1995R2868 — EN — 27.10.2003 — 001.001 — 1
This document is meant purely as a documentation tool and the institutions do not assume any liability for its contents
►B COMMISSIONREGULATION(EC)No2868/95
of13December 1995
implementingCouncilRegulation(EC)No40/94ontheCommunitytrademark
(OJ L 303, 15.12.1995, p. 1)
Amended by:
Official Journal
No page date
►M1 Commission Regulation (EC) No 782/2004 of 26 April 2004 L 123 88 27.4.2004
NB: This consolidated version contains references to the European unit of account and/or the ecu, which from 1 January 1999
should be understood as references to the euro — Council Regulation (EEC) No 3308/80 (OJ L 345, 20.12.1980, p. 1) andCouncil Regulation (EC) No 1103/97 (OJ L 162, 19.6.1997, p. 1).
▼B
COMMISSIONREGULATION(EC)No2868/95
of13December 1995
implementing Council Regulation (EC) No 40/94 on the Commu-
nitytrademark
THE COMMISSION OF THE EUROPEAN COMMUNITIES,
Having regard to the Treaty establishing the European Community,
Having regard to Council Regulation (EC) No 40/94 of 20 December
1993 on the Community trade mark (1) as amended by Regulation
(EC) No 3288/94 (2), and in particular Article 140 thereof,
Whereas Regulation (EC) No 40/94 (hereinafter ‘the Regulation’)
creates a new trade mark system allowing a trade mark having effect
throughout the Community to be obtained on the basis of an applica-tion to the Office for Harmonization in the Internal Market (trademarks and designs) (‘the Office’);
Whereas for this purpose, the Regulation contains the necessary provi-
sions for a procedure leading to the registration of a Community trademark, as well as for the administration of Community trade marks, for
appeals against decisions of the Office and for proceedings for the
revocation or invalidation of a Community trade mark;
Whereas Article 140 of the Regulation provides that the rules imple-
menting the Regulation shall be adopted in an implementing regulation;
Whereas the implementing regulation is to be adopted in accordance
with the procedure laid down in Article 141 of the Regulation;
Whereas this implementing regulation therefore lays down the rules
necessary for implementing the provisions of the Regulation on theCommunity trade mark;
Whereas these rules should ensure the smooth and efficient operating
of trade mark proceedings before the Office;
Whereas in accordance with Article 116 (1) of the Regulation, all the
elements of the application for a Community trade mark specified in itsArticle 26 (1) as well as any other information the publication of whichis prescribed by this implementing regulation should be published in allthe official languages of the Community;
Whereas, however, it is not appropriate for the trade mark itself,
names, addresses, dates and any other similar data to be translated and
published in all the official languages of the Community;
Whereas the Office should make available standard forms for proceed-
ings before the Office in all official languages of the Community;
Whereas the measures envisaged in this Regulation are in accordance
with the opinion of the Committee established under Article 141 ofthe Regulation,
HAS ADOPTED THIS REGULATION:
Article 1
The rules implementing the Regulation shall be as follows:1995R2868 — EN — 27.10.2003 — 001.001 — 2
(1) OJ No L 11, 14. 1. 1994, p. 1.
(2) OJ No L 349, 31. 12. 1994, p. 83
▼B
TITLE I
APPLICATIONPROCEDURE
Rule 1
Contentoftheapplication
(1) The application for a Community trade mark shall contain:
(a) a request for registration of the mark as a Community trade mark;(b) the name, address and nationality of the applicant and the State in
which he is domiciled or has his seat or an establishment. Namesof natural persons shall be indicated by the person's family nameand given name(s). Names of legal entities, as well as bodiesfalling under Article 3 of the Regulation, shall be indicated by their
official designation, which may be abbreviated in a customary
manner; furthermore, the law of the State governing them shall beindicated. The telegraphic and teletype address, telephone as wellas fax numbers and details of other data communications linksmay be given. Only one address shall, in principle, be indicatedfor each applicant; where several addresses are indicated, only the
address mentioned first shall be taken into account, except where
the applicant designates one of the addresses as an address forservice;
(c) a list of the goods and services for which the trade mark is to be
registered, in accordance with Rule 2;
(d) a representation of the mark in accordance with Rule 3;(e) if the applicant has appointed a representative, his name and the
address of his place of business in accordance with point (b); ifthe representative has more than one business address or if thereare two or more representatives with different business addresses,
the application shall indicate which address shall be used as an
address for service; where such an indication is not made, onlythe first-mentioned address shall be taken into account as anaddress for service;
(f) where the priority of a previous application is claimed pursuant to
Article 30 of the Regulation, a declaration to that effect, stating thedate on which and the country in or for which the previous applica-tion was filed;
(g) where exhibition priority is claimed pursuant to Article 33 of the
Regulation, a declaration to that effect, stating the name of the
exhibition and the date of the first display of the goods or services;
(h) where the seniority of one or more earlier trade marks, registered in
a Member State, including a trade mark registered in the Beneluxcountries or registered under international arrangements havingeffect in a Member State (hereinafter referred to as ‘earlier regis-tered trade marks, as referred to in Article 34 of the Regulation’)is claimed pursuant to Article 34 of the Regulation, a declaration
to that effect, stating the Member State or Member States in or
for which the earlier mark is registered, the date from which therelevant registration was effective, the number of the relevant regis-tration, and the goods and services for which the mark isregistered;
(i) where applicable, a statement that the application is for registration
of a Community collective mark pursuant to Article 64 of the
Regulation;
(j) specification of the language in which the application has been
filed, and of the second language pursuant to Article 115 (3) ofthe Regulation;
(k) the signature of the applicant or his representative.
(2) The application for a Community collective mark may include the
regulations governing its use.1995R2868 — EN — 27.10.2003 — 001.001 — 3
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(3) The application may include a statement by the applicant that he
disclaims any exclusive right to an element of the trade mark which isnot distinctive, to be specified by the applicant.
(4) If there is more than one applicant, the application may contain
the appointment of one applicant or representative as common repre-sentative.
Rule 2
Listofgoodsandservices
(1) The common classification referred to in Article 1 of the Nice
Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks of 15 June
1957, as revised and amended, shall be applied to the classification ofthe goods and services.
(2) The listof goods and services shall be worded in such a way as t o
indicate clearly the nature of the goods and services and to allow eachitem to be classified in only one class of the Nice Classification.
(3) The goods and services shall, in principle, be grouped according to
the classes of the Nice classification, each group being preceded by thenumber of the class of that Classification to which that group of goodsor services belongs and presented in the order of the classes under thatClassification.
(4) The classification of goods and services shall serve exclusively
administrative purposes. Therefore, goods and services may not beregarded as being similar to each other on the ground that they appearin the same class under the Nice Classification, and goods and services
may not be regarded as being dissimilar from each other on the ground
that they appear in different classes under the Nice Classification.
Rule 3
Representationofthemark
(1) If the applicant does not wish to claim any special graphic feature
or colour, the mark shall be reproduced in normal script, as forexample, by typing the letters, numerals and signs in the application.The use of small letters and capital letters shall be permitted and shallbe followed accordingly in publications of the mark and in the registra-tion by the Office.
(2) In cases other than those referred to in paragraph 1, the mark shall
be reproduced on a sheet of paper separate from the sheet on which thetext of the application appears. The sheet on which the mark is repro-
duced shall notexceed DIN A4 size (29,7 cm high, 21 cm wide) and
the space used for the reproduction (type-area) shall not be larger than26,2 cm × 17 cm. A margin of at least 2,5 cm shall be left on the left-hand side. Where it is not obvious, the correct position of the markshall be indicated by adding the word ‘top’ to each reproduction. The
reproduction of the mark shall be of such quality as to enable it to be
reduced or enlarged to a size not more than 8 cm wide by 16 cm highfor publication in the Community Trade Mark Bulletin. The separatesheet shall also indicate the name and address of the applicant. Fourcopies of the separate sheet carrying the reproduction shall be filed.
(3) In cases to which paragraph 2 applies, the application shall contain
an indication to that effect. The application may contain a descriptionof the mark.
(4) Where registration of a three-dimensional mark is applied for, the
application shall contain an indication to that effect. The representationshall consist of a photographic reproduction or a graphic representationof the mark. The representation may contain up to six different
perspectives of the mark.
(5) Where registration in colour is applied for, the application shall
contain an indication to that effect. The colours making up the mark1995R2868 — EN — 27.10.2003 — 001.001 — 4
▼B
shall also be indicated. The reproduction under paragraph 2 shall
consist of the colour reproduction of the mark.
(6) The President of the Office may determine that, as far as the
requirements of paragraph 2 are concerned, the mark may be repro-duced in the text of the application itself and not on a separate sheetof paper and that the the number of copies of the reproduction of the
mark may be less than four.
Rule 4
Fees fortheapplication
The fees payable for the application shall be:
(a) the basic fee;
and
(b) a class fee for each class exceeding three to which the goods or
services belong according to Rule 2.
Rule 5
Filingoftheapplication
(1) The Office shall mark the documents making up the application
with the date of its receipt and the file number of the application. TheOffice shall issue to the applicant without delay a receipt which shall
include at least the file number, a representation, description or other
identification of the mark, the nature and the number of the documentsand the date of their receipt.
(2) If the application is filed with the central industrial property office
of a Member Sate or at the Benelux Trade Mark Office in accordancewith Article 25 of the Regulation, the office of filing shall number allthe pages of the application with arabic numerals. Before forwarding,the office of filing shall mark the documents making up the applicationwith the date of receipt and the number of pages. The office of filing
shall issue to the applicant without delay a receipt which shall include
at least the nature and the number of the documents and the date oftheir receipt.
(3) If the Office receives an application forwarded by the central
industrial property office of a Member State or the Benelux Trade
Mark Office, it shall mark the application with the date of receipt andthe file number and shall issue to the applicant without delay a receiptin accordance with the second sentence of paragraph 1, indicating thedate of receipt at the Office.
Rule 6
Claimingpriority
(1) Where the priority of one or more previous applications pursuant
to Article 30 of the Regulation is claimed in the application, the appli-cant shall indicate the file number of the previous application and file acopy of it within three months from the filing date. The copy shall becertified to be an exact copy of the previous application by the
authority which received the previous application, and shall be accom-
panied by a certificate issued by that authority stating the date of filingof the previous application.
(2) Where the applicant wishes to claim the priority of one or more
previous applications pursuant to Article 30 of the Regulation subse-
quent to the filing of the application, the declaration of priority,stating the date on which and the country in or for which the previousapplication was made, shall be submitted within a period of twomonths from the filing date. The indications and evidence required
under paragraph 1 shall be submitted to the Office within a period of
three months from receipt of the declaration of priority.
(3) If the language of the previous application is not one of the
languages of the Office, the Office shall require the applicant to file,1995R2868 — EN — 27.10.2003 — 001.001 — 5
▼B
within a period specified by the Office, which shall be not less than
three months, a translation of the previous application into one of theselanguages.
(4) The President of the Office may determine that the evidence to be
provided by the applicant may consist of less than is required underparagraph 1, provided that the information required is available to theOffice from other sources.
Rule 7
Exhibitionpriority
(1) Where the exhibition priority pursuant to Article 33 of the Regula-
tion has been claimed in the application, the applicant shall, within
three months from the filing date, file a certificate issued at the exhibi-
tion by the authority responsible for the protection of industrialproperty at the exhibition. This certificate shall declare that the markwas in fact used for the goods or services, and shall state the openingdate of the exhibition and, where the first public use did not coincidewith the opening date of the exhibition, the date of such first public
use. The certificate must be accompanied by an identification of the
actual use of the mark, duly certified by the abovementioned authority.
(2) Where the applicant wishes to claim an exhibition priority subse-
quently to the filing of the application, the declaration of priority,
indicating the name of the exhibition and the date of the first display
of the goods or services, shall be submitted within a period of twomonths from the filing date. The indications and evidence requiredunder paragraph 1 shall be submitted to the Office within a period ofthree months from receipt of the declaration of priority.
Rule 8
Claimingtheseniorityofanationaltrademark
(1) Where the seniority of one or more earlier registered trade marks,
as referred to in Article 34 of the Regulation, has been claimed in theapplication, the applicant shall, within three months from the filing
date, submit a copy of the relevant registration. The copy must be certi-
fied by the competent authority to be an exact copy of the relevantregistration.
(2) Where the applicant wishes to claim the seniority of one or more
earlier registered trade marks as referred to in Article 34 of the Regula-
tion, subsequent to the filing of the application, the declaration of
seniority, indicating the Member State or Member States in or forwhich the mark is registered, the date from which the relevant registra-tion was effective, the number of the relevant registration, and thegoods and services for which the mark is registered, shall be submitted
within a period of two months from the filing date. The evidence
required under paragraph 1 shall be submitted to the Office within aperiod of three months from receipt of the declaration of seniority.
(3) The Office shall inform the Benelux Trade Mark Office or the
central industrial property office of the Member State concerned of
the effective claiming of seniority.
(4) The President of the Office may determine that the evidence to be
provided by the applicant may consist of less than is required underparagraph 1, provided that the information required is available to theOffice from other sources.1995R2868 — EN — 27.10.2003 — 001.001 — 6
▼B
Rule 9
Examination of requirements for a filing date and of formal
requirements
(1) If the application fails to meet the requirements for according a
filing date because:
(a) the application does not contain:
(i) a request for registration of the mark as a Community trade
mark;
(ii) information identifying the applicant;(iii) a list of the goods and services for which the mark is to be
registered;
iv) a representation of the trade mark; or
(b) the basic fee for the application has not been paid within one
month of the filing of the application with the Office or, if theapplication has been filed with the central industrial property officeof a Member State or with the Benelux Trade Mark Office, withthat office,
the Office shall notify the applicant that a date of filing cannot be
accorded in view of those deficiencies.
(2) If the deficiencies referred to under paragraph 1 are remedied
within two months of receipt of the notification, the date on which all
the deficiencies are remedied shall determine the date of filing. If thedeficiencies are not remedied before the time limit expires, the applica-tion shall not be dealt with as a Community trade mark application.Any fees paid shall be refunded.
(3) Where, although a date of filing has been accorded, the examina-
tion reveals that
3(a) the requirements of Rules 1, 2 and 3 or the other formal require-
ments governing applications laid down in the Regulation or inthese Rules are not complied with;
(b) the full amount of the class fees payable under Rule 4 (b), read
in conjunction with Commission Regulation (EC) No 2869/95 (
1)
(hereinafter ‘the Fees Regulation’) has not been received by theOffice;
(c) where priority has been claimed pursuant to Rules 6 and 7,
either in the application itself or within two months after the
date of filing, the other requirements of the said Rules are not
complied with; or
(d) where seniority has been claimed pursuant to Rule 8, either in
the application itself or within two months after the date offiling, the other requirements of Rule 8 are not complied with,
the Office shall invite the applicant to remedy the deficiencies noted
within such period as it may specify.
(4) If the deficiencies referred to in paragraph 3 (a) are not remedied
before the time limit expires, the Office shall reject the application.
(5) If the outstanding class fees are not paid before the time limit
expires, the application shall be deemed to have been withdrawn,unless it is clear which class or classes the amount paid is intended tocover. In the absence of other criteria to determine which classes areintended to be covered, the Office shall take the classes in the orderof the classification. The application shall be deemed to have been
withdrawn with regard to those classes for which the class fees have
notbeen paid or have notbeen paid in full.
(6) If the deficiencies referred to in paragraph 3 concern the claim to
priority, the right of priority for the application shall be lost.1995R2868 — EN — 27.10.2003 — 001.001 — 7
3 See p. 33 of this Official Journal.
▼B
(7) If the deficiencies referred to in paragraph 3 concern the claim to
seniority, the right of seniority in respect of that application shall belost.
(8) If the deficiencies referred to in paragraph 3 concern only some of
the goods and services, the Office shall refuse the application, or theright of priority or the right of seniority shall be lost, only in so far as
those goods and services are concerned.
Rule 10
Examination of the conditions relating to the entitlement to be
proprietor
Where, pursuant to Article 5 of the Regulation, the applicant is not
entitled to be the proprietor of a Community trade mark, the Office
shall notify the applicant thereof. The Office shall specify a period
within which the applicant may withdraw the application or submithis observations. Where the applicant fails to overcome the objectionsto registration, the Office shall refuse the application.
Rule 11
Examinationastoabsolutegroundsforrefusal
(1) Where, pursuant to Article 7 of the Regulation, the trade mark
may not be registered for all or any part of the goods or servicesapplied for, the office shall notify the applicant of the grounds forrefusing registration. The Office shall specify a period within whichthe applicant may withdraw or amend the application or submit his
observations.
(2) Where, pursuant to Article 38 (2) of the Regulation, registration of
the Community trade mark is subject to the applicant's stating that he
disclaims any exclusive right in the non-distinctive elements in the
mark, the Office shall notify the applicant thereof, stating the reasons,and shall invite him to submit the relevant statement within such periodas itmay specify.
(3) Where the applicant fails to overcome the ground for refusing
registration or to comply with the condition laid down in paragraph 2within the time limit, the Office shall refuse the application in whole orin part.
