2015R2424 — EN — 24.12.2015 — 000.004

This text is meant purely as a documentation tool and has no legal effect. The Union's institutions do not assume any liability for its contents. The authentic versions of the relevant acts, including their preambles, are those published in the Official Journal of the European Union and available in EUR-Lex. Those official texts are directly accessible through the links embedded in this document

►B REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Text with EEA relevance) (OJ L 341 24.12.2015, p. 21)





Corrected by:









▼B

REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL

of 16 December 2015

amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)

(Text with EEA relevance)







Article 1

Regulation (EC) No 207/2009 is amended as follows:

(1) In the title, ‘Community trade mark’ is replaced by ‘European Union trade mark’.

(2) The term ‘Community trade mark’ is replaced by ‘European Union trade mark (“EU trade mark”)’ in Article 1(1); and elsewhere in the Regulation, it is replaced by ‘EU trade mark’ and any necessary grammatical changes are made.

(3) Throughout the Regulation, the term ‘Community trade mark court’ is replaced by ‘EU trade mark court’ and any necessary grammatical changes are made.

(4) The term ‘Community collective mark’ is replaced by ‘European Union collective mark (“EU collective mark”)’ in Article 66(1); and elsewhere in the Regulation, it is replaced by ‘EU collective mark’ and any necessary grammatical changes are made.

(5) Throughout the Regulation, except in the cases referred to in points (2), (3) and (4), the words ‘Community’, ‘European Community’ and ‘European Communities’ are replaced by ‘Union’ and any necessary grammatical changes are made.

(6) Throughout the Regulation, the term ‘President of the Office’ and all references to that President are replaced by ‘Executive Director of the Office’ or ‘Executive Director’, as appropriate, and any necessary grammatical changes are made.

(7) Article 2 is replaced by the following: ‘Article 2 Office 1. A European Union Intellectual Property Office (“the Office”) is hereby established. 2. All references in Union law to the Office for Harmonization in the Internal Market (trade marks and designs) shall be read as references to the Office.’.

(8) Article 4 is replaced by the following: ‘Article 4 Signs of which an EU trade mark may consist An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the Register of European Union trade marks, (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.’.

(9) Article 7(1) is amended as follows: (a) point (e) is replaced by the following: ‘(e) signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods;’; (b) points (j) and (k) are replaced by the following: ‘(j) trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications; (k) trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;’; (c) the following points are added: ‘(l) trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed; (m) trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species.’.

(10) Article 8 is amended as follows: (a) the following paragraph is inserted: ‘4a. Upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications: (i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration; (ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.’; (b) paragraph 5 is replaced by the following: ‘5. Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’.

(11) Article 9 is replaced by the following: ‘Article 9 Rights conferred by an EU trade mark 1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein. 2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered; (b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark. 3. The following, in particular, may be prohibited under paragraph 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or part of a trade or company name; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC of the European Parliament and of the Council ( *1 ). 4. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark. The entitlement of the proprietor of an EU trade mark pursuant to the first subparagraph shall lapse if, during the proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation (EU) No 608/2013 of the European Parliament and of the Council ( *2 ) concerning customs enforcement of intellectual property rights, evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

(12) The following articles are inserted: ‘Article 9a Right to prohibit preparatory acts in relation to the use of packaging or other means Where the risk exists that the packaging, labels, tags, security or authenticity features or devices or any other means to which the mark is affixed could be used in relation to goods or services and such use would constitute an infringement of the rights of the proprietor of an EU trade mark under Article 9(2) and (3), the proprietor of that trade mark shall have the right to prohibit the following acts if carried out in the course of trade: (a) affixing a sign identical with, or similar to, the EU trade mark on packaging, labels, tags, security or authenticity features or devices or any other means to which the mark may be affixed; (b) offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices or any other means to which the mark is affixed. Article 9b Date from which rights against third parties prevail 1. The rights conferred by an EU trade mark shall prevail against third parties from the date of publication of the registration of the trade mark. 2. Reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EU trade mark application, where those acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. 3. A court seized of a case shall not decide upon the merits of that case until the registration has been published.’.

