffRegulations and Conditions of Employment shall apply to the staff ofthe Office, without prejudice to the application of Article 131 to themembers of the Boards of Appeal.
2. Without prejudice to Article 120, the powers conferred on each
Institution by the Staff Regulations and by the Conditions of Employ-ment of other servants shall be exercised by the Office in respect of itsstaff.
Article 113
Privileges andimmunities
The Protocol on the Privileges and Immunities of the European
Communities shall apply to the Office.
Article 114
Liability
1. The contractual liability of the Office shall be governed by the
law applicable to the contract in question.
2. The Court of Justice shall be competent to give judgment
pursuant to any arbitration clause contained in a contract concluded
by the Office.
3. In the case of non-contractual liability, the Office shall, in accor-
dance with the general principles common to the laws of the MemberStates, make good any damage caused by its departments or by itsservants in the performance of their duties.1994R0040 — EN — 01.01.1996 — 001.001 — 41
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4. The Court of Justice shall have jurisdiction in disputes relating to
compensation for the damage referred to in paragraph 3.
5. The personal liability of its servants towards the Office shall be
governed by the provisions laid down in their Staff Regulations or in
the Conditions of Employment applicable to them.
Article 115
Languages
1. The application for a Community trade mark shall be filed in one
of the official languages of the European Community.
2. The languages of the Office shall be English, French, German,
Italian and Spanish.
3. The applicant must indicate a second language which shall be a
language of the Office the use of which he accepts as a possiblelanguage of proceedings for opposition, revocation or invalidity
proceedings.
If the application was filed in a language which is not one of the
languages of the Office, the Office shall arrange to have the applica-
tion, as described in Article 26 (1), translated into the languageindicated by the applicant.
4. Where the applicant for a Community trade mark is the sole party
to proceedings before the Office, the language of proceedings shall bethe language used for filing the application for a Community trademark. If the application was made in a language other than thelanguages of the Office, the Office may send written communications
to the applicant in the second language indicated by the applicant in
his application.
5. The notice of opposition and an application for revocation or
invalidity shall be filed in one of the languages of the Office.
6. If the language chosen, in accordance with paragraph 5, for the
notice of opposition or the application for revocation or invalidity isthe language of the application for a trade mark or the second languageindicated when the application was filed, that language shall be thelanguage of the proceedings.
If the language chosen, in accordance with paragraph 5, for the notice
of opposition or the application for revocation or invalidity is neither
the language of the application for a trade mark nor the second
language indicated when the application was filed, the opposing partyor the party seeking revocation or invalidity shall be required toproduce, at his own expense, a translation of his application eitherinto the language of the application for a trade mark, provided that it
is a language of the Office, or into the second language indicated
when the application was filed. The translation shall be producedwithin the period prescribed in the implementing regulation. Thelanguage into which the application has been translated shall thenbecome the language of the proceedings.
7. Parties to opposition, revocation, invalidity or appeal proceedings
may agree that a different official language of the European Commu-nity is to be the language of the proceedings.
Article 116
Publication;entriesintheRegister
1. An application for a Community trade mark, as described in
Article 26 (1), and all other information the publication of which isprescribed by this Regulation or the implementing regulation, shall bepublished in all the official languages of the European Community.
2. All entries in the Register of Community trade marks shall be
made in all the official languages of the European Community.1994R0040 — EN — 01.01.1996 — 001.001 — 42
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3. In cases of doubt, the text in the language of the Office in which
the application for the Community trade mark was filed shall beauthentic. If the application was filed in an official language of the
European Community other than one of the languages of the Office,
the text in the second language indicated by the applicant shall beauthentic.
Article 117
The translation services required for the functioning of the Office shall
be provided by the Translation Centre of the Bodies of the Union oncethis begins operation.
Article 118
Controloflegality
1. The Commission shall check the legality of those acts of the
President of the Office in respect of which Community law does not
provide for any check on legality by another body and of acts of the
Budget Committee attached to the Office pursuant to Article 133.
2. It shall require that any unlawful acts as referred to in paragraph
1 be altered or annulled.
3. Member States and any person directly and personally involved
may refer to the Commission any act as referred to in paragraph 1,whether express or implied, for the Commission to examine the legalityof that act. Referral shall be made to the Commission within 15 days of
the day on which the party concerned first became aware of the act in
question. The Commission shall take a decision within one month. Ifno decision has been taken within this period, the case shall be deemedto have been dismissed.