Rule 12
Publicationoftheapplication
The publication of the application shall contain:
(a) the applicant's name and address;(b) where applicable, the name and business address of the representa-
tive appointed by the applicant other than a representative fallingwithin the first sentence of Article 88 (3) of the Regulation; ifthere is more than one representative with the same businessaddress, only the name and business address of the first-named
representative shall be published and it shall be followed by the
words ‘and others’; if there are two or more representatives withdifferent business addresses, only the address for service deter-mined pursuantt o Rule 1 (1) (e) shall be published; where anassociation of representatives is appointed under Rule 76 (9),only the name and business address of the association shall be
published;
(c) the reproduction of the mark, together with the indications and
descriptions pursuant to Rule 3; where registration in colour isapplied for, the publication shall contain the indication ‘in colour’and indicate the colour or colours making up the mark;
(d) the list of goods and services, grouped according to the classes of
the Nice classification, each group being preceded by the numberof the class of that classification to which that group of goods or1995R2868 — EN — 27.10.2003 — 001.001 — 8
▼B
services belongs, and presented in the order of the classes of that
classification;
(e) the date of filing and the file number;(f) where applicable, particulars of the claim of priority pursuant to
Article 30 of the Regulation;
(g) where applicable, particulars of the claim of exhibition priority
pursuant to Article 33 of the Regulation;
(h) where applicable, particulars of the claim of seniority pursuant to
Article 34 of the Regulation;
(i) where applicable, a statement that the mark has become distinctive
in consequence of the use which has been made of it, pursuant toArticle 7 (3) of the Regulation;
(j) where applicable, a statement that the application is for a Commu-
nity collective mark;
(k) where applicable, a statement by the applicant disclaiming any
exclusive right to an element of the mark pursuant to Rule 1 (3)or Rule 11 (2);
(l) the language in which the application was filed and the second
language which the applicant has indicated pursuant to Article115 (3) of the Regulation;
(m) where applicable, a statement that the application results from a
transformation of an international registration designating theEuropean Community pursuant to Article 156 of the Regulation,together with the date of the international registration pursuant to
Article 3(4) of the Madrid Protocol or the date on which the terri-
torial extension to the European Community made subsequently tothe international registration pursuant to Article 3 ter (2) of theMadrid Protocol was recorded and, where applicable, the date ofpriority of the international registration.
Rule 13
Amendmentoftheapplication
(1) An application for amendment of the application under Article 44
of the Regulation shall contain:
(a) the file number of the application;
(b) the name and the address of the applicant in accordance with Rule
1 (1) (b);
(c) where the applicant has appointed a representative, the name and
the business address of the representative in accordance with Rule1 (1) (e);
(d) the indication of the element of the application to be corrected or
amended, and that element in its corrected or amended version;
(e) where the amendment relates to the representation of the mark, a
representation of the mark as amended, in accordance with Rule 3.
(2) Where the application for amendment is subject to the payment of
a fee, the application shall not be deemed to have been filed until the
required fee has been paid. If the fee has not been paid or has not been
paid in full, the Office shall inform the applicant accordingly.
(3) If the requirements governing the amendment of the application
are not fulfilled, the Office shall communicate the deficiency to theapplicant. If the deficiency is not remedied within a period to be speci-fied by the Office, the Office shall reject the application for
amendment.
(4) Where the amendment is published pursuant to Article 44 (2) of
the Regulation, Rules 15 to 22 shall apply mutatis mutandis .
(5) A single application for amendment may be made for the amend-
ment of the same element in two or more applications of the same1995R2868 — EN — 27.10.2003 — 001.001 — 9
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applicant. Where the application for amendment is subject to the
paymentof a fee, t he required fee shall be paid in respectof eachapplication to be amended.
(6) Paragraphs 1 to 5 shall apply mutatis mutandis for applications to
correct the name or the business address of a representative appointedby the applicant. Such applications shall not be subject to the paymentof a fee.
Rule 14
Correction ofmistakesanderrorsinpublications
(1) Where the publication of the application contains a mistake or
error attributable to the Office, the Office shall correct the mistake orerror acting of its own motion or at the request of the applicant.
(2) Where a request as referred to in paragraph 1 is made by the
applicant, Rule 13 shall apply mutatis mutandis . The requestshall not
be subject to the payment of a fee.
(3) The corrections effected under this Rule shall be published.
(4) Article 42 (2) of the Regulation and Rules 15 to 22 shall apply
mutatis mutandis where the correction concerns the list of goods or
services or the representation of the mark.
TITLE II
PROCEDUREFOROPPOSITIONANDPROOFOFUSE
Rule 15
Contentsofthenoticeofopposition
(1) Opposition may be entered on the basis of one or more earlier
marks within the meaning of Article 8 (2) of the Regulation (‘earliermarks’) or of one or more other earlier rights within the meaning of
Article 8 (4) of the Regulation (‘earlier rights’).
(2) The notice of opposition shall contain:
(a) as concerns the application against which opposition is entered:
(i) the file number of the application against which opposition is
entered;
(ii) an indication of the goods and services listed in the Commu-
nity trade mark application against which opposition is
entered;
(iii) the name of the applicant for the Community trade mark;
(b) as concerns the earlier mark or the earlier right on which the oppo-
sition is based:
(i) where the opposition is based on an earlier mark, a statement
to that effect and an indication that the earlier mark is a
Community mark or an indication of the Member State orMember States including, where applicable, the Benelux,where the earlier mark has been registered or applied for, or,where the earlier mark is an internationally registered mark,an indication of the Member State or Member States
including, where applicable, the Benelux, to which protection
of that earlier mark has been extended;
(ii) where available, the file number or the registration number
and the filing date, including the priority date of the earliermark;
(iii) where the opposition is based on an earlier mark which is a
well-known mark within the meaning of Article 8 (2) (c) of
the Regulation, an indication to that effect and an indicationof the Member State or Member States in which the earliermark is well-known;
(iv) where the opposition is based on an earlier mark having a
reputation within the meaning of Article 8 (5) of the Regula-tion, an indication to that effect, and an indication of where1995R2868 — EN — 27.10.2003 — 001.001 — 10
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that earlier mark is registered or applied for in accordance
with subparagraph (i);
(v) where the opposition is based on an earlier right, an indication
to that effect, and an indication of the Member State orMember States where that earlier right exists;
(vi) a representation and, where appropriate, a description of the
earlier mark or earlier right;
(vii) the goods and services in respect of which the earlier mark
has been registered or applied for or in respect of which theearlier mark is well-known within the meaning of Article 8(2) (c) of the Regulation or has a reputation within themeaning of Article 8 (5) of the Regulation; the opposing partyshall, when indicating all the goods and services for which the
earlier mark is protected, also indicate those goods and
services on which the opposition is based;
(c) as concerns the opposing party:
(i) where the opposition is entered by the proprietor of the earlier
mark or of the earlier right, his name and address in accor-
dance with Rule 1 (1) (b) and an indication that he is theproprietor of such mark or right;
(ii) where opposition is entered by a licensee. the name of the
licensee and his address in accordance with Rule 1 (1) (b)
and an indication that he has been authorized to enter the
opposition;
(iii) where the opposition is entered by the successor in title to the
registered proprietor of a Community trade mark who has notyet been registered as new proprietor, an indication to that
effect, the name and address of the opposing party in accor-
dance with Rule 1 (1) (b), and an indication of the date onwhich the application for registration of the new proprietorwas received by the Office or, where this information is notavailable, was sent to the Office;
(iv) where opposition is entered on the basis of an earlier right by
a person who is not the proprietor of that right, the name of
the person and his address in accordance with Rule 1 (1) (b)and an indication that the is entitled under the relevantnational law to exercise that right;
(v) where the opposing party has appointed a representative, the
name of the representative and his business in accordance
with Rule 1 (1) (e);
(d) a specification of the grounds on which the opposition is based.
(3) Paragraphs 1 and 2 shall apply mutatis mutandis to an opposition
entered pursuant to Article 8 (3) of the Regulation.
Rule 16
Facts, evidence and arguments presented in support of the opposi-
tion
(1) Every notice of opposition may contain particulars of the facts,
evidence and arguments presented in support of the opposition, accom-panied by the relevant supporting documents.
(2) If the opposition is based on an earlier mark which is not a
Community trade mark, the notice of opposition shall preferably be
accompanied by evidence of the registration or filing of that earliermark, such as a certificate of registration. If the opposition is basedon a well-known mark as referred to in Article 8 (2) (c) of the Regula-tion or on a mark having a reputation as referred to in Article 8 (5) of
the Regulation, the notice of opposition shall in principle be accompa-
nied by evidence attesting that it is well-known or that it has areputation. If the opposition is entered on the basis of any other earlierright, the notice of opposition shall in principle be accompanied byappropriate evidence on the acquisition and scope of protection of thatright.1995R2868 — EN — 27.10.2003 — 001.001 — 11
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(3) The particulars of the facts, evidence and arguments and other
supporting documents as referred to in paragraphs 1, and the evidencereferred to in paragraph 2 may, if they are not submitted together with
the notice of opposition or subsequent thereto, be submitted within
such period after commencement of the opposition proceedings as theOffice may specify pursuantt o Rule 20 (2).
Rule 17
Useoflanguagesinoppositionproceedings
(1) Where the notice of opposition is not filed in the language of the
application for registration of the Community trade mark, if that
language is one of the languages of the Office, or in the second
language indicated when the application was filed, the opposing partyshall file a translation of the notice of opposition in one of thoselanguages within a period of one month from the expiry of the opposi-tion period.
(2) Where the evidence in support of the opposition as provided for in
Rule 16 (1) and (2) is not filed in the language of the opposition
proceedings, the opposing party shall file a translation of that evidenceinto that language within a period of one month from the expiry of theopposition period or, where applicable, within the period specified bythe Office pursuant to Rule 16 (3).
(3) Where the opposing party or the applicant informs the Office,
before the date on which the opposition proceedings shall be deemedto commence pursuant to Rule 19 (1), that the applicant and theopposing party have agreed on a different language for the oppositionproceeding pursuant to Article 115 (7) of the Regulation, the opposingparty shall, where the notice of opposition has not been filed in that
language, file a translation of the notice of opposition in that language
within a period of one month from the said date.
Rule 18
Rejectionofnoticeofoppositionasinadmissible
(1) If the Office finds that the notice of opposition does not comply
with the provisions of Article 42 of the Regulation, or where the noticeof opposition does not clearly identify the application against which
opposition is entered or the earlier mark or the earlier right on the basis
of which the opposition is being entered, the Office shall reject thenotice of opposition as inadmissible unless those deficiencies havebeen remedied before expiry of the opposition period. If the oppositionfee has not been paid within the opposition period, the notice of oppo-sition shall be deemed not to have been entered. If the opposition fee
has been paid after the expiry of the opposition period, it shall be
refunded to the opposing party.
(2) If the Office finds that the notice of opposition does not comply
with other provisions of the Regulation or of these Rules, it shallinform the opposing party accordingly and shall call upon him toremedy the deficiencies noted within a period of two months. If the
deficiencies are not remedied before the time limit expires, the Office
shall reject the notice of opposition as inadmissible.
(3) Any decision to reject a notice of opposition as inadmissible under
paragraphs 1 or 2 shall be communicated to the applicant.
Rule 19
Commencementofoppositionproceedings
(1) If the Office does not reject the notice of opposition in accordance
with Rule 18, it shall communicate the opposition to the applicant and
shall invite him to file his observations within such period as it mayspecify. The Office shall draw the applicant's attention to the fact thatthe opposition proceedings shall be deemed to commence two monthsafter receipt of the communication, unless the applicant informs theOffice, before the expiry of this period, that he withdraws his applica-1995R2868 — EN — 27.10.2003 — 001.001 — 12
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tion or restricts the application to goods and services against which the
opposition is not directed.
(2) The Office may, pursuant to Rule 71, grant an extension of the
period referred to in the second sentence of paragraph 1 where such
request is presented jointly by the applicant and the opposing party.
(3) There the application is withdrawn or restricted within the period
specified in the second sentence of paragraph 1 or within any extensionof that period granted under paragraph 2, the Office shall inform theopposing party accordingly and shall refund the opposition fee.
Rule 20
Examinationofopposition
(1) If the application is not withdrawn or restricted pursuant to Rule
19, the applicant shall file his observations within the period specifiedby the Office in its communication referred to in the first sentence ofRule 19 (1).
(2) Where the notice of opposition does not contain particulars of the
facts, evidence and arguments as referred to in Rule 16 (1) and (2), the
Office shall call upon the opposing party to submit such particulars
within a period specified by the Office. Any submission by theopposing party shall be communicated to the applicant who shall begiven an opportunity to reply within a period specified by the Office.
(3) If the applicant files no observations, the Office may give a ruling
on the opposition on the basis of the evidence before it.
(4) The observations filed by the applicant shall be communicated to
the opposing party who shall be called upon by the Office, if it
considers it necessary to do so, to reply within a period specified by
the Office.
(5) If, pursuant to Article 44 (1) of the Regulation, the applicant
restricts the list of goods and services, the Office shall communicatethis to the opposing party and call upon him, within such period as itmay specify, to submit observations stating whether he maintains theopposition and, if so, against which of the remaining goods and
services.
(6) The Office may suspend any opposition proceeding where the
opposition is based on an application for registration pursuant toArticle 8 (2) (b) of the Regulation until a final decision is taken inthat proceeding, or where other circumstances are such that suchsuspension is appropriate.
Rule 21
Multipleoppositions
(1) Where a number of oppositions have been entered in respect of the
same application for a Community trade mark, the Office may dealwith them in one set of proceedings. The Office may subsequently
decide to no longer deal with them in this way.
(2) If a preliminary examination of one or more oppositions reveals
that the Community trade mark for which an application for registra-tion has been filed is possibly not eligible for registration in respectof some or all of the goods or services for which registration is sought,the Office may suspend the other opposition proceedings. The Officeshall inform the remaining opposing parties of any relevant decisions
taken during those proceedings which are continued.
(3) Once a decision rejecting the application has become final, the
oppositions on which a decision was deferred in accordance with para-graph 2 shall be deemed to have been disposed of and the opposingparties concerned shall be informed accordingly. Such disposition shallbe considered to constitute a case which has not proceeded to judgmentwithin the meaning of Article 81 (4) of the Regulation.1995R2868 — EN — 27.10.2003 — 001.001 — 13
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(4) The Office shall refund 50 % of the opposition fee paid by each
opposing party whose opposition is deemed to have been disposed ofin accordance with paragraphs 1, 2 and 3.
Rule 22
Proofofuse
(1) Where, pursuant to Article 43 (2) or (3) of the Regulation, the
opposing party has to furnish proof of use or show that there are properreasons for non-use, the Office shall invite him to provide the proofrequired within such period as it shall specify. If the opposing partydoes not provide such proof before the time limit expires, the Officeshall reject the opposition.
(2) The indications and evidence for the furnishing of proof of use
shall consist of indications concerning the place, time, extent and
nature of use of the opposing trade mark for the goods and services in
respect of which it is registered and on which the opposition is based,and evidence in support of these indications in accordance with para-graph 3.
(3) The evidence shall, in principle, be confined to the submission of
supporting documents and items such as packages, labels, price lists,catalogues, invoices, photographs, newspaper advertisements, and state-ments in writing as referred to in Article 76 (1) (f) of the Regulation.
(4) Where the evidence supplied pursuant to paragraphs 1, 2 and 3 is
not in the language of the opposition proceedings, the Office mayrequire the opposing party to submit a translation of that evidence in
that language, within a period specified by the Office.
TITLE III
REGISTRATIONPROCEDURE
Rule 23
Registrationofthetrademark
(1) The registration fee provided for in Article 45 of the Regulation
shall consistof
(a) a basic fee;
and
(b) a class fee for each class exceeding three in respect of which the
mark is to be registered.
(2) Where no opposition has been entered or where any opposition
entered has been finally disposed of by withdrawal, rejection or other
disposition, the Office shall request the applicant to pay the registrationfee within two months of receipt of the request.
(3) If the registration fee is not paid within due time, it may still be
validly paid within two months of notification of a communicationpointing out the failure to observe the time limit, provided that withinthis period the additional fee specified in the Fees Regulations is paid.
(4) On receipt of the registration fee the mark applied for and the
particulars referred to in Rule 84 (2) shall be recorded in the Registerof Community trade marks.
(5) The registration shall be published in the Community TradeMarks
Bulletin .
(6) The registration fee shall be refunded if the trade mark applied for
is notregist ered.
Rule 24
Certificate ofregistration
(1) The Office shall issue to the proprietor of the trade mark a certifi-
cate of registration which shall contain the entries in the Register1995R2868 — EN — 27.10.2003 — 001.001 — 14
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provided for in Rule 84 (2) and a statement to the effect that those
entries have been recorded in the Register.
(2) The proprietor of the trade mark may request that certified or
uncertified copies of the certificate of registration be supplied to him
upon paymentof a fee.
Rule 25
Alteration oftheregistration
(1) An application for alteration of the registration pursuant to Article
48 (2) of the Regulation shall contain:
(a) the registration number,
(b) the name and the address of the proprietor of the mark in accor-
dance with Rule 1 (1) (b);
(c) where the proprietor has appointed a representative, the name and
the business address of the representative in accordance with Rule1 (1) (e);
(d) the indication of the element in the representation of the mark to be
altered and that element in its altered version;
(e) a representation of the mark as altered, in accordance with Rule 3.
(2) The application shall be deemed not to have been filed until the
required fee has been paid. If the fee has not been paid or has not
been paid in full, the Office shall inform the applicant accordingly.
(3) If the requirements governing the alteration of the registration are
not fulfilled, the Office shall communicate the deficiency to the appli-cant. If the deficiency is not remedied within a period to be specifiedby the Office, the Office shall reject the application.
(4) Where the registration of the alteration is challenged pursuant to
Article 48 (3) of the Regulation, the provisions on opposition contained
in the Regulation and in these Rules shall apply mutatis mutandis .