(13) Article 12 is replaced by the following: ‘Article 12 Limitation of the effects of an EU trade mark 1. An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a) the name or address of the third party, where that third party is a natural person; (b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; (c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. 2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.’.

(14) Article 13(1) is replaced by the following: ‘1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.’.

(15) The following article is inserted: ‘Article 13a Intervening right of the proprietor of a later registered trade mark as a defence in infringement proceedings 1. In infringement proceedings, the proprietor of an EU trade mark shall not be entitled to prohibit the use of a later registered EU trade mark where that later trade mark would not be declared invalid pursuant to Article 53(1), (3) or (4), 54(1) or (2), or 57(2) of this Regulation. 2. In infringement proceedings, the proprietor of an EU trade mark shall not be entitled to prohibit the use of a later registered national trade mark where that later registered national trade mark would not be declared invalid pursuant to Article 8, or Article 9(1) or (2), or 46(3) of Directive (EU) 2015/2436 of the European Parliament and of the Council ( *3 ). 3. Where the proprietor of an EU trade mark is not entitled to prohibit the use of a later registered trade mark pursuant to paragraph 1 or 2, the proprietor of that later registered trade mark shall not be entitled to prohibit the use of that earlier EU trade mark in infringement proceedings.

(16) In Article 15(1), the second subparagraph is replaced by the following: ‘The following shall also constitute use within the meaning of the first subparagraph: (a) use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor; (b) affixing of the EU trade mark to goods or to the packaging thereof in the Union solely for export purposes.’.

(17) In Article 16(1), the introductory sentence is replaced by the following: ‘1. Unless Articles 17 to 24 provide otherwise, an EU trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the Union, as a national trade mark registered in the Member State in which, according to the Register:’.

(18) Article 17 is amended as follows: (a) paragraph 4 is deleted; (b) the following paragraphs are inserted: ‘5a. An application for registration of a transfer shall contain information to identify the EU trade mark, the new proprietor, the goods and services to which the transfer relates, as well as documents duly establishing the transfer in accordance with paragraphs 2 and 3. The application may further contain, where applicable, information to identify the representative of the new proprietor. 5b. The Commission shall adopt implementing acts specifying: (a) the details to be contained in the application for registration of a transfer; (b) the kind of documentation required to establish a transfer, taking account of the agreements given by the registered proprietor and the successor in title; (c) the details of how to process applications for partial transfers, ensuring that the goods and services in the remaining registration and the new registration do not overlap and that a separate file, including a new registration number, is established for the new registration. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). 5c. Where the conditions applicable to the registration of a transfer, as laid down in paragraphs 1 to 3, or in the implementing acts referred to in paragraph 5b, are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, it shall reject the application for registration of the transfer. 5d. A single application for registration of a transfer may be submitted for two or more trade marks, provided that the registered proprietor and the successor in title are the same in each case. 5e. Paragraphs 5a to 5d shall also apply to applications for EU trade marks. 5f. In the case of a partial transfer, any application made by the original proprietor pending with regard to the original registration shall be deemed to be pending with regard to the remaining registration and the new registration. Where such application is subject to the payment of fees and those fees have been paid by the original proprietor, the new proprietor shall not be liable to pay any additional fees with regard to such application.’.

(19) Article 18 is replaced by the following: ‘Article 18 Transfer of a trade mark registered in the name of an agent 1. Where an EU trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to demand the assignment of the EU trade mark in his favour, unless such agent or representative justifies his action. 2. The proprietor may submit a request for assignment pursuant to paragraph 1 of this Article to the following: (a) the Office, pursuant to Article 53(1)(b), instead of an application for a declaration of invalidity; (b) a European Union trade mark court (“EU trade mark court”) as referred to in Article 95, instead of a counterclaim for a declaration of invalidity based on Article 100(1).’.