SECTION 2
MANAGEMENTOFTHEOFFICE
Article 119
PowersofthePresident
1. The Office shall be managed by the President.
2. To this end the President shall have in particular the following
functions and powers:
(a) he shall take all necessary steps, including the adoption of internal
administrative instructions and the publication of notices, to ensurethe functioning of the Office;
(b) he may place before the Commission any proposal to amend this
Regulation, the Implementing Regulation, the rules of procedureof the Boards of Appeal, the fees regulations and any other rulesapplying to Community trade marks after consulting the Adminis-trative Board and, in the case of the fees regulations and the
budgetary provisions of this Regulation, the Budget Committee;
(c) he shall draw upthe estimates of the revenue and exp enditure of
the Office and shall implement the budget;
(d) he shall submit a management report to the Commission, the
European Parliament and the Administrative Board each year;
(e) he shall exercise in respect of the staff the powers laid down in
Article 112 (2);
(f) he may delegate his powers.
3. The President shall be assisted by one or more Vice-Presidents. If
the President is absent or indisposed, the Vice-President or one of theVice-Presidents shall take his place in accordance with the procedurelaid down by the Administrative Board.1994R0040 — EN — 01.01.1996 — 001.001 — 43
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Article 120
Appointmentofseniorofficials
1. The President of the Office shall be appointed by the Council
from a list of at most three candidates, which shall be prepared by the
Administrative Board. Power to dismiss the President shall lie with theCouncil, acting on a proposal from the Administrative Board.
2. The term of office of the President shall not exceed five years.
This term of office shall be renewable.
3. The Vice-President or Vice-Presidents of the Office shall be
appointed or dismissed as in paragraph 1, after consultation of thePresident.
4. The Council shall exercise disciplinary authority over the officials
referred to in paragraphs 1 and 3 of this Article.
SECTION 3
ADMINISTRATIVEBOARD
Article 121
Creationandpowers
1. An Administrative Board is hereby set up, attached to the Office.
Without prejudice to the powers attributed to the Budget Committee in
Section 5 — budget and financial control — the Administrative Boardshall have the powers defined below.
2. The Administrative Board shall draw upthe lists of candidates
provided for in Article 120.
3. It shall fix the date for the first filing of Community trade mark
applications, pursuant to Article 143 (3).
4. It shall advise the President on matters for which the Office is
responsible.
5. It shall be consulted before adoption of the guidelines for exami-
nation in the Office and in the other cases provided for in this
Regulation.
6. It may deliver opinions and requests for information to the Presi-
dent and to the Commission where it considers that this is necessary.
Article 122
Composition
1. The Administrative Board shall be composed of one representa-
tive of each Member State and one representative of the Commission
and their alternates.
2. The members of the Administrative Board may, subject to the
provisions of its rules of procedure, be assisted by advisers or experts.
Article 123
Chairmanship
1. The Administrative Board shall elect a chairman and a deputy
chairman from among its members. The deputy chairman shall ex
officioreplace the chairman in the event of his being prevented from
attending to his duties.
2. The duration of the terms of office of the chairman and the
deputy chairman shall be three years. The terms of office shall berenewable.1994R0040 — EN — 01.01.1996 — 001.001 — 44
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Article 124
Meetings
1. Meetings of the Administrative Board shall be convened by its
chairman.
2. The President of the Office shall take part in the deliberations,
unless the Administrative Board decides otherwise.
3. The Administrative Board shall hold an ordinary meeting once a
year; in addition, it shall meet on the initiative of its chairman or at therequest of the Commission or of one-third of the Member States.
4. The Administrative Board shall adopt rules of procedure.
5. The Administrative Board shall take its decisions by a simple
majority of the representatives of the Member States. However, amajority of three-quarters of the representatives of the Member States
shall be required for the decisions which the Administrative Board is
empowered to take under Article 120 (1) and (3). In both cases eachMember State shall have one vote.
6. The Administrative Board may invite observers to attend its meet-
ings.
7. The Secretariat for the Administrative Board shall be provided by
the Office.
SECTION 4
IMPLEMENTATIONOFPROCEDURES
Article 125
Competence
For taking decisions in connection with the procedures laid down in
this Regulation, the following shall be competent:
(a) Examiners;
(b) Opposition Divisions;
(c) an Administration of Trade Marks and Legal Division;
(d) Cancellation Divisions;
(e) Boards of Appeal.
Article 126
Examiners
An examiner shall be responsible for taking decisions on behalf of the
Office in relation to an application for registration of a Communitytrade mark, including the matters referred to in Articles 36, 37, 38and 66, except in so far as an Opposition Division is responsible.
Article 127
OppositionDivisions
1. An Opposition Division shall be responsible for taking decisions
on an opposition to an application to register a Community trade mark.
2. An Opposition Division shall consist of three members. At least
one of the members must be legally qualified.
Article 128
AdministrationofTradeMarksandLegalDivision
1. The Administration of Trade Marks and Legal Division shall be
responsible for those decisions required by this Regulation which donot fall within the competence of an examiner, an Opposition Divisionor a Cancellation Division. It shall in particular be responsible for deci-sions in respect of entries in the Register of Community trade marks.1994R0040 — EN — 01.01.1996 — 001.001 — 45
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2. It shall also be responsible for keeping the list of professional
representatives which is referred to in Article 89.