(5) A single application may be made for the alteration of the same
element in two or more registrations of the same proprietor. Therequired fee shall be paid in respect of each registration to be altered.
Rule 26
ChangeofthenameoraddressoftheproprietoroftheCommunity
trademarkorofhisregistered representative
(1) A change of the name or address of the proprietor of the Commu-
nity trade mark which is not an alteration of the Community trade markpursuant to Article 48 (2) of the Regulation and which is not the conse-quence of a whole or partial transfer of the registered mark shall, at therequest of the proprietor, be recorded in the register.
(2) An application for the change of the name or address of the
proprietor of the registered mark shall contain:
(a) the registration number of the mark;
(b) the name and the address of the proprietor of the mark as recorded
in the register;
(c) the indication of the name and address of the proprietor of the
mark, as amended, in accordance with Rule 1 (1) (e).
(d) where the proprietor has appointed a representative, the name and
the business address of the representative, in accordance with Rule1 (1) (e).
(3) The application shall not be subject to payment of a fee.1995R2868 — EN — 27.10.2003 — 001.001 — 15
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(4) A single application may be made for the change of the name or
address in respect of two or more registrations of the same proprietor.
(5) If the requirements governing the recording of a change are not
fulfilled, the Office shall communicate the deficiency to the applicant.If the deficiency is not remedied within a period to be specified by theOffice, the Office shall reject the application.
(6) Paragraphs 1 to 5 shall apply mutatis mutandis to a change of the
name or address of the registered representative.
(7) Paragraphs 1 to 6 shall apply mutatis mutandis to applications for
Community trade marks. The change shall be recorded in the files keptby the Office on the Community trade mark application.
Rule 27
Correction of mistakes and errors in the register and in the publi-
cationoftheregistration
(1) Where the registration of the mark or the publication of the regis-
tration contains a mistake or error attributable to the Office, the Officeshall correct the error or mistake of its own motion or at the request ofthe proprietor.
(2) Where such a request is made by the proprietor, Rule 26 shall
applymutatis mutandis . The requestshall notbe subjectt o payment
of a fee.
(3) The Office shall publish the corrections made under this Rule.
Rule 28
ClaimingseniorityafterregistrationoftheCommunitytrademark
(1) An application pursuant to Article 35 of the Regulation to obtain
the seniority of one or more earlier registered trade marks as referred toin Article 34 of the Regulation, shall contain:
(a) the registration number of the Community trade mark;(b) the name and address of the proprietor of the Community trade
mark in accordance with Rule 1 (1) (b);
(c) where the proprietor has appointed a representative, the name and
the business address of the representative in accordance with Rule
1 (1) (e);
(d) an indication of the Member State or Member States in or for
which the earlier mark is registered, the date from which the rele-
vant registration was effective, the number of the relevantregistration, and the goods and services for which the earlier markis registered;
(e) an indication of the goods and services in respect of which
seniority is claimed;
(f) a copy of the relevant registration; the copy must be certified as an
exact copy of the relevant registration by the competent authority.
(2) If the requirements governing the claiming of seniority are not
fulfilled, the Office shall communicate the deficiency to the applicant.If the deficiency is not remedied within a period specified by theOffice, the Office shall reject the application.
(3) The Office shall inform the Benelux Trade Mark Office or the
central industrial property office of the Member State concerned ofthe effective claiming of seniority.
(4) The President of the Office may determine that the material to be
provided by the applicant may consist of less than is required underparagraph 1 (f), provided that the information required is available tothe Office from other sources.1995R2868 — EN — 27.10.2003 — 001.001 — 16
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TITLE IV
RENEWAL
Rule 29
Notification ofexpiry
At least six months before expiry of the registration the Office shall
inform the proprietor of the Community trade mark, and any personhaving a registered right, including a licence, in respect of the Commu-
nity trade mark, that the registration is approaching expiry. Failure to
give such notification shall not affect the expiry of the registration.
Rule 30
Renewalofregistration
(1) An application for renewal shall contain:
(a) where the application is filed by the proprietor of the trade mark,
his name and address in accordance with Rule 1 (1) (b);
(b) where the application is filed by a person expressly authorized to
do so by the proprietor of the mark, the name and address of thatperson and evidence that he is authorized to file the application;
(c) where the applicant has appointed a representative, the name and
business address of the representative in accordance with Rule 1
(1) (e);
(d) the registration number;
(e) an indication that renewal is requested for all the goods and
services covered by the registration or, if the renewal is notrequested for all the goods and services for which the mark isregistered, an indication of those classes or those goods andservices for which renewal is requested or those classes or those
goods and services for which renewal is notrequest ed, grouped
according to the classes of the Nice classification, each group beingpreceded by the number of the class of that classification to whichthat group of goods or services belongs and presented in the orderof the classes of that classification.
(2) The fees payable under Article 47 of the Regulation for the
renewal of a Community trade mark shall consist of:
(a) a basic fee;(b) a class fee for each class exceeding three in the list of classes in
respectof which renewal is applied for as shown in paragraph 1
(e); and
(c) where applicable, the additional fee for late payment of the renewal
fee or late submission of the request for renewal, pursuant toArticle 47 (3) of the Regulation, as specified in the Fees Regula-
tion.
(3) Where the application for renewal is filed within the time periods
provided for in Article 47 (3) of the Regulation, but the other condi-tions governing renewal provided for in Article 47 of the Regulationand these Rules are not satisfied, the Office shall inform the applicantof the deficiencies found. If the application is filed by a person whom
the proprietor of the trade mark has expressly authorized to do so, the
proprietor of the trade mark shall receive a copy of the notification.
(4) Where an application for renewal is not submitted or is submitted
after expiry of the period provided for in the third sentence of Article47 (3) of the Regulation, or if the fees are not paid or are paid onlyafter the period in question has expired, or if the deficiencies are notremedied within that period, the Office shall determine that the regis-
tration has expired and shall so notify the proprietor of the Community
trade mark and, where appropriate, the applicant and the personrecorded in the Register as having rights in the mark. Where the feespaid are insufficient to cover all the classes of goods and services forwhich renewal is requested, such a determination shall not be made if it1995R2868 — EN — 27.10.2003 — 001.001 — 17
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is clear which class or classes are to be covered. In the absence of
other criteria, the Office shall take the classes into account in the orderof classification.
(5) Where the determination made pursuant to paragraph 4 has
become final, the Office shall cancel the mark from the register. Thecancellation shall take effect from the day following the day on whichthe existing registration expired.
(6) Where the renewal fees provided for in paragraph 2 have been
paid but the registration is not renewed, those fees shall be refunded.
TITLE V
TRANSFER,LICENCESANDOTHERRIGHTS,CHANGES
Rule 31
Transfer
(1) An application for registration of a transfer under Article 17 of the
Regulation shall contain:
(a) the registration number of the Community trade mark;(b) particulars of the new proprietor in accordance with Rule 1 (1) (b);
(c) where not all the registered goods or services are included in the
transfer, particulars of the registered goods or services to which
the transfer relates;
(d) documents duly establishing the transfer in accordance with Article
17 (2) and (3) of the Regulation;
(2) The application may contain, where applicable, the name and busi-
ness address of the representative of the new proprietor, to be set out in
accordance with Rule 1 (1) (e).
(3) Transfers to any natural or legal persons who cannot be proprie-
tors of Community trade marks pursuant to Article 5 of theRegulation shall not be registered.
(4) The application shall not be deemed to have been filed until the
required fee has been paid. If the fee is not paid or is not paid in full,the Office shall so notify the applicant.
(5) It shall constitute sufficient proof of transfer under paragraph 1
(d):
(a) that the application for registration of the transfer is signed by the
registered proprietor or his representative and by the successor intitle or his representative; or,
(b) that the application, if submitted by the successor in title, is accom-
panied by a declaration, signed by the registered proprietor or hisrepresentative, that he agrees to the registration of the successor intitle; or
(c) that the application is accompanied by a completed transfer form or
document, as specified in Rule 83 (1) (d), signed by the registeredproprietor or his representative and by the successor in title or his
representative.
(6) Where the conditions applicable to the registration of a transfer, as
laid down in Article 17 (1) to (4) of the Regulation, in paragraphs 1 to4 above, and in other applicable Rules are not fulfilled, the Office shall
notify the applicant of the deficiencies. If the deficiencies are not reme-
died within a period specified by the Office, it shall reject theapplication for registration of the transfer.
(7) A single application for registration of a transfer may be submitted
for two or more marks, provided that the registered proprietor and the
successor in title are the same in each case.
(8) Paragraphs 1 to 7 shall apply mutatis mutandis to applications for
Community trade marks. The transfer shall be recorded in the files keptby the Office concerning the Community trade mark application.1995R2868 — EN — 27.10.2003 — 001.001 — 18
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Rule 32
Partial Transfers
(1) Where the application for registration of a transfer relates only to
some of the goods and services for which the mark is registered, theapplication shall contain an indication of the goods and services towhich the partial transfer relates.
(2) The goods and services in the original registration shall be distrib-
uted between the remaining registration and the new registration so that
the goods and services in the remaining registration and the new regis-tration shall not overlap.
(3) Rule 31 shall apply mutatis mutandis to applications for registra-
tions of a partial transfer.
(4) The Office shall establish a separate file for the new registration,
which shall consist of a complete copy of the file of the original regis-
tration and the application for registration of the partial transfer; a copyof that application shall be included in the file of the remaining regis-tration. The Office shall also assign a new registration number to thenew registration.
(5) Any application made by the original proprietor pending with
regard to the original registration shall be deemed to be pending withregard to the remaining registration and the new registration. Wheresuch application is subject to the payment of fees and these fees havebeen paid by the original proprietor, the new proprietor shall not beliable to pay any additional fees with regard to such application.
Rule 33
Registrationoflicences andotherrights
(1) Rule 31 (1) (a) (b) and (c), (2), (4) and (7) shall apply mutatis
mutandis to the registration of the grant or transfer of a licence, to
registration of the creation or transfer of a right in rem in respectof a
Community trade mark, and to registration of enforcement measures.
However, where a Community trade mark is involved in bankruptcyor like proceedings, the request of the competent national authorityfor an entry in the register to this effect shall not be subject to paymentof a fee.
(2) Where the Community trade mark is licensed for only part of the
goods and services for which the mark is registered, or for only a part
of the Community, or for a limited period of time, the application forregistration shall indicate the goods and services or the part of theCommunity or the time period for which the licence is granted.
(3) Where the conditions applicable to registration, as laid down in
Articles 19, 20 or 22 of the Regulation, in paragraphs 1 and 2 above,
and the other applicable Rules are not fulfilled, the Office shall notifythe applicant of the irregularity. If the irregularity is not correctedwithin a period specified by the Office, it shall reject the applicationfor registration.
(4) Paragraphs 1, 2 and 3 shall apply mutatis mutandis to applications
for Community trade marks. Licences, rights in rem and enforcement
measures shall be recorded in the files kept by the Office concerningthe Community trade mark application.
Rule 34
Specialprovisionsfortheregistrationofalicence
(1) A licence in respect of a Community trade mark shall be recorded
in the Register as an exclusive licence if the proprietor of the trademark or the licensee so request.
(2) A licence in respect of a Community trade mark shall be recorded
in the Register as a sub-licence where it is granted by a licensee whoselicence is recorded in the Register.1995R2868 — EN — 27.10.2003 — 001.001 — 19
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(3) A licence in respect of a Community trade mark shall be recorded
in the Register as a licence limited as to the goods and services or as aterritorially limited licence if it is granted for only a part of the goods
or services for which the mark is registered or if it is granted only for a
part of the Community.
(4) A licence in respect of a Community trade mark shall be recorded
in the Register as a temporary licence if it is granted for a limitedperiod of time.
Rule 35
Cancellation or modification of the registration of licences and
otherrights
(1) A registration effected under Rule 33 (1) shall be cancelled at the
requestof one of t he persons concerned.
(2) The application shall contain:
(a) the registration number of the Community trade mark;
and
(b) particulars of the right whose registration is to be cancelled.
(3) Application for cancellation of the registration of a licence or
another right shall not be deemed to have been filed until the required
fee has been paid. If t he fee is notpaid or is notpaid in full, t he Office
shall so notify the applicant. However, the request of the competentnational authority for the cancellation of an entry where a Communitytrade mark is involved in bankruptcy or like proceedings shall not besubjectt o paymentof a fee.
(4) The application shall be accompanied by documents showing that
the registered right no longer exists or by a statement by the licensee or
the holder of another right, to the effect that he consents to cancellation
of the registration.
(5) Where the requirements for cancellation of the registration are not
satisfied, the Office shall notify the applicant of the irregularity. If theirregularity is not corrected within a period specified by the Office, itshall reject the application for cancellation of the registration.
(6) Paragraphs 1, 2, 4 and 5 shall apply mutatis mutandis to a request
for the modification of a registration effected under Rule 33 (1).
(7) Paragraphs 1 to 6 shall apply mutatis mutandis to entries made in
the files pursuant to Rule 33 (4).
TITLE VI
SURRENDER
Rule 36
Surrender
(1) A declaration of surrender pursuant to Article 49 of the Regulation
shall contain:
(a) the registration number of the Community trade mark;
(b) the name and address of the proprietor in accordance with Rule 1
(1) (b);
(c) where a representative has been appointed, the name and business
address of the representative in accordance with Rule 1 (1) (e);
(d) where surrender is declared only for some of the goods and
services for which the mark is registered, the goods and services
for which the surrender is declared or the goods and services for
which the mark is to remain registered.
(2) Where a right of a third party relating to the Community trade
mark is entered in the register, it shall be sufficient proof of his agree-ment to the surrender that a declaration of consent to the surrender issigned by the proprietor of that right or his representative. Where a1995R2868 — EN — 27.10.2003 — 001.001 — 20
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licence has been registered, surrender shall be registered three months
after the date on which the proprietor of the Community trade marksatisfies the Office that he has informed the licensee of his intention
to surrender it. If the proprietor proves to the Office before the expiry
of that period that the licensee has given his consent, the surrendershall be registered forthwith.
(3) If the requirements governing surrender are not fulfilled, the
Office shall communicate the deficiencies to the declarant. If the defi-ciencies are not remedied within a period to be specified by the Office,the Office shall reject the entry of the surrender in the Register.
TITLE VII
REVOCATIONANDINVALIDITY
Rule 37
Applicationforrevocationorforadeclarationofinvalidity
An application to the Office for revocation or for a declaration of inva-
lidity pursuant to Article 55 of the Regulation shall contain:
(a) as concerns the registration in respect of which revocation or a
declaration of invalidity is sought;
(i) the registration number of the Community trade mark in
respect of which revocation or a declaration of invalidity is
sought;
(ii) the name and address of the proprietor of the Community
trade mark in respect of which revocation or a declaration of
invalidity is sought;
(iii) a statement of the registered goods and services in respect of
which revocation or a declaration of invalidity is sought;
(b) as regards the grounds on which the application is based,
(i) in the case of an application pursuant to Article 50 or Article
51 of the Regulation, a statement of the grounds on which the
application for revocation or a declaration of invalidity is
based;
(ii) in the case of an application pursuant to Article 52 (1) of the
Regulation, particulars of the right on which the application
for a declaration of invalidity is based and if necessary parti-culars showing that the applicant is entitled to adduce theearlier rightas grounds for invalidit y;
(iii) in the case of an application pursuant to Article 52 (2) of the
Regulation, particulars of the right on which the applicationfor a declaration of invalidity is based and particulars showingthat the applicant is the proprietor of an earlier right asreferred to in Article 52 (2) of the Regulation or that he is
entitled under the national law applicable to lay claim to that
right;
(iv) an indication of the facts, evidence and arguments presented in
supportof t hose grounds;
(c) as concerns the applicant,
(i) his name and address in accordance with Rule 1 (1) (b);
(ii) if the applicant has appointed a representative, the name and
the business address of the representative, in accordance withRule 1 (1) (e).
Rule 38
Languagesusedinrevocation orinvalidityproceedings
(1) Where the application for revocation or for a declaration of inva-
lidity is not filed in the language of the application for the registrationof the Community trade mark, if that language is one of the languagesof the Office, or in the second language indicated when the applicationwas filed, the applicant for revocation or for a declaration of invalidity1995R2868 — EN — 27.10.2003 — 001.001 — 21
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shall file a translation of his application in one of those two languages
within a period of one month from the filing of his application.
(2) Where the evidence in support of the application is not filed in the
language of the revocation or invalidity proceedings, the applicant shallfile a translation of that evidence into that language within a period oftwo months after the filing of such evidence.
(3) Where the applicant for revocation or for a declaration of inva-
lidity or the proprietor of the Community trade mark inform theOffice before the expiry of a period of two months from receipt bythe Community trade mark proprietor of the communication referred
to in Rule 40 (1), that they have agreed on a different language of
proceedings pursuant to Article 115 (7) of the Regulation, the applicantshall, where the application was not filed in that language, file a trans-lation of the application in that language within a period of one monthfrom the said date.
Rule 39
Rejection of the application for revocation or for declaration of
invalidityasinadmissible
(1) If the Office finds that the application does not comply with
Article 55 of the Regulation, Rule 37 or any other provision of theRegulation or these Rules, it shall inform the applicant accordingly
and shall call upon him to remedy the deficiencies found within such
period as itmay specify. If t he deficiencies are notremedied beforeexpiry of the time limit, the Office shall reject the application as inad-missible.
(2) Where the Office finds that the required fees have not been paid, it
shall inform the applicant accordingly and shall inform him that theapplication will be deemed not to have been filed if the required feesare not paid within a period specified by the Office. If the required feesare paid after expiry of the period specified by the Office, they shall berefunded to the applicant.