(20) Article 19 is amended as follows: (a) paragraph 2 is replaced by the following: ‘2. At the request of one of the parties, the rights referred to in paragraph 1 or the transfer of those rights shall be entered in the Register and published.’; (b) the following paragraph is added: ‘3. An entry in the Register effected pursuant to paragraph 2 shall be cancelled or modified at the request of one of the parties.’.

(21) In Article 20, the following paragraph is added: ‘4. An entry in the Register effected pursuant to paragraph 3 shall be cancelled or modified at the request of one of the parties.’.

(22) In Article 22, the following paragraph is added: ‘6. An entry in the Register effected pursuant to paragraph 5 shall be cancelled or modified at the request of one of the parties.’.

(23) The following article is inserted: ‘Article 22a Procedure for entering licences and other rights in the Register 1. Article 17(5a) and (5b) and the rules adopted pursuant to it, and Article 17(5d) shall apply mutatis mutandis to the registration of a right in rem or transfer of a right in rem as referred to in Article 19(2), the levy of execution as referred to in Article 20(3), the involvement in insolvency proceedings as referred to in Article 21(3), as well as to the registration of a licence or transfer of a licence as referred to in Article 22(5), subject to the following: (a) the requirement relating to the identification of goods and services to which the transfer relates shall not apply in respect of a request for registration of a right in rem, of a levy of execution or of insolvency proceedings; (b) the requirement relating to the documents proving the transfer shall not apply where the request is made by the proprietor of the EU trade mark. 2. The application for registration of the rights referred to in paragraph 1 shall not be deemed to have been filed until the required fee has been paid. 3. The application for registration of a licence may contain a request to record a licence in the Register as one or more of the following: (a) an exclusive licence; (b) a sub-licence in the event that the licence is granted by a licensee whose licence is recorded in the Register; (c) a licence limited to only part of the goods or services for which the mark is registered; (d) a licence limited to part of the Union; (e) a temporary licence. Where a request is made to record the licence as a licence listed in points (c), (d) and (e) of the first subparagraph, the application for registration of a licence shall indicate the goods and services, the part of the Union and the time period for which the licence is granted. 4. Where the conditions applicable to registration, as laid down in Articles 19 to 22, paragraphs 1 and 3 of this Article, and in the other applicable rules adopted pursuant to this Regulation, are not fulfilled, the Office shall notify the applicant of the deficiency. If the deficiency is not corrected within a period specified by the Office, it shall reject the application for registration. 5. Paragraphs 1 and 3 shall apply mutatis mutandis to applications for EU trade marks.’.

(24) The following article is inserted: ‘Article 24a Procedure for cancelling or modifying the entry in the Register of licences and other rights 1. A registration effected under Article 22a(1) shall be cancelled or modified at the request of one of the persons concerned. 2. The application shall contain the registration number of the EU trade mark concerned and the particulars of the right for which registration is requested to be cancelled or modified. 3. The application for cancellation of a licence, a right in rem or an enforcement measure shall not be deemed to have been filed until the required fee has been paid. 4. The application shall be accompanied by documents showing that the registered right no longer exists or that the licensee or the holder of another right consents to the cancellation or modification of the registration. 5. Where the requirements for cancellation or modification of the registration are not satisfied, the Office shall notify the applicant of the deficiency. If the deficiency is not corrected within a period to be specified by the Office, it shall reject the application for cancellation or modification of the registration. 6. Paragraphs 1 to 5 of this Article shall apply mutatis mutandis to entries made in the files pursuant to Article 22a(5).’.

(25) Article 25 is replaced by the following: ‘Article 25 Filing of applications 1. An application for an EU trade mark shall be filed at the Office. 2. The Office 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 documents and the date of their receipt. That receipt may be issued by electronic means.’.