3. A decision of the Division shall be taken by one member.
Article 129
CancellationDivisions
1. A Cancellation Division shall be responsible for taking decisions
in relation to an application for the revocation or declaration of inva-
lidity of a Community trade mark.
2. A Cancellation Division shall consist of three members. At least
one of the members must be legally qualified.
Article 130
BoardsofAppeal
1. The Boards of Appeal shall be responsible for deciding on
appeals from decisions of the examiners, Opposition Divisions, Admin-istration of Trade Marks and Legal Division and CancellationDivisions.
2. A Board of Appeal shall consist of three members. At least two
of the members must be legally qualified.
Article 131
IndependenceofthemembersoftheBoardsofAppeal
1. The members, including the chairmen, of the Boards of Appeal
shall be appointed, in accordance with the procedure laid down inArticle 120, for the appointment of the President of the Office, for aterm of five years. They may not be removed from office during thisterm, unless there are serious grounds for such removal and the Court
of Justice, on application by the body which appointed them, takes a
decision to this effect. Their term of office shall be renewable.
2. The members of the Boards of Appeal shall be independent. In
their decisions they shall not be bound by any instructions.
3. The members of the Boards of Appeal may not be examiners or
members of the Opposition Divisions, Administration of Trade Marksand Legal Division or Cancellation Divisions.
Article 132
Exclusionandobjection
1. Examiners and members of the Divisions set upwithin the Office
or of the Boards of Appeal may not take part in any proceedings if they
have any personal interest therein, or if they have previously been
involved as representatives of one of the parties. Two of the threemembers of an Opposition Division shall not have taken part in exam-ining the application. Members of the Cancellation Divisions may nottake part in any proceedings if they have participated in the final deci-
sion on the case in the proceedings for registration or opposition
proceedings. Members of the Boards of Appeal may not take part inappeal proceedings if they participated in the decision under appeal.
2. If, for one of the reasons mentioned in paragraph 1 or for any
other reason, a member of a Division or of a Board of Appealconsiders that he should not take part in any proceedings, he shall
inform the Division or Board accordingly.
3. Examiners and members of the Divisions or of a Board of Appeal
may be objected to by any party for one of the reasons mentioned inparagraph 1, or if suspected of partiality. An objection shall not beadmissible if, while being aware of a reason for objection, the partyhas taken a procedural step. No objection may be based upon thenationality of examiners or members.1994R0040 — EN — 01.01.1996 — 001.001 — 46
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4. The Divisions and the Boards of Appeal shall decide as to the
action to be taken in the cases specified in paragraphs 2 and 3 withoutthe participation of the member concerned. For the purposes of taking
this decision the member who withdraws or has been objected to shall
be replaced in the Division or Board of Appeal by his alternate.
SECTION 5
BUDGETANDFINANCIALCONTROL
Article 133
BudgetCommittee
1. A Budget Committee is hereby set up, attached to the Office. The
Budget Committee shall have the powers assigned to it in this Section
and in Article 39 (4).
2. Articles 121 (6), 122, 123 and 124 (1) to (4), (6) and (7) shall
apply to the Budget Committee mutatis mutandis .
3. The Budget Committee shall take its decisions by a simple
majority of the representatives of the Member States. However, amajority of three-quarters of the representatives of the Member Statesshall be required for the decisions which the Budget Committee isempowered to take under Articles 39 (4), 135 (3) and 138. In both
cases each Member State shall have one vote.
Article 134
Budget
1. Estimates of all the Office's revenue and expenditure shall be
prepared for each financial year and shall be shown in the Office's
budget, and each financial year shall correspond with the calendar year.
2. The revenue and expenditure shown in the budget shall be in
balance.
3. Revenue shall comprise, without prejudice to other types of
income, total fees payable under the fees regulations, and, to the extentnecessary, a subsidy entered against a specific heading of the general
budget of the European Communities, Commission Section.
Article 135
Preparationofthebudget
1. The President shall draw upeach year an estimate of the Office's
revenue and expenditure for the following year and shall send it to the
Budget Committee not later than 31 March in each year, together witha list of posts.
2. Should the budget estimates provide for a Community subsidy,
the Budget Committee shall immediately forward the estimate to theCommission, which shall forward it to the budget authority of the
Communities. The Commission may attach an opinion on the estimate
along with an alternative estimate.
3. The Budget Committee shall adopt the budget, which shall
include the Office's list of posts. Should the budget estimates containa subsidy from the general budget of the Communities, the Office'sbudget shall, if necessary, be adjusted.