(3) Any decision to reject an application for revocation or for a
declaration of invalidity under paragraph 1 shall be communicated tothe applicant. Where the application is considered not to have been
filed pursuant to paragraph 2, the applicant shall be informed accord-
ingly.
Rule 40
Examination of the application for revocation or for a declaration
ofinvalidity
(1) If the Office does not reject the application in accordance with
Rule 39, it shall communicate such application to the proprietor of the
Community trade mark and shall request him to file his observationswithin such period as it may specify.
(2) If the proprietor of the Community trade mark files no observa-
tions, the Office may decide on the revocation or invalidity on the
basis of the evidence before it.
(3) Any observations filed by the proprietor of the Community trade
mark shall be communicated to the applicant, who shall be requested
by the Office, if it sees fit, to reply within a period specified by the
Office.
(4) All communications under Article 56 (1) of the Regulation and all
observations filed in this respect shall be sent to the parties concerned.
(5) If the applicant, under Article 56 (2) or (3) of the Regulation, has
to furnish proof of use or proof that there are proper reasons for non-use, Rule 22 shall apply mutatis mutandis .1995R2868 — EN — 27.10.2003 — 001.001 — 22
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Rule 41
Multiple applications for revocation or for a declaration of inva-
lidity
(1) Where a number of applications for revocation or for a declaration
of invalidity have been filed relating to the same Community trademark, the Office may deal with them in one set of proceedings. TheOffice may subsequently decide no longer to deal with them in thisway.
(2) Rule 21 (2) (3) and (4) shall apply mutatis mutandis .
TITLE VIII
COMMUNITYCOLLECTIVEMARKS
Rule 42
Applicationofprovisions
The provisions of these Rules shall apply to Community collective
marks, subjectt o Rule 43.
Rule 43
RegulationgoverningCommunitycollective marks
(1) Where the application for a Community collective trade mark does
not contain the regulations governing its use pursuant to Article 65 ofthe Regulation, those regulations shall be submitted to the Officewithin a period of two months after the date of filing.
(2) The regulations governing Community collective marks shall
specify:
(a) the name of the applicant and his office address;(b) the object of the association or the object for which the legal
person governed by public law is constituted;
(c) the bodies authorized to represent the association or the said legal
person;
(d) the conditions for membership;
(e) the persons authorized to use the mark;(f) where appropriate, the conditions governing use of the mark,
including sanctions;
(g) where appropriate, the authorization referred to in the second
sentence of Article 65 (2) of the Regulation.
TITLE IX
CONVERSION
Rule 44
Applicationforconversion
(1) An application for conversion of a Community trade mark applica-
tion or a registered Community trade mark into a national trademarkapplication pursuant to Article 108 of the Regulation shall contain:
(a) the name and the address of the applicant for conversion in accor-
dance with Rule 1 (1) (b);
(b) where the applicant for conversion has appointed a representative,
the name and the business address of the representative in accor-
dance with Rule 1 (1) (e);
(c) the filing number of the Community trade mark application or the
registration number of the Community trade mark;
(d) the date of filing of the Community trade mark application or the
Community trade mark and, where applicable, particulars of theclaim to priority for the Community trade mark application or the1995R2868 — EN — 27.10.2003 — 001.001 — 23
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Community trade mark pursuant to Articles 30 and 33 of the Regu-
lation and particulars of the claim to seniority pursuant to Articles34 and 35 of the Regulation;
(e) a representation of the mark as contained in the application or as
registered;
(f) the specification of the Member State or the Member States in
respectof which conversion is request ed;
(g) where the request does not relate to all of the goods and services
for which the application has been filed or for which the trademark has been registered, an indication of the goods and services
for which conversion is requested, and, where conversion is
requested in respect of more than one Member State and the listof goods and services is not the same for all Member States, anindication of the respective goods and services for each MemberState;
(h) where conversion is requested pursuant to Article 108 (4) of the
Regulation, an indication to that effect;
(i) where conversion is requested pursuant to Article 108 (5) of the
Regulation following a withdrawal of an application for registra-tion, an indication to that effect, and the date on which theapplication for registration was withdrawn;
(j) where conversion is requested pursuant to Article 108 (5) of the
Regulation following a failure to renew the registration, an indica-
tion to that effect, and the date on which the period of protection
has expired, the period of three months provided for in Article108 (5) of the Regulation shall begin to run on the day followingthe last day on which the request for renewal can be presentedpursuant to Article 47 (3) of the Regulation;
(k) where conversion is requested pursuant to article 108 (6) of the
Regulation, an indication to that effect, the date on which the deci-
sion of the national court has become final, and a copy of thatdecision.
(2) Where a copy of a courtdecision pursuantt o paragraph 1 (k) is
required, that copy may be submitted in the language in which thedecision was given.
Rule 45
Examinationofapplicationforconversion
(1) Where the application for conversion does not comply with the
requirements of Article 108 (1) of the Regulation or was not filedwithin the relevant period of three months, the Office shall reject it.
(2) Where the conversion fee has not been paid within the relevant
period of three months, the Office shall inform the applicant that theapplication for conversion shall be deemed not to have been filed.
(3) Where the other requirements governing conversion as provided
for in Rule 44 and in other Rules governing such applications are notfulfilled, the Office shall inform the applicant accordingly and invitehim to remedy the deficiency within a period specified by the Office.
If the deficiencies are not remedied within that period, the Office shall
reject the application for conversion.
Rule 46
Publicationofapplicationforconversion
(1) Where the application for conversion relates to a Community trade
mark application which has already been published in the CommunityTrade Mark Bulletin pursuant to Article 40 of the Regulation or wherethe application for conversion relates to a Community trade mark, theapplication for conversion shall be published in the Community TradeMarks Bulletin.1995R2868 — EN — 27.10.2003 — 001.001 — 24
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(2) The publication of the application for conversion shall contain:
(a) the filing number or the registration number of the trade mark in
respectof which conversion is request ed;
(b) a reference to the previous publication of the application or the
registration in the Community Trade marks Bulletin;
(c) an indication of the Member State or Member States in respect of
which conversion has been requested;
(d) where the request does not relate to all of the goods and services
for which the application has been filed or for which the trademark has been registered, an indication of the goods and services
for which conversion is requested;
(e) where conversion is requested in respect of more than one Member
State and the list of goods and services is not the same for all
Member States, an indication of the respective goods and servicesfor each Member State;
(f) the date of the application for conversion.
Rule 47
Transmission to central industrial property offices of the Member
States
Where the application for conversion complies with the requirements
of the Regulation and these Rules, the Office shall transmit without
delay the application for conversion to the central industrial property
offices of the Member States specified therein, including the BeneluxTrade Mark Office. The Office shall inform the applicant of the dateof transmission.
TITLE X
APPEALS
Rule 48
Contentofthenoticeofappeal
(1) The notice of appeal shall contain:
(a) the name and address of the appellant in accordance with rule 1 (1)
(b);
(b) where the appellant has appointed a representative, the name and
the business address of the representative in accordance with Rule1 (1) (e);
(c) a statement identifying the decision which is contested and the
extent to which amendment or cancellation of the decision isrequested.
(2) The notice of appeal shall be filed in the language of the proceed-
ings in which the decision subject to the appeal was taken.
Rule 49
Rejectionoftheappealasinadmissible
(1) If the appeal does not comply with Articles 57, 58 and 59 of the
Regulation and Rule 48 (1) (c) and (2), the Board of Appeal shall
rejectitas inadmissible, unless each deficiency has been remediedbefore the relevant time limit laid down in Article 59 of the Regulationhas expired.
(2) If the Board of Appeal finds that the appeal does not comply with
other provisions of the Regulation or other provisions of these Rules, in
particular Rule 48 (1) (a) and (b), it shall inform the appellant accord-ingly and shall request him to remedy the deficiencies noted withinsuch period as it may specify. If the appeal is not corrected in goodtime, the Board of Appeal shall reject it as inadmissible.1995R2868 — EN — 27.10.2003 — 001.001 — 25
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(3) If the fee for appeal has been paid after expiry of the period for
the filing of appeal pursuant to Article 59 of the Regulation, the appealshall be deemed not to have been filed and the appeal fee shall be
refunded to the appellant.
Rule 50
Examinationofappeals
(1) Unless otherwise provided, the provisions relating to proceedings
before the department which has made the decision against which theappeal is broughtshall be applicable t o appeal proceedings mutatis
mutandis .
(2) The Board of Appeal's decision shall contain:
(a) a statement that it is delivered by the Board;(b) the date when the decision was taken;(c) the names of the Chairman and of the other members of the Board
of Appeal taking part;
(d) the name of the competent employee of the registry;
(e) the names of the parties and of their representatives;(f) a statement of the issues to be decided;(g) a summary of the facts;(h) the reasons;(i) the order of the Board of Appeal, including, where necessary, a
decision on costs.
(3) The decision shall be signed by the Chairman and the other
members of the Board of Appeal and by the employee of the registryof the Board of Appeal.
Rule 51
Reimbursementofappealfees
The reimbursementof appeal fees shall be ordered in t he eventof
interlocutory revision or where the Board of Appeal deems an appeal
to be allowable, if such reimbursement is equitable by reason of asubstantial procedural violation. In the event of interlocutory revision,reimbursement shall be ordered by the department whose decision hasbeen impugned, and in other cases by the Board of Appeal.
TITLE XI
GENERALPROVISIONS
PartA
Decisions and communications of the Office
Rule 52
Formofdecisions
(1) Decisions of the Office shall be in writing and shall state the
reasons on which they are based. Where oral proceedings are heldbefore the Office, the decision may be given orally. Subsequently, thedecision in writing shall be notified to the parties.
(2) Decisions of the Office which are open to appeal shall be accom-
panied by a written communication indicating that notice of appeal
must be filed in writing at the Office within two months of the date
of notification of the decision from which appeal is to be made. Thecommunications shall also draw the attention of the parties to theprovisions laid down in Articles 57, 58 and 59 of the Regulation. Theparties may not plead any failure to communicate the availabilityproceedings.1995R2868 — EN — 27.10.2003 — 001.001 — 26
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Rule 53
Correction oferrors indecisions
In decisions of the Office, only linguistic errors, errors of transcription
and obvious mistakes my be corrected. They shall be corrected by the
department which took the decision, acting of its own motion or at the
request of an interested party.
Rule 54
Notingoflossofrights
(1) If the Office finds that the loss of any rights results from the
Regulation or these Rules without any decision having been taken, itshall communicate this to the person concerned in accordance withArticle 77 of the Regulation, and shall draw his attention to thesubstance of paragraph 2 of this Rule.
(2) If the person concerned considers that the finding of the Office is
inaccurate, he may, within two months after notification of the commu-
nication referred to in paragraph 1, apply for a decision on the matter
by the Office. Such decision shall be given only if the Office disagreeswith the person requesting it; otherwise the Office shall amend itsfinding and inform the person requesting the decision.
Rule 55
Signature,name,seal
(1) Any decision, communication or notice from the Office shall indi-
cate the department or division of the Office as well as the name or thenames of the official or officials responsible. They shall be signed by
the official or officials, or, instead of a signature, carry a printed or
stamped seal of the Office.
(2) The President of the Office may determine that other means of
identifying the department or division of the Office and the name ofthe official or officials responsible or an identification other than aseal may be used where decisions, communications or notices are trans-
mitted by telecopier or any other technical means of communication.
PartB
Oral proceedings and taking of evidence
Rule 56
Summonstooralproceedings
(1) The parties shall be summoned to oral proceedings provided for in
Article 75 of the Regulation and their attention shall be drawn to para-
graph 3 of this Rule. At least one month's, notice of the summons shall
be given unless the parties agree to a shorter period.
(2) When issuing the summons, the Office shall draw attention to the
points which in its opinion need to be discussed in order for the deci-sion to be taken.
(3) If a party who has been duly summoned to oral proceedings before
the Office does not appear as summoned, the proceedings may continue
without him.
Rule 57
TakingofevidencebytheOffice
(1) Where the Office considers it necessary to hear the oral evidence
of parties, of witnesses or of experts or to carry out an inspection, it
shall take a decision to that end, stating the means by which it intendsto obtain evidence, the relevant facts to be proved and the date, timeand place of hearing or inspection. If oral evidence of witnesses andexperts is requested by a party, the decision of the Office shall deter-mine the period of time within which the party filing the request must1995R2868 — EN — 27.10.2003 — 001.001 — 27
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make known to the Office the names and addresses of the witnesses
and experts whom the party wishes to be heard.
(2) The period of notice given in the summons of a party, witness or
expert to give evidence shall be at least one month, unless they agreeto a shorter period. The summons shall contain:
(a) an extract from the decision mentioned in paragraph 1, indicating
in particular the date, time and place of the hearing ordered and
stating the facts regarding which the parties, witnesses and experts
are to be heard;
(b) the names of the parties to proceedings and particulars of the rights
which the witnesses or experts may invoke under Rule 59 (2) to(5).
Rule 58
Commissioningofexperts
(1) The Office shall decide in whatform t he reportmade by an expert
whom it appoints shall be submitted.
(2) The terms of reference of the expert shall include:
(a) a precise description of his task;(b) the time limit laid down for the submission of the expert report;
(c) the names of the parties to the proceedings;
(d) particulars of the claims which he may invoke under Rule 59 (2),
(3) and (4).
(3) A copy of any written report shall be submitted to the parties.
(4) The parties may object to an expert on grounds of incompetence
or on the same grounds as those on which objection may be made toan examiner or to a member of a Division or Board of Appeal pursuantto Article 132 (1) and (3) of the Regulation. The department of the
Office concerned shall rule on the objection.
Rule 59
Costsoftakingofevidence
(1) The taking of evidence by the Office may be made conditional
upon deposit with it, by the party who has requested the evidence to
be taken, of a sum which shall be fixed by reference to an estimate of
the costs.
(2) Witnesses and experts who are summoned by and appear before
the Office shall be entitled to reimbursement of reasonable expenses
for travel and subsistence. An advance for these expenses may begranted to them by the Office. The first sentence shall apply also towitnesses and experts who appear before the Office without beingsummoned by it and are heard as witnesses or experts.
(3) Witnesses entitled to reimbursement under paragraph 2 shall also
be entitled to appropriate compensation for loss of earnings, andexperts to fees for their work. These payments shall be made to thewitnesses and experts after they have fulfilled their duties or tasks,
where such witnesses and experts have been summoned by the Office
of its own initiative.
(4) The amounts and the advances for expenses to be paid pursuant to
paragraphs 1, 2 and 3 shall be determined by the President of the
Office and shall be published in the Official Journal of the Office.
The amounts shall be calculated on the same basis as the compensationand salaries received by officials in grades A4 to A8 as laid down inthe Staff Regulations of Officials of the European Communities andAnnex VII thereto.1995R2868 — EN — 27.10.2003 — 001.001 — 28
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(5) Final liability for the amounts due or paid pursuant to paragraphs
1 to 4 shall lie with:
(a) the Office where the Office, at its own initiative, considered it
necessary to hear the oral evidence of witnesses or experts;
or
(b) the party concerned where that party requested the giving of oral
evidence by witnesses or experts, subject to the decision on appor-
tionment and fixing of costs pursuant to Articles 81 and 82 of theRegulation and Rule 94. Such party shall reimburse the Office forany advances duly paid.
Rule 60
Minutesoforalproceedingsandofevidence
(1) Minutes of oral proceedings or the taking of evidence shall be
drawn up, containing the essentials of the oral proceedings or of thetaking of evidence, the relevant statements made by the parties, thetestimony of the parties, witnesses or experts and the result of any
inspection.
(2) The minutes of the testimony of a witness, expert or party shall be
read out or submitted to him so that he may examine them. It shall benoted in the minutes that this formality has been carried out and thatthe person who gave the testimony approved the minutes. Where hisapproval is not given, his objections shall be noted.
(3) The minutes shall be signed by the employee who drew them up
and by the employee who conducted the oral proceedings or taking of
evidence.
(4) The parties shall be provided with a copy of the minutes.
(5) Upon request, the Office shall make available to the parties tran-
scripts of recordings of the oral proceedings, in typescript or in any
other machine-readable form. The release under the first sentence ofthe oral proceedings shall be subject to the payment of the costsincurred by the Office in making such transcript. The amount to becharged shall be determined by the President of the Office.
PartC
Notifications
Rule 61
General provisionsonnotifications
(1) In proceedings before the Office, any notifications to be made by
the Office shall take the form of the original document, of a copythereof certified by, or bearing the seal of, the Office or of a computerprint-out bearing such seal. Copies of documents emanating from theparties themselves shall not require such certification.
(2) Notifications shall be made
(a) by postin accordance wit h Rule 62;
(b) by hand delivery in accordance with Rule 63;(c) by deposit in a post box at the Office in accordance with Rule 64;
(d) by telecopier and other technical means in accordance with Rule
65;
(e) by public notification in accordance with Rule 66.
Rule 62
Notificationbypost
(1) Decisions subject to a time limit for appeal, summonses and other
documents as determined by the President of the Office shall be noti-fied by registered letter with advice of delivery. Decisions andcommunications subject to some other time limit shall be notified by1995R2868 — EN — 27.10.2003 — 001.001 — 29
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registered letter, unless the President of the Office determines other-
wise. All other communications shall be ordinary mail.
(2) Notifications in respect of addresses having neither their domicile
nor their principal place of business nor an establishment in the
Community and who have not appointed a representative in accordancewith Article 88 (2) of the Regulation shall be effected by posting thedocument requiring notification by ordinary mail to the last address ofthe addressee known to the Office. Notification shall be deemed to
have been effected when the posting has taken place.