(26) Article 26 is amended as follows: (a) in paragraph 1, point (d) is replaced by the following: ‘(d) a representation of the mark, which satisfies the requirements set out in Article 4(b).’; (b) paragraphs 2 and 3 are replaced by the following: ‘2. The application for an EU trade mark shall be subject to the payment of the application fee covering one class of goods or services and, where appropriate, of one or more class fees for each class of goods and services exceeding the first class and, where applicable, the search fee. 3. In addition to the requirements referred to in paragraphs 1 and 2, an application for an EU trade mark shall comply with the formal requirements laid down in this Regulation and in the implementing acts adopted pursuant to it. If those conditions provide for the trade mark to be represented electronically, the Executive Director may determine the formats and maximum size of such an electronic file.’; (c) the following paragraph is added: ‘4. The Commission shall adopt implementing acts specifying the details to be contained in the application. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(27) Article 27 is replaced by the following: ‘Article 27 Date of filing The date of filing of an EU trade mark application shall be the date on which the documents containing the information specified in Article 26(1) are filed with the Office by the applicant, subject to payment of the application fee within one month of filing those documents.’.

(28) Article 28 is replaced by the following: ‘Article 28 Designation and classification of goods and services 1. Goods and services in respect of which trade mark registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (“the Nice Classification”). 2. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. 3. For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in this Article. 4. The Office shall reject an application in respect of indications or terms which are unclear or imprecise, where the applicant does not suggest an acceptable wording within a period set by the Office to that effect. 5. The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood. 6. Where the applicant requests registration for more than one class, the applicant shall group the goods and services according to the classes of the Nice Classification, each group being preceded by the number of the class to which that group of goods or services belongs, and shall present them in the order of the classes. 7. Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification. 8. Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Office shall take appropriate measures to amend the Register accordingly. The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 15, Article 42(2), Article 51(1)(a), and Article 57(2). EU trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class. 9. Where the register is amended, the exclusive rights conferred by the EU trade mark under Article 9 shall not prevent a third party from continuing to use a trade mark in relation to goods or services where and to the extent that the use of the trade mark for those goods or services: (a) commenced before the register was amended; and (b) did not infringe the proprietor's rights based on the literal meaning of the record of the goods and services in the register at that time. In addition, the amendment of the list of goods or services recorded in the register shall not give the proprietor of the EU trade mark the right to oppose or to apply for a declaration of invalidity of a later trade mark where and to the extent that: (a) the later trade mark was either in use, or an application had been made to register the trade mark, for goods or services before the register was amended; and (b) the use of the trade mark in relation to those goods or services did not infringe, or would not have infringed, the proprietor's rights based on the literal meaning of the record of the goods and services in the register at that time.’.

(29) Article 29 is amended as follows: (a) in paragraph 5, the following sentences are added: ‘The Executive Director shall, where necessary, request the Commission to consider enquiring as to whether a State within the meaning of the first sentence accords that reciprocal treatment. If the Commission determines that reciprocal treatment in accordance with the first sentence is accorded, it shall publish a communication to that effect in the Official Journal of the European Union.’; (b) the following paragraphs are added: ‘6. Paragraph 5 shall apply from the date of publication in the Official Journal of the European Union of the communication determining that reciprocal treatment is accorded, unless the communication states an earlier date from which it is applicable. It shall cease to apply from the date of publication in the Official Journal of the European Union of a communication of the Commission to the effect that reciprocal treatment is no longer accorded, unless the communication states an earlier date from which it is applicable. 7. Communications as referred to in paragraphs 5 and 6 shall also be published in the Official Journal of the Office.’.

(30) Article 30 is replaced by the following: ‘Article 30 Claiming priority 1. Priority claims shall be filed together with the EU trade mark application and shall include the date, number and country of the previous application. The documentation in support of priority claims shall be filed within three months of the filing date. 2. The Commission shall adopt implementing acts specifying the kind of documentation to be filed for claiming the priority of a previous application in accordance with paragraph 1 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). 3. The Executive Director may determine that the documentation to be provided by the applicant in support of the priority claim may consist of less than what is required under the specifications adopted in accordance with paragraph 2, provided that the information required is available to the Office from other sources.’.