Article 136
Financialcontrol
Control of commitment and payment of all expenditure and control of
the existence and recovery of all revenue of the Office shall be carriedout by the Financial Controller appointed by the Budget Committee.1994R0040 — EN — 01.01.1996 — 001.001 — 47
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Article 137
Auditingofaccounts
1. Not later than 31 March in each year the President shall transmit
to the Commission, the European Parliament, the Budget Committeeand the Court of Auditors accounts of the Office's total revenue andexpenditure for the preceding financial year. The Court of Auditorsshall examine them in accordance with Article 188c of the Treaty.
2. The Budget Committee shall give a discharge to the President of
the Office in respect of the implementation of the budget.
Article 138
Financial provisions
The Budget Committee shall, after consulting the Court of Auditors of
the European Communities and the Commission, adopt internal finan-cial provisions specifying, in particular, the procedure for establishingand implementing the Office's budget. As far as is compatible with the
particular nature of the Office, the financial provisions shall be based
on the financial regulations adopted for other bodies set up by theCommunity.
Article 139
Feesregulations
1. The fees regulations shall determine in particular the amounts of
the fees and the ways in which they are to be paid.
2. The amounts of the fees shall be fixed at such a level as to ensure
that the revenue in respect thereof is in principle sufficient for the
budget of the Office to be balanced.
3. The fees regulations shall be adopted and amended in accordance
with the procedure laid down in Article 141.
TITLE XIII
FINALPROVISIONS
Article 140
Communityimplementing provisions
1. The rules implementing this Regulation shall be adopted in an
Implementing Regulation.
2. In addition to the fees provided for in the preceding Articles, fees
shall be charged, in accordance with the detailed rules of application
laid down in the Implementing Regulation, in the cases listed below:
1. alteration of the representation of a Community trade mark;
2. late payment of the registration fee;
3. issue of a copy of the certificate of registration;4. registration of the transfer of a Community trade mark;5. registration of a licence or another right in respect of a Community
trade mark;
6. registration of a licence or another right in respect of an application
for a Community trade mark;
7. cancellation of the registration of a licence or another right;8. alteration of a registered Community trade mark;
9. issue of an extract from the Register;
10. inspection of the files;11. issue of copies of file documents;12. issue of certified copies of the application;13. communication of information in a file;1994R0040 — EN — 01.01.1996 — 001.001 — 48
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14. review of the determination of the procedural costs to be refunded.
3. The Implementing Regulation and the rules of procedure of the
Boards of Appeal shall be adopted and amended in accordance with
the procedure laid down in Article 141.
Article 141
Establishment of a committee and procedure for the adoption of
implementing regulations
1. The Commission shall be assisted by a Committee on Fees,
Implementation Rules and the Procedure of the Boards of Appeal ofthe Office for Harmonization in the Internal Market (trade marks anddesigns), which shall be composed of representatives of the MemberStates and chaired by a representative of the Commission.
2. The representative of the Commission shall submit to the
Committee a draft of the measures to be taken. The Committee shall
deliver its opinion on the draft within a time limit which the chairman
may lay down according to the urgency of the matter. The opinionshall be delivered by the majority laid down in Article 148 (2) of theTreaty in the case of decisions which the Council is required to adopton a proposal from the Commission. The votes of the representatives of
the Member States within the Committee shall be weighted in the
manner set out in that Article. The chairman shall not vote.
The Commission shall adopt the measures envisaged if they are in
accordance with the opinion of the Committee.
If the measures envisaged are not in accordance with the opinion of the
Committee, or if no opinion is delivered, the Commission shall,without delay, submit to the Council a proposal relating to themeasures to be taken. The Council shall act by a qualified majority.
If, on the expiry of a period of three months from the date of referral to
the Council, the Council has not acted, the proposed measures shall beadopted by the Commission, save where the Council has decidedagainst the measures by a simple majority.
Article 142
CompatibilitywithotherCommunitylegal provisions
This Regulation shall not affect Council Regulation (EEC) No 2081/92
on the protection of geographical indications and designations of originfor agricultural products and foodstuffs(
1) of 14 July 1992, and in parti-
cular Article 14 thereof.
Article 143
Entryintoforce
1. This Regulation shall enter into force on the 60th day following
that of its publication in the Official Journal of the European Commu-
nities.
2. The Member States shall within three years following entry into
force of this Regulation take the necessary measures for the purposeof implementing Articles 91 and 110 hereof and shall forthwith informthe Commission of those measures.
3. Applications for Community trade marks may be filed at the
Office from the date fixed by the Administrative Board on the recom-
mendation of the President of the Office.
4. Applications for Community trade marks filed within three
months before the date referred to in paragraph 3 shall be deemed tohave been filed on that date.1994R0040 — EN — 01.01.1996 — 001.001 — 49
(1) OJ No L 208, 24. 7. 1992, p. 1.