(3) Where notification is effected by registered letter, whether or not
with advice of delivery, this shall be deemed to be delivered to theaddressee on the 10th day following that of its posting, unless the letterhas failed to reach the addressee or has reached him at a later date. Inthe event of any dispute, it shall be for the Office to establish that the
letter has reached its destination or to establish the date on which it
was delivered to the addressee, as the case may be.
(4) Notification by registered letter, with or without advice of
delivery, shall be deemed to have been effected even if the addresseerefuses to accept the letter.
(5) To the extent that notification by post is not covered by para-
graphs 1 to 4, the law of the State on the territory of which
notification is made shall apply.
Rule 63
Notificationbyhanddelivery
Notification may be effected on the premises of the Office by hand
delivery of the document to the addressee, who shall on deliveryacknowledge its receipt.
Rule 64
NotificationbydepositinapostboxattheOffice
Notification may also be effected to addressees who have been
provided with a post box at the Office, by depositing the documenttherein. A written notification of deposit shall be inserted in the files.The date of deposit shall be recorded on the document. Notificationshall be deemed to have taken place on the fifth day following deposit
of the document in the post box at the Office.
Rule 65
Notificationbytelecopier andothertechnicalmeans
(1) Notification by telecopier shall be effected by transmitting either
the original or a copy, as provided for in Rule 61 (1), of the documentto be notified. The details of such transmission shall be determined bythe President of the Office.
(2) Details of notification by other technical means of communication
shall be determined by the President of the Office.
Rule 66
Publicnotification
(1) If the address of the addressee cannot be established, or if notifica-
tion in accordance with Rule 62 (1) has proved to be impossible evenafter a second attempt by the Office, notification shall be effected by
public notice. Such notice shall be published at least in the Community
Trade Marks Bulletin.
(2) The President of the Office shall determine how the public notice
is to be given and shall fix the beginning of the one-month period onthe expiry of which the document shall be deemed to have been noti-fied.1995R2868 — EN — 27.10.2003 — 001.001 — 30
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Rule 67
Notification torepresentatives
(1) If a representative has been appointed or where the applicant first
named in a common application is considered to be the common repre-
sentative pursuant to Rule 75 (1), notifications shall be addressed to
that appointed or common representative.
(2) If several representatives have been appointed for a single inter-
ested party, notification to any one of them shall be sufficient, unlessa specific address for service has been indicated in accordance withRule 1 (1) (e).
(3) If several interested parties have appointed a common representa-
tive, notification of a single document to the common representative
shall be sufficient.
Rule 68
Irregularities innotification
Where a document has reached the addressee, if the Office is unable to
prove that it has been duly notified, or if provisions relating to its noti-fication have not been observed, the document shall be deemed to havebeen notified on the date established by the Office as the date ofreceipt.
Rule 69
Notificationofdocumentsinthecaseofseveral parties
Documents emanating from parties which contain substantive propo-
sals, or a declaration of withdrawal of a substantive proposal, shall be
notified to the other parties as a matter of course. Notification may bedispensed with where the document contains no new pleadings and thematter is ready for decision.
PartD
Timelimits
Rule 70
Calculationoftime limits
(1) Periods shall be laid down in terms of full years, months, weeks or
days.
(2) Calculation shall start on the day following the day on which the
relevant event occurred, the event being either a procedural step or the
expiry of another period. Where that procedural step is a notification,
the event considered shall be the receipt of the document notified,unless otherwise provided.
(3) Where a period is expressed as one year or a certain number of
years, it shall expire in the relevant subsequent year in the monthhaving the same name and on the day having the same number as the
month and the day on which the said event occurred. Where the rele-
vant month has no day with the same number the period shall expire onthe last day of that month.
(4) Where a period is expressed as one month or a certain number of
months, it shall expire in the relevant subsequent month on the daywhich has the same number as the day on which the said event
occurred. Where the day on which the said event occurred was the
last day of a month or where the relevant subsequent month has noday with the same number the period shall expire on the last day ofthat month.
(5) Where a period is expressed as one week or a certain number of
weeks, it shall expire in the relevant subsequent week on the dayhaving the same name as the day on which the said event occurred.1995R2868 — EN — 27.10.2003 — 001.001 — 31
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Rule 71
Durationoftime limits
(1) Where the Regulation or these Rules provide for a period to be
specified by the Office, such period shall, when the party concernedhas its domicile or its principal place of business or an establishmentwithin the Community, be not less than one month, or, when thoseconditions are not fulfilled, not less than two months, and no morethan six months. The Office may, when this is appropriate under the
circumstances, grant an extension of a period specified if such exten-
sion is requested by the party concerned and the request is submittedbefore the original period expired.
(2) Where there are two or more parties, the Office may extend a
period subject to the agreement of the other parties.
Rule 72
Expiryoftimelimitsinspecialcases
(1) If a time limit expires on a day on which the Office is not open
for receipt of documents or on which, for reasons other than thosereferred to in paragraph 2, ordinary mail is not delivered in the localityin which the Office is located, the time limit shall extend until the first
day thereafter on which the Office is open for receipt of documents and
on which ordinary mail is delivered. The days referred to in the firstsentence shall be as determined by the President of the Office beforethe commencement of each calendar year.
(2) If a time limit expires on a day on which there is a general inter-
ruption or subsequent dislocation in the delivery of mail in a Member
State or between a Member State and the Office, the time limit shallextend until the first day following the end of the period of interruptionor dislocation, for parties having their residence or registered office inthe State concerned or who have appointed representatives with a place
of business in that State. In the event of the Member State concerned
being the State in which the Office is located, this provision shall applyto all parties. The duration of the abovementioned period shall be asdetermined by the President of the Office.
(3) Paragraphs 1 and 2 shall apply mutatis mutandis to the time limits
provided for in the Regulation or these Rules in the case of transactions
to be carried out with the competent authority within the meaning of
Article 25 (1) (b) of the Regulation.
(4) If an exceptional occurrence such as natural disaster or strike
interrupts or dislocates the proper functioning of the Office so thatany communication from the Office to parties concerning the expiry
of a time limit is delayed, acts to be completed within such a time limit
may still be validly completed within one month after the notificationof the delayed communication. The date of commencement and the endof any such interruption or dislocation shall be as determined by thePresidentof t he Office.
PartE
Interruption of proceedings
Rule 73
Interruptionofproceedings
(1) Proceedings before the Office shall be interrupted:
(a) in the event of the death or legal incapacity of the applicant for or
proprietor of a Community trade mark or of the person authorizedby national law to act on his behalf. To the extent that the aboveevents do not affect the authorization of a representative appointedunder Article 89 of the Regulation, proceedings shall be interrupted
only on application by such representative;
(b) in the event of the applicant for or proprietor of a Community trade
mark, as a result of some action taken against his property, being1995R2868 — EN — 27.10.2003 — 001.001 — 32
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prevented for legal reasons from continuing the proceedings before
the Office;
(c) in the event of the death or legal incapacity of the representative of
an applicant for or proprietor of a Community trade mark or of hisbeing prevented for legal reasons resulting from action takenagainst his property from continuing the proceedings before theOffice.
(2) When, in the cases referred to in paragraph 1 (a) and (b), the
Office has been informed of the identity of the person authorized to
continue the proceedings before the Office, the Office shall communi-
cate to such person and to any interested third parties that theproceedings shall be resumed as from a date to be fixed by the Office.
(3) In the case referred to in paragraph 1 (c), the proceedings shall be
resumed when the Office has been informed of the appointment of anew representative of the applicant or when the Office has notified tothe other parties the communication of the appointment of a new repre-sentative of the proprietor of the Community trade mark. If, three
months after the beginning of the interruption of the proceedings, the
Office has not been informed of the appointment of a new representa-tive, it shall inform the applicant for or proprietor of the Communitytrade mark:
(a) where Article 88 (2) of the Regulation is applicable, that the
Community trade mark application will be deemed to be withdrawn
if the information is not submitted within two months after thiscommunication is notified; or
(b) where Article 88 (2) of the Regulation is not applicable, that the
proceedings will be resumed with the applicant for or proprietor
of the Community trade mark as from the date on which this
communication is notified.
(4) The time limits, other than the time limit for paying the renewal
fees, in force as regards the applicant for or proprietor of the Commu-nity trade mark at the date of interruption of the proceedings, shallbegin again as from the day on which the proceedings are resumed.
PartF
Waiving of enforced recovery procedures
Rule 74
Waivingofenforced recovery procedures
The President of the Office may waive action for the enforced recovery
of any sum due where the sum to be recovered is minimal or where
such recovery is too uncertain.
PartG
Representation
Rule 75
Appointmentofacommonrepresentative
(1) If there is more than one applicant and the application for a
Community trade mark does not name a common representative, theapplicant first named in the application shall be considered to be thecommon representative. However, if one of the applicants is obligedto appoint a professional representative, such representative shall be
considered to be the common representative unless the applicant named
first in the application has appointed a professional representative. Thesame shall apply mutatis mutandis to third parties acting in common in
filing notice of opposition or applying for revocation or for a declara-tion of invalidity, and to joint proprietors of a Community trade mark.
(2) If, during the course of proceedings, transfer is made to more than
one person, and such persons have notappoint ed a common represen-tative, paragraph 1 shall apply. If such application is not possible, the1995R2868 — EN — 27.10.2003 — 001.001 — 33
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Office shall require such persons to appoint a common representative
within two months. If this request is not complied with, the Office shallappoint the common representative.
Rule76
Authorizations
(1) Representatives acting before the Office must file with it a signed
authorization for inclusion in the files. The authorization may coverone or more applications or one or more registered trade marks.
(2) A general authorization enabling a representative to act in respect
of all trade mark transactions of the party giving the authorization maybe filed.
(3) The authorization may be filed in any language of the Office and
in the language of the proceedings if that language is not one of thelanguages of the Office.
(4) Where the appointment of a representative is communicated to the
Office, the necessary authorization shall be filed within a period speci-fied by the Office. If the authorization is not filed in due time,proceedings shall be continued with the represented person. Any proce-
dural steps other than the filing of the application taken by the
representative shall be deemed not to have been taken if the repre-sented person does not approve them. The application of Article 88(2) of the Regulation shall remain unaffected.
(5) Paragraphs 1 to 3 shall apply mutatis mutandis to a document
withdrawing an authorization.
(6) Any representative who has ceased to be authorized shall continue
to be regarded as the representative until the termination of his author-ization has been communicated to the Office.
(7) Subject to any provisions to the contrary contained therein, an
authorization shall not terminate vis-à-vis the Office upon the death of
the person who gave it.
(8) Where several representatives are appointed by the same party,
they may, notwithstanding any provisions to the contrary in theirauthorizations, act either jointly or singly.
(9) The authorization of an association of representatives shall be
deemed to be an authorization of any representative who can establishthat he practises within that association.
Rule 77
Representation
Any notification or other communication addressed by the Office to the
duly authorized representative shall have the same effect as if it hadbeen addressed to the represented person. Any communicationaddressed to the Office by the duly authorized representative shallhave the same effect as if it originated from the represented person.
Rule 78
Amendmentofthelistofprofessionalrepresentatives
(1) The entry of a professional representative in the list of profes-
sional representatives, as referred to in Article 89 of the Regulation,
shall be deleted at his request.
(2) The entry of a professional representative shall be deleted automa-
tically:
(a) in the event of the death or legal incapacity of the professional
representative;
(b) where the professional representative is no longer a national of a
Member State, unless the President of the Office has granted anexemption under Article 89 (4) (b) of the Regulation;1995R2868 — EN — 27.10.2003 — 001.001 — 34
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(c) where the professional representative no longer has his place of
business or employment in the Community;
(d) where the professional representative no longer possesses the enti-
tlement referred to in the first sentence of Article 89 (2) (c) of theRegulation.
(3) The entry of a professional representative shall be suspended of
the Office's own motion where his entitlement to represent natural orlegal persons before the central industrial property office of theMember State as referred to in the fist sentence of Article 89 (2) (c)has been suspended.
(4) A person whose entry has been deleted shall, upon request
pursuant to Article 89 (3) of the Regulation, be reinstated in the list
of professional representatives if the conditions for deletion no longer
exist.
(5) The Benelux Trade Mark Office and the central industrial property
offices of the Member States concerned shall, where they are awarethereof, promptly inform the Office of any relevant events under para-graphs 2 and 3.
(6) The amendments of the list of professional representatives shall be
published in the Official Journal of the Office.
PartH
Written communications and forms
Rule 79
Communicationinwritingorbyothermeans
Applications for the registration of a Community trade mark as well as
any other application provided for in the Regulation and all othercommunications addressed to the Office shall be submitted as follows:
(a) by submitting a signed original of the document in question at the
Office, such as by post, personal delivery, or by any other means;annexes to documents submitted need not be signed;
(b) by transmitting a signed original by telecopier in accordance with
Rule 80;
(c) by telex or telegram in accordance with Rule 81;
(d) by transmitting the contents of the communication by electronic
means in accordance with Rule 82.
Rule 80
Communicationbytelecopier
(1) Where an application for registration of a trade mark is submitted
to the Office by telecopier and the application contains a reproduction
of the mark pursuant to Rule 3 (2) which does not satisfy the require-ments of that Rule, the required number of original reproductions shallbe submitted to the Office in accordance with Rule 79 (a). Where thereproductions are received by the Office within a period of one monthfrom the date of the receipt of the telecopy by the Office, the applica-
tion shall be deemed to have been received by the Office on the date
on which the telecopy was received by the Office. Where the reproduc-tions are received by the Office after the expiry of that period and thereproduction is necessary for the obtaining of a filing date, the applica-tion shall be deemed to have been received by the Office on the date
on which the reproductions were received by the Office.
(2) Where a communication received by telecopier is incomplete or
illegible, or where the Office has reasonable doubts as to the accuracy
of the transmission, the Office shall inform the sender accordingly andshall invite him, within a period to be specified by the Office, toretransmit the original by telecopy or to submit the original in accor-dance with Rule 79 (a). Where this request is complied with withinthe period specified, the date of the receipt of the retransmission or of1995R2868 — EN — 27.10.2003 — 001.001 — 35
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the original shall be deemed to be the date of the receipt of the original
communication, provided that where the deficiency concerns thegranting of a filing date for an application to register a trade mark,
the provisions on the filing date shall apply. Where the request is not
complied with within the period specified, the communication shall bedeemed nott o have been received.
(3) Any communication submitted to the Office by telecopier shall be
considered to be duly signed if the reproduction of the signatureappears on the printout produced by the telecopier.
(4) The President of the Office may determine additional requirements
of communication by telecopier, such as the equipment to be used,technical details of communication, and methods of identifying thesender.
Rule 81
Communicationbytelex ortelegram
(1) Where an application for registration of a trade mark is submitted
to the Office by telex or by telegram and the application contains areproduction of the mark pursuant to Rule 3 (2), Rule 80 (1) shall
applymutatis mutandis .
(2) Where a communication is submitted by telex or telegram, Rule
80 (2) shall apply mutatis mutandis .
(3) Where a communication is submitted by telex or telegram, the
indication of the name of the sender shall be deemed equivalent to thesignature.
Rule 82
Communicationbyelectronic means
(1) Where an application for registration of a trademark is submitted
by electronic means and the application contains a reproduction of themark pursuantt o Rule 3 (2), Rule 80 (1) shall apply mutatis mutandis .
(2) Where a communication is sent by electronic means, Rule 80 (2)
shall applymutatis mutandis .
(3) Where a communication is sent to the Office by electronic means,
the indication of the name of the sender shall be deemed to be equiva-lent to the signature.
(4) The President of the Office shall determine the requirements as to
communication by electronic means, such as the equipment to be used,technical details of communication, and methods of identifying the
sender.
Rule 83
Forms
(1) The Office shall make available free of charge forms for the
purpose of:
(a) filing an application for a Community trade mark;
(b) entering opposition to registration of a Community trade mark;
(c) applying for an amendment of an application or a registration, for
correction of names and addresses and of mistakes and errors;
(d) applying for the registration of a transfer and the transfer form and
transfer document provided for in Rule 31 (5);
(e) applying for the registration of a licence;(f) applying for renewal of the registration of a Community trade
mark;
(g) applying for revocation or for a declaration of invalidity of a
Community trade mark;
(h) applying for restitutio in integrum ;1995R2868 — EN — 27.10.2003 — 001.001 — 36
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(i) making an appeal;
(j) authorizing a representative, in the form of an individual authoriza-
tion and in the form of a general authorization.
(2) The Office may make other forms available free of charge.(3) The Office shall make available the forms referred to in para-
graphs 1 and 2 in all the official languages of the Community.
(4) The Office shall place the forms at the disposal of the Benelux
Trade Mark Office and the Member States' central industrial property
offices free of charge.
(5) The Office may also make available the forms in machine-read-
able form.
(6) Parties to proceedings before the Office shall use the forms
provided by the Office, or copies of these forms, or forms with thesame content and format as these forms, such as forms generated by
means of electronic data processing.
(7) Forms shall be completed in such a manner as to permit an auto-
mated input of the content into a computer, such as by character
recognition or scanning.
PartI
Information of the public
Rule 84
RegisterofCommunityTradeMarks
(1) The Register of Community Trade Marks may be maintained in
the form of an electronic database.