(31) Article 33 is amended as follows: (a) in paragraph 1, the following sentence is added: ‘The priority claim shall be filed together with the EU trade mark application.’; (b) paragraph 2 is replaced by the following: ‘2. An applicant who wishes to claim priority pursuant to paragraph 1 shall file evidence of the display of goods or services under the mark applied for within three months of the filing date.’; (c) the following paragraph is added: ‘4. The Commission shall adopt implementing acts specifying the type and details of evidence to be filed for claiming an exhibition priority in accordance with paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(32) Article 34 is amended as follows: (a) the following paragraph is inserted: ‘1a. Seniority claims shall either be filed together with the EU trade mark application or within two months of the filing date of the application, and shall include the Member State or Member States in or for which the mark is registered, the number and the filing date of the relevant registration, and the goods and services for which the mark is registered. Where the seniority of one or more registered earlier trade marks is claimed in the application, the documentation in support of the seniority claim shall be filed within three months of the filing date. Where the applicant wishes to claim the seniority subsequent to the filing of the application, the documentation in support of the seniority claim shall be submitted to the Office within three months of receipt of the seniority claim.’; (b) paragraph 3 is replaced by the following: ‘3. The seniority claimed for the EU trade mark shall lapse where the earlier trade mark the seniority of which is claimed is declared to be invalid or revoked. Where the earlier trade mark is revoked, the seniority shall lapse provided that the revocation takes effect prior to the filing date or priority date of that EU trade mark.’; (c) the following paragraphs are added: ‘4. The Office shall inform the Benelux Office for Intellectual Property or the central industrial property office of the Member State concerned of the effective claiming of seniority. 5. The Commission shall adopt implementing acts specifying the kind of documentation to be filed for claiming the seniority of a national trade mark or a trade mark registered under international agreements having effect in a Member State in accordance with paragraph 1a of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). 6. The Executive Director may determine that the documentation to be provided by the applicant in support of the seniority claim may consist of less than what is required under the specifications adopted in accordance with paragraph 5, provided that the information required is available to the Office from other sources.’.

(33) Article 35 is amended as follows: (a) paragraph 2 is replaced by the following: ‘2. Seniority claims filed pursuant to paragraph 1 of this Article shall include the registration number of the EU trade mark, the name and address of its proprietor, the Member State or Member States in or for which the earlier mark is registered, the number and the filing date of the relevant registration, the goods and services for which the mark is registered and those in respect of which seniority is claimed, and supporting documentation as provided for in the rules adopted pursuant to Article 34(5).’; (b) the following paragraphs are added: ‘3. If the requirements governing the claiming of seniority are not fulfilled, the Office shall communicate the deficiency to the proprietor of the EU trade mark. If the deficiency is not remedied within a period to be specified by the Office, the Office shall reject the claim. 4. Article 34(2), (3), (4) and (6) shall apply.’.

(34) Article 36 is amended as follows: (a) point (b) of paragraph 1 is replaced by the following: ‘(b) the EU trade mark application complies with the conditions and requirements referred to in Article 26(3).’; (b) in paragraph 2 the words ‘within the prescribed period’ are replaced by ‘within two months of the receipt of the notification’; (c) in paragraph 5, the following sentences are added: ‘In the absence of other criteria to determine which classes are intended to be covered, the Office shall take the classes in the order of the classification. The application shall be deemed to have been withdrawn with regard to those classes for which the class fees have not been paid or have not been paid in full.’; (d) the following paragraph is added: ‘8. Where failure to satisfy the requirements referred to in paragraph 1(b) and (c) concerns only some of the goods or services, the Office shall refuse the application, or the right of priority or the right of seniority shall be lost, only in so far as those goods and services are concerned.’.

(35) Article 37 is amended as follows: (a) paragraph 2 is deleted; (b) paragraph 3 is replaced by the following: ‘(3) The application shall not be refused before the applicant has been allowed the opportunity to withdraw or amend the application or to submit his observations. To this effect, the Office shall notify the applicant of the grounds for refusing registration and shall specify a period within which he may withdraw or amend the application or submit his observations. Where the applicant fails to overcome the grounds for refusing registration, the Office shall refuse registration in whole or in part.’.