(2) The Register of Community Trade Marks shall contain the
following entries:
(a) the date of filing the application;(b) the file number of the application;(c) the date of the publication of the application;(d) the name, the address and the nationality of the applicant and the
State in which he is domiciled or has his seat or establishment;
(e) the name and business address of the representative, other than a
representative falling within the first sentence of Article 88 (3) of
the Regulation; where there is more than one representative, onlythe name and business address of the first named representative,followed by the words and others, shall be recorded; where anassociation of representatives is appointed, only the name andaddress of the association shall be recorded;
(f) the reproduction of the mark, with indications as to its nature,
unless it is a mark falling under Rule 3 (1); where the registration
of the mark is in colour, the indication ‘in colour’ with an indica-tion of the colour or colours making up the mark; whereapplicable, a description of the mark;
(g) an indication of the goods and services by their names, grouped
according to the classes of the Nice Classification; each group
shall be preceded by the number of the class of that classification
to which that group of goods and services belongs and shall bepresented in the order of the classes of that classification
(h) particulars of claims of priority pursuant to Article 30 of the Regu-
lation;
(i) particulars of claims of exhibition priority pursuant to Article 33
of the Regulation;
(j) particulars of claims of seniority of an earlier registered trade mark
as referred to in Article 34 of the Regulation;1995R2868 — EN — 27.10.2003 — 001.001 — 37
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(k) a statement that the mark has become distinctive in consequence
of the use which has been made of it, pursuant to Article 7 (3) ofthe Regulation;
(l) a declaration by the applicant disclaiming any exclusive right to
some element of the mark pursuant to Article 38 (2) of the Regu-lation;
(m) an indication that the mark is a collective mark;
(n) the language in which the application was filed and the second
language which the applicant has indicated in his application,pursuant to Article 115 (3) of the Regulation;
(o) the date of registration of the mark in the Register and the regis-
tration number;
(p) a statement that the application results from a transformation of an
international registration designating the European Communitypursuant to Article 156 of the Regulation, together with the dateof the international registration pursuant to Article 3(4) of theMadrid Protocol or the date on which the territorial extension tothe European Community made subsequently to the international
registration pursuant to Article 3 ter (2) of the Madrid Protocol
was recorded and, where applicable, the date of priority of theinternational registration.
(3) The Register of Community Trade Marks shall also contain the
following entries, each accompanied by the date of recording of such
entry:
(a) changes in the name, the address or the nationality of the
proprietor of a Community trade mark or in the State in which heis domiciled or has his seat or establishment;
(b) changes in the name or business address of the representative,
other than a representative falling within Article 88 (3), firstsentence, of the Regulation;
(c) when a new representative is appointed, the name and business
address of that representative;
(d) alterations of the mark pursuant to Article 48 of the Regulation
and corrections of mistakes and errors;
(e) notice of amendments to the regulations governing the use of the
collective mark pursuant to Article 69 of the Regulation;
(f) particulars of claims of seniority of an earlier registered trade mark
as referred to in Article 34 of the Regulation, pursuant to Article
35 of the Regulation;
(g) total or partial transfers pursuant to Article 17 of the Regulation;(h) the creation or transfer of a right in rem pursuant to Article 19 of
the Regulation and the nature of the right in rem ;
(i) levy of execution pursuant to Article 20 of the Regulation and
bankruptcy or like proceedings pursuant to Article 21 of the regu-lation;
(j) the grant or transfer of a licence pursuant to Article 22 of the
Regulation and, where applicable, the type of licence pursuant to
Rule 34;
(k) renewal of the registration pursuant to Article 47 of the Regula-
tion, the date from which it takes effect and any restrictionspursuant to Article 47 (4) of the Regulation;
(l) a record of the determination of the expiry of the registration
pursuant to Article 47 of the Regulation;
(m) a declaration of surrender by the proprietor of the mark pursuant to
Article 49 of the Regulation;
(n) the date of submission of an application pursuant to Article 55 of
the Regulation or of the filing of a counterclaim pursuant to1995R2868 — EN — 27.10.2003 — 001.001 — 38
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Article 96 (4) of the Regulation for revocation or for a declaration
of invalidity;
(o) the date and content of the decision on the application or counter-
claim pursuant to Article 56 (6) or the third sentence of Article 96
(6) of the Regulation;
(p) a record of the receipt of a request for conversion pursuant to
Article 109 (2) of the Regulation;
(q) the cancellation of the representative recorded pursuant to para-
graph 2 (e);
(r) the cancellation of the seniority of a national mark;(s) the modification or cancellation from the Register of the items
referred to in subparagraphs (h), (i) and (j);
(t) the replacement of the Community trade mark by an international
registration pursuant to Article 152 of the Regulation;
(u) the date and number of an international registration based on the
Community trade mark application which has been registered as aCommunity trade mark pursuant to Article 143(1) of the Regula-tion;
(v) the date and number of an international registration based on the
Community trade mark pursuant to Article 143(2) of the Regula-
tion.
(4) The President of the Office may determine that items other than
those referred to in paragraphs 2 and 3 shall be entered in the Register.
(5) The proprietor of the trade mark shall be notified of any change in
the Register.
(6) The Office shall provide certified or uncertified extracts from the
Register on request, on payment of a fee.
PartJ
Community Trade Marks Bulletin and Official Journal of the Office
Rule 85
CommunityTradeMarksBulletin
(1) TheCommunity Trade Marks Bulletin shall be published in peri-
odic editions. The Office may make available to the public editions ofthe Bulletin on CD-ROM or in any other machine-readable form.
(2) TheCommunityTradeMarksBulletin shall contain publications of
applications and of entries made in the Register as well as other parti-culars relating to applications or registrations of trade marks whosepublication is prescribed by the Regulation or by these Rules.
(3) Where particulars whose publication is prescribed in the Regula-
tion or in these Rules are published in the Community Trade Marks
Bulletin , the date of issue shown on the Bulletin shall be taken as the
date of publication of the particulars.
(4) To the extent that the entries regarding the registration of a trade
mark contain no changes as compared to the publication of the applica-
tion, the publication of such entries shall be made by way of areference to the particulars contained in the publication of the applica-tion.
(5) The elements of the application for a Community trade mark, as
set out in Article 26 (1) of the Regulation as well as any other informa-tion the publication of which is prescribed in Rule 12 shall, whereappropriate, be published in all the official languages of the Commu-
nity.
(6) The Office shall take into account any translation submitted by the
applicant. If the language of the application is not one of the languages1995R2868 — EN — 27.10.2003 — 001.001 — 39
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of the Office, the translation into the second language indicated by the
applicant shall be communicated to the applicant. The applicant maypropose changes to the translation within a period to be specified by
the Office. If the applicant does not respond within this period or if
the Office considers the proposed changes to be inappropriate, thetranslation proposed by the Office shall be published.
Rule 86
Official JournaloftheOffice
(1) The Official Journal of the Office shall be published in periodic
editions. The Office may make available to the public editions of theOfficial Journal on CD-ROM or in any other machine-readable form.
(2) The Official Journal shall be published in the languages of the
Office. The President of the Office may determine that certain itemsshall be published in all the official languages of the Community.
Rule 87
Databank
(1) The Office shall maintain an electronic data bank with the particu-
lars of applications for registration of trade marks and entries in the
Register. The Office may also make available the contents of this data
bank on CD-ROM or in any other machine-readable form.
(2) The President of the Office shall determine the conditions of
access to the data bank and the manner in which the contents of thisdata bank may be made available in machine-readable form, including
the charges for these acts.
PartK
Inspection of files and keeping of files
Rule 88
Partsofthefileexcludedfrominspection
The parts of the file which shall be excluded from inspection pursuant
to Article 84 (4) of the Regulation shall be:
(a) documents relating to exclusion or objection pursuant to Article
132 of the Regulation;
(b) draft decisions and opinions, and all other internal documents used
for the preparation of decisions and opinions;
(c) parts of the file which the party concerned showed a special
interest in keeping confidential before the application for inspectionof the files was made, unless inspection of such part of the file is
justified by overriding legitimate interests of the party seeking
inspection.
Rule 89
Procedures fortheinspectionoffiles
(1) Inspection of the files of Community trade mark applications and
of registered Community trade marks shall either be of the originaldocument, or of copies thereof, or of technical means of storage if thefiles are stored in this way. The means of inspection shall be deter-
mined by the President of the Office. The request for inspection of
the files shall not be deemed to have been made until the required feehas been paid.
(2) Where inspection of the files of a Community trade mark applica-
tion is requested, the request shall contain an indication and evidence
to the effect that the applicant
(a) has consented to the inspection; or1995R2868 — EN — 27.10.2003 — 001.001 — 40
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(b) has stated that after the trade mark has been registered he will
invoke the rights under it against the party requesting the inspec-tion.
(3) Inspection of the files shall take place on the premises of the
Office.
(4) On request, inspection of the files shall be effected by means of
issuing copies of file documents. Such copies shall incur fees.
(5) The office shall issue on request certified or uncertified copies of
the application for a Community trade mark or of those file documentsof which copies may be issued pursuantt o paragraph 4 upon paymentof a fee.
(6) The files kept by the Office relating to international registrations
designating the European Community may be inspected on request asfrom the date of publication referred to in Article 147(1) of the Regu-lation, under the conditions laid down in paragraphs (1), (3) and (4)and subjectt o Rule 88.
Rule 90
Communicationofinformationcontainedinthefiles
Subject to the restrictions provided for in Article 84 of the Regulation
and Rule 88, the Office may, upon request, communicate information
from any file of a Community trade mark applied for or of a registeredCommunity trade mark, subject to payment of a fee. However, theOffice may require the exercise of the option to obtain inspection ofthe file itself should it deem this to be appropriate in view of the quan-
tity of information to be supplied.
Rule 91
Keepingoffiles
(1) The Office shall keep the files relating to Community trade mark
applications and registered Community trade marks for at least fiveyears from the end of the year in which:
(a) the application is rejected or withdrawn or is deemed to be with-
drawn;
(b) the registration of the Community trade mark expires completely
pursuant to Article 47 of the Regulation;
(c) the complete surrender of the Community trade mark is registered
pursuant to Article 49 of the Regulation;
(d) the Community trade mark is completely removed from the
Register pursuant to Article 56 (6) or Article 96 (6) of the Regula-
tion.
(2) The President of the Office shall determine the form in which the
files shall be kept.
PartL
Administrative cooperation
Rule 92
Exchange of information and communications between the Office
andtheauthoritiesoftheMember States
(1) The Office and the central industrial property offices of the
Member States shall, upon request, communicate to each other relevant
information about the filing of applications for Community trade marksor national marks and about proceedings relating to such applicationsand the marks registered as a result thereof. Such communications shallnot be subject to the restrictions provided for in Article 84 of the Regu-lation.1995R2868 — EN — 27.10.2003 — 001.001 — 41
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(2) Communications between the Office and the courts or authorities
of the Member States which arise out of the application of the Regula-tion or these Rules shall be effected directly between these authorities.
Such communication may also be effected through the central indus-
trial property offices of the Member States.
(3) Expenditure in respect of communications under paragraphs 1 and
2 shall be chargeable to the authority making the communications,which shall be exemptfrom fees.
Rule 93
Inspection of files by or via courts or authorities of the Member
States
(1) Inspection of files relating to Community trade marks applied for
or registered Community trade marks by courts or authorities of theMember States be of the original documents or of copies thereof, other-wise Rule 89 shall notapply.
(2) Courts or Public Prosecutors' Offices of the Member States may,
in the course of proceedings before them, open files or copies thereoftransmitted by the Office to inspection by third parties. Such inspectionshall be subject to Article 84 of the Regulation. The Office shall not
charge any fee for such inspection.
(3) The Office shall, at the time of transmission of the files or copies
thereof to the courts or Public Prosecutors' Offices of the Member
States, indicate the restrictions to which the inspection of files relatingto Community trade marks applied for or registered Community trademarks is subject pursuant to Article 84 of the Regulation and Rule 88.
PartM
Costs
Rule 94
Apportionmentandfixingofcosts
(1) Apportionment of costs pursuant to Article 81 (1) and (2) of the
Regulation shall be dealt with in the decision on the opposition, thedecision on the application for revocation or for a declaration of inva-lidity of a Community trade mark, or the decision on the appeal.
(2) Apportionment of costs pursuant to Article 81 (3) and (4) of the
Regulation shall be dealt with in a decision on costs by the Opposition
Division, the Cancellation Division or the Board of Appeal.
(3) A bill of costs, with supporting evidence, shall be attached to the
request for the fixing of costs provided for in the first sentence of
Article 81 (6) of the Regulation. The request shall be admissible onlyif the decision in respect of which the fixing of costs is required hasbecome final. Costs may be fixed once their credibility is established.
(4) The request provided for in the second sentence of Article 81 (6)
of the Regulation for a review of the decision of the registry on thefixing of costs, stating the reasons on which it is based, must be filed
at the Office within one month after the date of notification of the
awarding of costs. It shall not be deemed to be filed until the fee forreviewing the amount of the costs has been paid.
(5) The Opposition Division, the Cancellation Division or the Board
of Appeal, as the case may be, shall take a decision on the requestreferred to in paragraph 4 without oral proceedings.
(6) The fees to be borne by the losing party pursuant to Article 81 (1)
of the Regulation shall be limited to the fees incurred by the otherparty for opposition, for an application for revocation or for a declara-tion of invalidity of the Community trade mark and for appeal.
(7) Cost essential to the proceedings and actually incurred by the
successful party shall be borne by the losing party in accordance with1995R2868 — EN — 27.10.2003 — 001.001 — 42
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Article 81 (1) of the Regulation on the basis of the following maximum
rates:
(a) travel expenses of one party for the outward and return journey
between the place of residence or the place of business and theplace where oral proceedings are held or where evidence is taken,as follows:
(i) the cost of the first-class rail-fare including usual transport
supplements where the total distance by rail does not exceed800 km;
(ii) the cost of the tourist-class air-fare where the total distance by
rail exceeds 800 km or the route includes a sea-crossing;
(b) subsistence expenses by one party equal to the daily subsistence
allowance for officials in grades A4 to A8 as laid down in Article13 of Annex VII to the Staff Regulations of Officials of theEuropean Communities;
(c) travel expenses of representatives within the meaning of Article 89
(1) of the Regulation and of witnesses and of experts, at the ratesprovided for in subparagraph (a);
(d) subsistence expenses of representatives within the meaning of
Article 89 (1) of the Regulation and of witnesses and experts, at
the rates provided for in subparagraph (b);
(e) costs entailed in the taking of evidence in the form of examination
of witnesses, opinions by experts or inspection
up to ECU 300 per proceedings;
f) cost of representation, within the meaning of Article 89 (1) of the
Regulation,
(i) of the opposing party in opposition proceedings:
up to ECU 250;
(ii) of the applicant in opposition proceedings:
up to ECU 250;
(iii) of the applicant in proceedings relating to revocation or inva-
lidity of a Community trade mark:
up to ECU 400;
(iv) of the proprietor of the trade mark in proceedings relating to
revocation or invalidity of a Community trade mark:
up to ECU 400;
(v) of the appellant in appeal proceedings:
up to ECU 500;
(vi) of the defendant in appeal proceedings:
up to ECU 500;
Where the taking of evidence in any of the abovementioned
proceedings involves the examination of witnesses, opinions byexperts or inspection, an additional amount shall be granted for
representation costs of up to ECU 600 per proceedings;
(g) where the successful party is represented by more than one repre-
sentative within the meaning of Article 89 (1) of the Regulation,the losing party shall bear the costs referred to in subparagraphs
(c), (d) and (f) for one such person only;
(h) the losing party shall not be obliged to reimburse the successful
party for any costs, expenses and fees other than those referred toin subparagraphs (a) to (g).1995R2868 — EN — 27.10.2003 — 001.001 — 43
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PartN
Languages
Rule 95
Applicationsanddeclarations
Without prejudice to Article 115 (5) of the Regulation,
(a) any application or declaration relating to a Community trade mark
application may be filed in the language used for filing the applica-tion for a Community trade mark or in the second languageindicated by the applicant in his application;
(b) any application or declaration relating to a registered Community
trade mark may be filed in one of the languages of the Office.
However, when the application is filed by using any of the formsprovided by the Office pursuant to Rule 83, such forms may beused in any of the official languages of the Community, providedthat the form is completed in one of the languages of the Office,
as far as textual elements are concerned.
Rule 96
Writtenproceedings
(1) Without prejudice to Article 115 (4) and (7) of the Regulation, and
unless otherwise provided for in these Rules, in written proceedings
before the Office any party may use any language of the Office. If thelanguage chosen is not the language of the proceedings, the party shallsupply a translation into that language within one month from the dateof the submission of the original document. Where the applicant for a
Community trade mark is the sole party to proceedings before the
Office and the language used for the filing of the application for theCommunity trade mark is not one of the languages of the Office, thetranslation may also be filed in the second language indicated by theapplicantin his applicat ion.
(2) Unless otherwise provided for in these Rules, documents to be
used in proceedings before the Office may be filed in any official
language of the Community. Where the language of such documents
is not the language of the proceedings the Office may require that atranslation be supplied, within a period specified by it, in that languageor, at the choice of the party to the proceeding, in any language of theOffice.
Rule 97
Oral proceedings
(1) Any party to oral proceedings before the Office may, in place of
the language of proceedings, use one of the other official languages of
the Community, on condition that he makes provision for interpretation
into the language of proceedings. Where the oral proceedings are heldin a proceeding concerning the application for registration of a trademark, the applicant may use either the language of the application orthe second language indicated by him.
(2) In oral proceedings concerning the application for registration of a
trade mark, the staff of the Office may use either the language of the
application or the second language indicated by the applicant. In allother oral proceedings, the staff of the Office may use, in place of thelanguage of the proceedings, one of the other languages of the Office,on condition that the party or parties to the proceedings agree to such
use.
(3) In the case of taking of evidence, any party to be heard, witness or
expert who is unable to express himself adequately in the language ofproceedings, may use any of the official languages of the Community.Should the taking of evidence be decided upon following a request bya party to the proceedings, parties to be heard, witnesses or expertswho express themselves in languages other than the language of1995R2868 — EN — 27.10.2003 — 001.001 — 44
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proceedings may be heard only if the party who made the request
makes provision for interpretation into that language. In proceedingsconcerning the application for registration of a trade mark, in place of
the language of the application, the second language indicated by the
applicant may be used. In any proceedings with only one party theOffice may on request of the party concerned permit derogations fromthe provisions in this paragraph.
(4) If the parties and Office so agree, any official language of the
Community may be used in oral proceedings.
(5) The Office shall, if necessary, make provision atit s own expense
for interpretation into the language of proceedings, or, where appro-
priate, into its other languages, unless this interpretation is the
responsibility of one of the parties to the proceedings.
(6) Statements by staff of the Office, by parties to the proceedings and
by witnesses and experts, made in one of the languages of the Office
during oral proceedings shall be entered in the minutes in the language
employed. Statements made in any other language shall be entered inthe language of proceedings. Amendments to the text of the applicationfor or the registration of a Community trade mark shall be entered inthe minutes in the language of proceedings.
Rule 98
Certification oftranslations
(1) When a translation of any document is to be filed, the Office may
require the filing, within a period to be specified by it, of a certificatethat the translation corresponds to the original text. Where the certifi-cate relates to the translation of a previous application pursuant toArticle 30 of the Regulation, such period shall not be less than three
months after the date of filing of the application. Where the certificate
is not filed within that period, the document shall be deemed not tohave been received.
(2) The President of the Office may determine the manner in which
translations are certified.
Rule 99
Legalauthenticityoftranslations
In the absence of evidence to the contrary, the Office may assume that
a translation corresponds to the relevant original text.
PartO
Organization of the Office
Rule 100
Allocationofduties
(1) The President of the Office shall determine the examiners and
their number, the members of the Opposition Divisions and Cancella-tion Divisions, and the members of the Administration of TradeMarks and Legal Division. He shall allocate duties to the examiners
and the Divisions.
(2) The President of the Office may provide that examiners may also
be members of the Opposition Divisions, Cancellation Divisions, andthe Administration of Trade Marks and Legal Division, and that
members of these Divisions may also be examiners.
(3) In addition to the responsibilities vested in them under the Regula-
tion, the President of the Office may allocate further duties to theexaminers and the members of the Opposition Divisions, Cancellation
Divisions and the Administration of Trade Marks and Legal Division.
(4) The President of the Office may entrust to other members of the
staff of the Office who are not examiners or members of any of theDivisions mentioned in paragraph 1 the execution of individual duties1995R2868 — EN — 27.10.2003 — 001.001 — 45
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falling to the examiners, Opposition Divisions, Cancellation Divisions
or the Administration of Trade Marks and Legal Division and invol-ving no special difficulties.
TITLE XII
RECIPROCITY
Rule 101
Publicationofreciprocity
(1) If necessary, the President of the Office shall request the Commis-
sion to enquire whether a State which is not party to the Paris
Convention or to the Agreement establishing the World Trade Organi-zation accords reciprocal treatment within the meaning of Article 5 (1)(d), Article 5 (3) and Article 29 (5) of the Regulation.
(2) If the Commission determines that reciprocal treatment in accor-
dance with paragraph 1 is accorded, it shall publish a communication
to this effect in the Official Journal of the European Communities .
(3) Article 5 (1) (d), Article 5 (3) and Article 29 (5) of the Regulation
shall take effect for the nationals of the States concerned from the dateof publication in the Official Journal of the European Communities of
the communication referred to in paragraph 2, unless the communica-
tions states an earlier date from which it is applicable. They shallcease to be effective from the date of publication in the Official
Journal of the European Communities of a communication of the
Commission to the effect that reciprocal treatment is no longeraccorded, unless the communication states an earlier date from which
itis applicable.
(4) Communications referred to in paragraphs 2 and 3 shall also be
published in the Official Journal of the Office.
TITLE XIII
PROCEDURESCONCERNINGTHE INTERNATIONALREGIS-
TRATIONOFMARKS
Parta
International registration on the basis of applications for a commu-
nity trade mark and of community trade marks
Rule 102
Filingofaninternationalapplication
1. The form provided by the Office for the filing of an international
application, as referred to in Article 142(1) of the Regulation, shall be
an adaptation of the official form provided by the International Bureau
of the World Intellectual Property Organisation (hereinafter ‘the Inter-national Bureau’) having the same format but including such additionalindications and elements as are required or may be appropriatepursuant to these Rules. Applicants may also use the official formprovided by the International Bureau.
2. Paragraph 1 shall apply mutatis mutandis for the form for a request
for territorial extension subsequent to the international registrationpursuant to Article 144 of the Regulation.
3. The Office shall inform the applicant filing the international appli-
cation of the date on which the documents making up the international
application are received by the Office.
4. Where the international application is filed in an official language
of the European Community other than a language allowed under theMadrid Protocol for the filing of an international application and wherethe international application does not contain, or is not accompanied1995R2868 — EN — 27.10.2003 — 001.001 — 46
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by, a translation of the list of goods and services and of any other text
matter forming part of the international application in the language inwhich the application is to be submitted to the International Bureau
pursuant to Article 142(2) of the Regulation, the applicant shall
authorise the Office to include in the international application a transla-tion of the said list of goods and services and other text matter in thelanguage in which the application is to be submitted to the Interna-tional Bureau pursuant to Article 142(2) of the Regulation. Where the
translation has not yet been established in the course of the registration
procedure for the Community trade mark application on which theinternational application is based, the Office shall without delayarrange for the translation.
Rule 103
Examinationofinternationalapplications
1. Where the Office receives an international application and the fee
referred to in Article 142(5) of the Regulation for the international
application has not been paid, the Office shall inform the applicantthat the international application will be deemed not to have been fileduntil the fee has been paid.
2. Where the examination of the international application reveals any
of the following deficiencies, the Office shall invite the applicant to
remedy those deficiencies within such period as it may specify:
(a) the international application is not filed on one of the forms
referred to in Rule 102(1), and does not contain all the indications
and information required by that form;
(b) the list of goods and services contained in the international applica-
tion is not covered by the list of goods and services appearing in
the basic Community trade mark application or basic Community
trade mark;
(c) the mark which is subject to the international application is not
identical to the mark as appearing in the basic Community trade
mark application or basic Community trade mark;
(d) any indication in the international application as to the mark, other
than a disclaimer pursuant to Article 38(2) of the Regulation or a
colour claim, does not also appear in the basic Community trade
mark application or basic Community trade mark;
(e) if colour is claimed in the international application as a distinctive
feature of the mark, the basic Community trade mark application or
basic Community trade mark is not in the same colour or colours;
or
(f) according to the indications made in the international form, the
applicant is not eligible to file an international application through
the Office in accordance with Article 2(1)(ii) of the MadridProtocol,
3. Where the applicant has failed to authorise the Office to include a
translation as provided for in Rule 102(4), or where it is otherwiseunclear on which list of goods and services the international application
shall be based, the Office shall invite the applicant to make the
required indications within such a period as it may specify.
4. If the deficiencies referred to in paragraph 2 are not remedied or
the required indications referred to in paragraph 3 are not made withinthe time limit fixed by the Office, the Office will take a decision
refusing to forward the international application to the International
Bureau.
Rule 104
Forwardingoftheinternationalapplication
The Office shall forward the international application to the Interna-
tional Bureau along with the certification provided for under Article3(1) of the Madrid Protocol as soon as the international application1995R2868 — EN — 27.10.2003 — 001.001 — 47
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meets the requirements laid down in Rules 102 and 103 as well as in
Articles 141 and 142 of the Regulation.
Rule 105
Subsequentdesignations
1. The Office shall invite the applicant requesting the territorial exten-
sion subsequent to the international registration, as referred to inArticle 144 of the Regulation, to remedy any of the following deficien-
cies within such time limit as it may specify:
(a) the request for territorial extension is not filed on one of the form
referred to Rule 102(1) and (2) and does not contain all the indica-tions and information required by that form;
(b) the request for territorial extension does not indicate the number of
the international registration to which it relates;
(c) the list of goods and services is not covered by the list of goods
and services contained in the international registration; or
(d) according to the indications made in the international form, the
applicant requesting the territorial extension is not entitled tomake a designation subsequent to the international registrationthrough the Office in accordance with Articles 2(1)(ii) and Article
3 ter (2) of the Madrid Protocol,
2. If the deficiencies referred to in paragraph 1 are not remedied
within the time limit fixed by the Office, the Office will take a decisionrefusing to forward the request for territorial extension made subse-quently to the international registration to the International Bureau.
3. The Office shall inform the applicant requesting the territorial
extension of the date on which the request for territorial extension is
received by the Office.
4. The Office shall forward the request for territorial extension made
subsequently to the international registration to the International
Bureau as soon as the deficiencies referred to in paragraph 1 of thisRule have been remedied and the requirements of Article 144 of theRegulation are complied with.
Rule 106
Dependence of the international registration on the basic applica-
tionorregistration
1. The Office shall notify the International Bureau where, within a
period of five years from the date of the international registration,
(a) the Community trade mark application on which the international
registration was based has been withdrawn, is deemed to be with-drawn or has been refused by a final decision;
(b) the Community trade mark on which the international registration
was based has ceased to have effect because it is surrendered, has
notbeen renewed, has been revoked, or has been declared invalidby the Office by a final decision or, on the basis of a counterclaimin infringement proceedings, by a Community trade mark court;
(c) the Community trade mark application or the Community trade
mark on which the international registration was based has beendivided into two applications or registrations,
2. The notification referred to in paragraph 1 shall include:
(a) the number of the international registration;
(b) the name of the holder of the international registration;
(c) the facts and decisions affecting the basic application or registra-
tion, as well as the effective date of those facts and decisions;
(d) in the case referred to in paragraph 1(a) or (b), the request to
cancel the international registration;
(e) where the act referred to in paragraph 1(a) or (b) affects the basic
application or basic registration only with respect to some of the1995R2868 — EN — 27.10.2003 — 001.001 — 48
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goods and services, those goods and services, or the goods and
services which are notaffect ed;
(f) in the case referred to in paragraph 1(c), the number of each
Community trade mark application or registration concerned.
3. The Office shall notify the International Bureau where, at the end
of a period of five years from the date of the international registration,
(a) an appeal is pending against a decision of an examiner to refuse the
Community trade mark application on which the internationalregistration was based pursuant to Article 38 of the Regulation;
(b) an opposition is pending against the Community trade mark appli-
cation on which the international registration was based;
(c) an application for revocation or an application for declaration of
invalidity is pending against the Community trade mark on whichthe international registration was based;
(d) mention has been made in the Register of Community Trade Marks
that a counterclaim for revocation or for declaration of invalidityhas been filed before a Community trade mark court against theCommunity trade mark on which the international registration wasbased, but no mention has yet been made in the Register of the
decision of the Community trade mark court on the counterclaim;
4. Once the proceedings referred to in paragraph 3 have been
concluded by means of a final decision or an entry in the register, theOffice shall notify the International Bureau accordingly with paragraph2.
5. Any reference in paragraphs 1 and 3 to a Community trade mark on
which the international registration was based shall include a Commu-nity trade mark registration resulting from a Community trade markapplication on which the international application was based.
Rule 107
Renewals
The international registration shall be renewed directly at the Interna-
tional Bureau.
Partb
International registrations designating the European Community
Rule 108
Seniorityclaimed inaninternationalapplication
1. Where the seniority of one or more earlier registered trade marks,
as referred to in Article 34 of the Regulation, has been claimed in an
international application pursuant to Article 148(1) of the Regulation,the holder shall, within three months from the date on which the Inter-national Bureau notifies the international registration to the Office,submit a copy of the relevant registration to the Office. The copy
must be certified by the competent authority to be an exact copy of
the relevant registration.
2. Where the holder of the international registration is obliged to be
represented in proceedings before the Office pursuant to Article 88(2)of the Regulation, the communication as referred to in paragraph 1shall contain the appointment of a representative within the meaning
of Article 89(1) of the Regulation.
3. The President of the Office may determine that the evidence to be
provided by the holder may consist of less than is required under para-graph 1, provided that the information required is available to theOffice from other sources.1995R2868 — EN — 27.10.2003 — 001.001 — 49
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Rule 109
Examinationofseniorityclaims
1. Where the Office finds that the seniority claim under Rule 108(1)
does not comply with Article 34 of the Regulation, or does not complywith the other requirements of Rule 108, it shall invite the holder to
remedy the deficiencies within such period as it may specify.
2. If the requirements referred to in paragraph 1 are not satisfied
within the time limit, the right of seniority in respect of that interna-
tional registration shall be lost. If the deficiencies concern only some
of the goods and services, the right of seniority shall be lost only inso far as those goods and services are concerned.
3. The Office shall inform the International Bureau of any declaration
of a loss of the right of seniority pursuant to paragraph 2. It shall also
inform the International Bureau of any withdrawal or restriction of theseniority claim.
4. The Office shall inform the Benelux Trade Mark Office or the
central industrial property office of the Member State concerned of
the claiming of seniority, unless the right of seniority is declared lostpursuantt o paragraph 2.
Rule 110
Seniorityclaimedbefore theOffice
1. The holder of an international registration designating the European
Community may claim, directly before the Office, the seniority of one
or more earlier registered trade marks as referred to in Article 35 of the
Regulation as from the date on which the Office has, pursuant toArticle 147(2) of the Regulation, published the fact that no refusal forprotection of the international registration designating the EuropeanCommunity has been notified or if any such refusal has been with-
drawn, as provided for in Article 148(2) of the Regulation.
2. Where seniority is claimed before the Office before the date
referred to in paragraph 1, the seniority claim shall be deemed to havebeen received by the Office on the date referred to in paragraph 1.
3. An application to claim seniority pursuant to Article 148(2) of the
Regulation and paragraph 1 shall contain:
(a) an indication that the seniority claim is made for an international
registration under the Madrid Protocol;
(b) the registration number of the international registration;(c) the name and address of the holder of the international registration
in accordance with Rule 1(1)(b);
(d) where the holder has appointed a representative, the name and the
business address of the representative in accordance with Rule1(1)(e);
(e) an indication of the Member State or Member States in or for
which the earlier mark is registered, the date from which the rele-
vant registration was effective, the number of the relevant
registration, and the goods and services for which the earlier markis registered;
(f) where seniority is claimed for less than all the goods and services
contained in the earlier registration, the indication of the goods andservices in respectof which seniorit y is claimed;
(g) a copy of the relevant registration; certified by the competent
authority as being an exact copy;
(h) where the holder of the international registration is obliged to be
represented in proceedings before the Office pursuant to Article
88(2) of the Regulation, the appointment of a representative within
the meaning of Article 89(1) of the Regulation.
4. If the requirements governing the claiming of seniority referred to
in paragraph 3 are not fulfilled, the Office shall invite the holder of the1995R2868 — EN — 27.10.2003 — 001.001 — 50
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international registration to remedy the deficiencies. If the deficiencies
are not remedied within a period specified by the Office, the Officeshall reject the application.
5. Where the Office has accepted the application to claim seniority, it
shall inform the International Bureau accordingly by communicating
(a) the number of the international registration concerned,(b) the name of the Member state or Member States in or for which the
earlier mark is registered,
(c) the number of the relevant registration, and(d) the date from which the relevant registration was effective.
6. The Office shall inform the Benelux Trade Mark Office or the
central industrial property office of the Member State concerned of
the application to claim seniority once it has been accepted by theOffice.
7. The President of the Office may determine that the evidence to be
provided by the holder of the international registration may consist ofless than is required under paragraph 1(g), provided that the informa-tion required is available to the Office from other sources.
Rule 111
Decisionsaffecting seniorityclaims
Where a seniority claim which has been made in accordance with
Article 148(1) of the Regulation, or which has been communicatedpursuant to Rule 110(5), has been withdrawn or cancelled by the
Office, the Office shall inform the International Bureau accordingly.
Rule 112
Examinationastoabsolutegroundsforrefusal
1. Where, in the course of the examination pursuant to Article 149(1)
of the Regulation, the Office finds that pursuant to Article 38(1) of the
Regulation, the trade mark which is subject to the territorial extensionto the European Community is ineligible for protection for all or anypart of the goods or services for which it has been registered by theInternational Bureau, the Office shall issue an ex officio notificationof provisional refusal pursuant to Article 5(1), and (2) of the Madrid
Protocol and Rule 17(1) of the Common Regulations to the Interna-
tional Bureau.
Where the holder of the international registration is obliged to be repre-
sented in proceedings before the Office pursuant to Article 88(1) of theRegulation, the notification shall contain an invitation to appoint arepresentative within the meaning of Article 89(1) of the Regulation.
The notification of provisional refusal shall state the reasons on which
it is based, and shall specify a time limit within which the holder of theinternational registration may submit his observations and, if appro-priate, must appoint a representative.
The time limit shall start on the day on which the Office issues the
provisional refusal.
2. Where, in the course of the examination pursuant to Article 149(1)
of the Regulation, the Office finds that pursuant to Article 38(2) of theRegulation, registration of the mark must be subject to the statement bythe holder of the international registration that he disclaims any exclu-
sive rights in a non-distinctive element of the mark, the notification of
ex officio refusal of provisional protection pursuant to paragraph 1shall state that the international registration will be refused protectionif the relevant statement is not submitted within the specified timelimit.
3. Where, in the course of the examination pursuant to Article 149(1)
of the Regulation, the Office finds that the international registrationdesignating the European Community does not contain the indicationof a second language pursuant to Rule 126 of the present Regulation1995R2868 — EN — 27.10.2003 — 001.001 — 51
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and Rule 9(5)(g) (ii) of the Common Regulations, the Office shall issue
an ex officio notification of provisional refusal pursuant to Article 5(1),and (2) of the Madrid Protocol and Rule 17(1) of the Common Regula-
tions to the International Bureau. Paragraph 1, second, third and fourth
sentence, shall apply.
4. Where the holder of the international registration fails to overcome
the ground for refusing protection within the time limit or to comply
with the condition laid down in paragraph 2 or, if appropriate, to
appoint a representative or to indicate a second language, the Officewill take a decision refusing the protection in whole or for a part ofthe goods and services for which the international registration is regis-tered. The decision shall be subject to appeal in accordance withArticle 57 to 63 of the Regulation.
5. Where, until the start of the opposition period referred to in Article
151(2) of the Regulation, the Office has not issued an ex officio notifi-cation of provisional refusal pursuant to paragraph 1, the Office shallsend a statement of grant of protection to the International Bureau,
indicating that the examination of absolute grounds of refusal pursuant
to Article 38 of the Regulation has been completed but that the inter-national registration is still subject to oppositions or observations ofthird parties.
Rule 113
Notification of ex officio provisional refusals to the International
Bureau
1. The notification of ex officio provisional refusal of protection of
the international registration in whole or in part, pursuant to Rule 112,
shall be sent to the International Bureau and shall contain:
(a) the number of the international registration;
(b) all the grounds on which the provisional refusal is based together
with a reference to the corresponding provisions of the Regulation;
(c) the indication that the provisional refusal of protection will be
confirmed by a decision of the Office if the holder of the interna-tional registration does not overcome the grounds for refusal bysubmitting his observations to the Office within a time limit of
two months from the date on which the Offices issues the provi-
sional refusal;
(d) if the provisional refusal relates to only part of the goods and
services, the indication of those goods and services.
2. In respect of each notification of ex officio provisional refusal
issued pursuant to paragraph 1, and provided that the time limit forentering an opposition has expired and that no provisional refusal based
on an opposition has been issued pursuant to Rule 115(1), the Office
shall inform the International Bureau as follows:
(a) where as the result of the proceedings before the Office the provi-
sional refusal has been withdrawn, the fact that the mark isprotected in the European Community;
(b) where a decision to refuse protection of the mark has become final,
if applicable, following an appeal under Article 57 of the Regula-tion or an action under Article 63 of the Regulation, the Officeshall inform the International Bureau that protection of the markis refused in the European Community;
(c) where the refusal pursuant to subparagraph (a) or (b) concerns only
part of the goods and services, the goods and services for which themark is protected in the European Community.1995R2868 — EN — 27.10.2003 — 001.001 — 52
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Rule 114
Oppositionproceedings
1. Where opposition is entered against an international registration
designating the European Community pursuant to Article 151 of the
Regulation, the notice of opposition shall contain:
(a) the number of the international registration against which opposi-
tion is entered;
(b) an indication of the goods and services listed in the international
registration against which opposition is entered;
(c) the name of the holder of the international registration;
(d) the indications and elements referred to in Rule 15(2)(b), (c) and
(d), and (3).
2. Rules 15(1) and 16 to 22 shall apply, subject to the following:
(a) any reference to an application for registration of the Community
trade mark shall be read as a reference to an international registra-tion;
(b) any reference to a withdrawal of the application for registration of
the Community trade mark shall be read as a reference to therenunciation of the international registration in respect of theEuropean Community;
(c) any reference to the applicant shall be read as a reference to the
holder of the international registration.
3. If the notice of opposition is filed before the expiry of the period of
six months referred to in Article 151(2) of the Regulation, the notice ofopposition shall be deemed to have been filed on the first dayfollowing the expiry of the period of six months. The application of
Article 42(3) second sentence of the Regulation shall remain unaf-
fected.
4. Where the holder of the international registration is obliged to be
represented in proceedings before the Office pursuant to Article 88(2)of the Regulation, and where he has not already appointed a represen-tative within the meaning of Article 89(1) of the Regulation, the
communication of the opposition to the holder of the international
registration pursuant to Rule 19 shall contain the invitation to appointa representative within the meaning of Article 89(1) of the Regulationwithin a period of two months from the date of notification of thecommunication.
Where the holder of the international registration fails to appoint a
representative within this period, the Office will take a decision
refusing the protection of the international registration.
5. The opposition procedure shall be stayed if an ex officio provi-
sional refusal of protection is or has been issued pursuant to Rule112. When the ex officio provisional refusal leads to a decision torefuse protection of the mark which has become final, the Office shall
not proceed to judgment and refund the opposition fee, and no decision
on the apportionment of costs shall be taken.
Rule 115
Notification ofprovisionalrefusalsbasedonanopposition
1. When an opposition against an international registration is entered
at the Office pursuant to Article 151(2) of the Regulation, or is deemedto have been entered pursuant to Rule 114(3), the Office shall issue a
notification of provisional refusal of protection based on an opposition
to the International Bureau.
2. The notification of provisional refusal of protection based on an
opposition shall contain:
(a) the number of the international registration;1995R2868 — EN — 27.10.2003 — 001.001 — 53
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(b) the indication that the refusal is based on the fact that an opposition
has been filed, together with a reference to the provisions of Article8 of the Regulation on which the opposition relies;
(c) the name and the address of the opposing party.
3. Where the opposition is based on a trademark application or regis-
tration, the notification referred to in paragraph 2 shall contain thefollowing indications:
(i) the filing date, the registration date and, if any, the priority date,
(ii) the filing number and, if different, the registration number,(iii) the name and address of the owner,(iv) a reproduction of the mark, and
(v) the list of goods and services on which the opposition is based.
4. If the provisional refusal relates to only part of the goods and
services, the notification referred to in paragraph 2 shall indicate thosegoods and services.
5. The Office shall inform the International Bureau as follows:
(a) where as the result of the opposition proceeding the provisional
refusal has been withdrawn, the fact that the mark is protected inthe European Community;
(b) where a decision to refuse protection of the mark has become final,
if applicable, following an appeal under Article 57 of the Regula-tion or an action under Article 63 of the Regulation, the fact thatprotection of the mark is refused in the European Community;
(c) where the refusal pursuant to subparagraph (a) or (b) concerns only
part of the goods and services, the goods and services for which themark is protected in the European Community.
6. Where for one and the same international registration, more than
one provisional refusal has been issued pursuantt o Rule 112(1), (2) orparagraph 1 of this Rule, the communication referred to in paragraph 5of this Rule shall relate to the total or partial refusal of protection of
the mark as it results from all the procedures under Article 149 and
151 of the Regulation.
Rule 116
Statementofgrantofprotection
1. Where the Office has not issued an ex officio notification of provi-
sional refusal pursuant to Rule 112 and no opposition has beenreceived by the Office within the opposition period referred to inArticle 151(2) of the Regulation and the Office has not issued an ex
officio notification of provisional refusal as a result of the third party
observations filed, the Office shall send a further statement of grant ofprotection to the International Bureau, indicating that the mark isprotected in the European Community.
2. For the purposes of Article 146(2) of the Regulation, the further
statement of grant of protection referred to in paragraph 1 shall have
the same effect as a statement by the Office that a notice of refusalhas been withdrawn.
Rule 117
NotificationofinvalidationtotheInternationalBureau
1. Where, pursuant to Article 56 or 96 and Article 153 of the Regula-
tion, the effects of an international registration designating theEuropean Community have been declared invalid and where that deci-
sion has become final, the Office shall notify the International Bureau
accordingly.
2. The notification shall be dated and shall contain:
(a) the indication that the invalidation has been pronounced by the
Office, or the indication of the Community trade mark court whichhas pronounced the invalidation;1995R2868 — EN — 27.10.2003 — 001.001 — 54
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(b) the indication whether invalidation has been pronounced in the
form of revocation of the rights of the holder of the internationalregistration, of a declaration that the trade mark is invalid on abso-
lute grounds, or of a declaration that the trade mark is invalid on
relative grounds;
(c) the indication of the fact that the invalidation is no longer subject
to appeal;
(d) the number of the international registration;
(e) the name of the holder of the international registration;
(f) if the invalidation does not concern all the goods and services,
those goods and services in respect of which the invalidation hasbeen pronounced or those in respect of which the invalidation has
notbeen pronounced;
(g) the date on which the invalidation has been pronounced, together
with the indication whether the invalidation is effective as of that
date or ex tunc.
Rule 118
Legaleffect ofregistrationoftransfers
For the purposes of Article 17, and also in conjunction with Article
23(1) or (2) and Article 24, of the Regulation, recordal of a change in
the ownership of the international registration on the InternationalRegister shall replace the entry of a transfer in the Register of Commu-nity Trade Marks.
Rule 119
Legaleffect ofregistrationoflicensesandotherrights
For the purposes of Articles 19, 20, 21 and 22, and also in conjunction
with Article 23 and Article 24, of the Regulation, recordal of a licenseor a restriction of the holder's right of disposal in respect of the inter-
national registration on the International Register shall replace the
registration of a license, a right in rem, a levy of execution or insol-vency proceedings in the Register of Community Trade Marks.
Rule 120
Examination of requests for registrations of transfers, licenses or
restrictions oftheholder'srightofdisposal
1. Where a request to register a change in ownership, a license or a
restriction of the holder's right of disposal is filed through the Officeby a person other than the holder of the international registration, the
Office shall refuse to transmit the request to the International Bureau
if the request is not accompanied by proof of the transfer, license orthe restriction of the right of disposal.
2. Where a request to register the amendment or cancellation of a
license or the removal of a restriction of the holder's right of disposal
is filed through the Office by the holder of the international registra-
tion, the Office will take a decision refusing to transmit the request tothe International Bureau if the request is not accompanied by proof thatthe license no longer exists or has been amended, or that the restrictionof the right of disposal has been removed.
Rule 121
Collective marks
1. Where the international registration indicates that it is based on a
basic application or basic registration which relates to a collective
mark, certification mark or guarantee mark, the international registra-
tion designating the European Community shall be dealt with as aCommunity collective mark.
2. The holder of the international registration shall submit the regula-
tions governing use of the mark as provided for in Article 65 of the1995R2868 — EN — 27.10.2003 — 001.001 — 55
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Regulation and Rule 43 directly to the Office within a period of two
months from the date on which the International Bureau notifies theinternational registration to the Office.
3. A notification of ex officio provisional refusal pursuant to Rule 112
shall also be issued:
(a) if one of the grounds for refusal foreseen in Article 66(1) or (2), in
conjunction paragraph 3 of that Article, of the Regulation exists;
(b) where the regulations governing use of the mark have not been
submitted in accordance with paragraph 2.
Rules 112(2), (3) and 113 shall apply.
4. Notice of amendments to the regulations governing use of the mark
pursuant to Article 69 of the Regulation shall be published in the
Community Trade Marks Bulletin.
Rule 122
Conversion of an international registration into a national trade
markapplication
1. An application for conversion of an international registration desig-
nating the European Community into a national trade mark application
pursuant to Articles 108 and 154 of the Regulation shall contain:
(a) the registration number of the international registration;(b) the date of the international registration or the date of the designa-
tion of the European Community made subsequently to the
international registration pursuant to Article 3 ter (2) of the Madrid
Protocol and, where applicable, particulars of the claim to priorityfor the international registration pursuant to Article 154(2) of theRegulation and particulars of the claim to seniority pursuant toArticles 34, 35 and 148 of the Regulation;
(c) the indications and elements referred to in Rule 44(1) (a), (b), (f)
and (g) and, where applicable, (h) and (k), and (2).
2. Where conversion is requested pursuant to Article 108(5) and 154
of the Regulation following a failure to renew the international registra-tion designating the European Community, the application referred toin paragraph 1 shall contain an indication to that effect, and the dateon which the protection has expired. The period of three monthsprovided for in Article 108(5) of the Regulation shall begin to run on
the day following the last day on which the renewal may still be
effected pursuant to Article 7 (4) of the Madrid Protocol;
3. Rules 45, 46(2) (a) and (c), and 47 shall apply mutatis mutandis .
Rule 123
Conversion of an international registration into a designation of a
Member State party to the Madrid Protocol or the Madrid Agree-
ment
1. An application for conversion of an international registration desig-
nating the European Community into a designation of a Member State
party to the Madrid Protocol or the Madrid Agreement pursuant toArticle 154 of the Regulation shall contain the indications and elementsreferred to in Rule 122(1) and (2).
2. Rule 45 shall apply mutatis mutandis . The Office shall also reject
the application for conversion where the conditions to designate theMember State which is a party to the Madrid Protocol or to the Madrid
Agreement were not fulfilled both on the date of the designation of the
European Community and the date on which the application forconversion was received or, pursuant to the second sentence of Article109(1) of the Regulation, is deemed to have been received by theOffice.
3. Rule 46(2)(a) and (c) shall apply mutatis mutandis . The publication
of the application for conversion shall also contain the indication thatconversion has been requested into a designation of a Member State1995R2868 — EN — 27.10.2003 — 001.001 — 56
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party to the Madrid Protocol or the Madrid Agreement pursuant to
Article 154 of the Regulation.
4. Where the application for conversion complies with the require-
ments of the Regulation and these Rules, the Office shall transmit itwithout delay to the International Bureau. The Office shall inform theholder of the international registration of the date of transmission.
Rule 124
Transformation of an international registration designating the
EuropeanCommunityintoaCommunitytrademarkapplication
1. In order to be considered a transformation of an international regis-
tration which has been cancelled at the request of the office of origin
by the International Bureau pursuant to Article 9 quinquies of theMadrid Protocol and in accordance with Article 156 of the Regulation,a Community trade mark application must contain an indication to thateffect. That indication must be made on filing of the application.
2. The application shall contain, in addition to the indications and
elements referred to in Rule 1,
(a) the indication of the number of the international registration which
has been cancelled;
(b) the date on which the international registration was cancelled by
the International Bureau;
(c) as appropriate, the date of the international registration pursuant to
Article 3(4) of the Madrid Protocol or the date of recordal of the
territorial extension to the European Community made subse-quently to the international registration pursuant to Article 3 ter(2) of the Madrid Protocol;
(d) where applicable, the date of priority claimed in the international
application as entered in the International Register kept by the
International Bureau.
3. Where, in the course of the examination in accordance with Rule
9(3), the Office finds that the application was not filed within three
months from the date on which the international registration was
cancelled by the International Bureau; or the goods and services forwhich the Community trade mark is to be registered are not containedin the list of goods and services for which the international registrationwas registered in respect of the European Community, the Office shallinvite the applicant to remedy the deficiencies noted and in particular
to restrict the list of goods and services to those goods and services
which have been contained in the list of goods and services for whichthe international registration was registered in respect of the EuropeanCommunity, within such a period as it may specify.
4. If the deficiencies referred to in paragraph 3 are not remedied
within the time limit, the right to the date of the international registra-tion or to the date of the territorial extension and, if any, to the date ofthe priority of the international registration shall be lost.
Partc
Communications
Rule 125
Communications with the International Bureau and electronic
forms
1. Communications with the International Bureau shall be in a manner
and format agreed on between the International Bureau and the Office,
preferably by electronic means.
2. Any reference to forms shall be construed as including forms made
available in electronic format.1995R2868 — EN — 27.10.2003 — 001.001 — 57
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Rule 126
Useoflanguages
For the purposes of applying the Regulation and these Rules to interna-
tional registrations designating the European Community, the language
of filing of the international application shall be the language of the
proceedings within the meaning of Article 115(4) of the Regulation,and the second language indicated in the international application shallbe the second language within the meaning of Article 115(3) of theRegulation.
Article 2
TransitionalProvisions
(1) Any application for registration of a Community trade mark filed
within three months prior to the date determined pursuant to Article
143 (3) of the Regulation shall be marked by the Office with the filingdate determined pursuant to that provision and with the actual date ofreceipt of the application.
(2) With regard to the application, the priority period of six months
provided for in Articles 29 and 33 of the Regulation shall be calculatedfrom the date determined pursuant to Article 143 (3) of the Regulation.
(3) The Office may issue a receipt to the applicant prior to the date
determined pursuant to Article 143 (3) of the Regulation.
(4) The Office may examine the applications prior to the date deter-
mined pursuant to Article 143 (3) of the Regulation and communicatewith the applicant with a view to remedying any deficiencies prior tothat date. Any decisions with regard to such applications may be takenonly after that date.
(5) With regard to the application, the Office shall not carry out any
search pursuant to Article 39 (1) of the Regulation, regardless of
whether or not a priority was claimed for such application pursuant toArticles 29 or 33 of the Regulation.
(6) Where the date of receipt of an application for the registration of
a Community trade mark by the Office, by the central industrial prop-erty office of a Member State or by the Benelux Trade Mark Office isbefore the commencement of the three months period specified in
Article 143 (4) of the Regulation the application shall be deemed not
to have been filed. The application shall be informed accordingly andthe application shall be sent back to him.
Article 3
Entryintoforce
This Regulation shall enter into force on the seventh day following that
of its publication in the Official Journal ofthe European Communities .
This Regulation shall be binding in its entirety and directly applicable
in all Member States.1995R2868 — EN — 27.10.2003 — 001.001 — 58
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