(36) Article 38 is replaced by the following: ‘Article 38 Search report 1. The Office shall, at the request of the applicant for the EU trade mark when filing the application, draw up a European Union search report (“EU search report”) citing those earlier EU trade marks or EU trade mark applications discovered which may be invoked under Article 8 against the registration of the EU trade mark applied for. 2. Where, at the time of filing an EU trade mark application, the applicant requests that a search report be prepared by the central industrial property offices of the Member States and where the appropriate search fee has been paid within the time limit for the payment of the filing fee, the Office shall transmit without delay a copy of the EU trade mark application to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks in respect of EU trade mark applications. 3. Each of the central industrial property offices of the Member States referred to in paragraph 2 of this Article shall communicate a search report which shall either cite any earlier national trade marks, national trade mark applications or trade marks registered under international agreements, having effect in the Member State or Member States concerned, which have been discovered and which may be invoked under Article 8 against the registration of the EU trade mark applied for, or state that the search has revealed no such rights. 4. The Office, after consulting the Management Board provided for in Article 124 (“the Management Board”), shall establish the contents and modalities for the reports. 5. The Office shall pay an amount to each central industrial property office for each search report provided by the office in accordance with paragraph 3. The amount, which shall be the same for each office, shall be fixed by the Budget Committee by means of a decision adopted by a majority of three quarters of the representatives of the Member States. 6. The Office shall transmit to the applicant for the EU trade mark the EU search report requested and any requested national search reports received. 7. Upon publication of the EU trade mark application, the Office shall inform the proprietors of any earlier EU trade marks, or EU trade mark applications cited in the EU search report of the publication of the EU trade mark application. The latter shall apply irrespective of whether the applicant has requested to receive the EU search report, unless the proprietor of an earlier registration or application requests not to receive the notification.’.

(37) Article 39 is amended as follows: (a) paragraph 1 is replaced by the following: ‘1. If the conditions which the application for an EU trade mark is required to satisfy have been fulfilled, the application shall be published for the purposes of Article 41 to the extent that it has not been refused pursuant to Article 37. The publication of the application shall be without prejudice to information already made available to the public otherwise in accordance with this Regulation or acts adopted pursuant to this Regulation.’; (b) the following paragraphs are added: ‘3. Where the publication of the application contains an error attributable to the Office, the Office shall of its own motion or at the request of the applicant correct the error and publish the correction. The rules adopted pursuant to Article 43(3) shall apply mutatis mutandis where a correction is requested by the applicant. 4. Article 41(2) shall apply also where the correction concerns the list of goods or services or the representation of the mark. 5. The Commission shall adopt implementing acts laying down the details to be contained in the publication of the application. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(38) Article 40 is replaced by the following: ‘Article 40 Observations by third parties 1. Any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Office written observations, explaining on which grounds, under Articles 5 and 7, the trade mark should not be registered ex officio. Persons and groups or bodies as referred to in the first subparagraph shall not be parties to the proceedings before the Office. 2. Third party observations shall be submitted before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken. 3. The submission referred to in paragraph 1 shall be without prejudice to the right of the Office to re-open the examination of absolute grounds on its own initiative at any time before registration, where appropriate. 4. The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them.’.

(39) Article 41 is amended as follows: (a) in paragraph 1, the following point is added: ‘(d) by the persons authorised under the relevant Union legislation or national law to exercise the rights referred to in Article 8(4a).’; (b) paragraph 3 is replaced by the following: ‘3. Opposition shall be expressed in writing, and shall specify the grounds on which it is made. It shall not be considered as duly entered until the opposition fee has been paid.’; (c) the following paragraph is added: ‘4. Within a period to be fixed by the Office, the opponent may submit facts, evidence and arguments in support of his case.’.

(40) In Article 42, paragraph 2 is replaced by the following: ‘2. If the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.’.

(41) The following article is inserted: ‘Article 42a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details of the procedure for filing and examining an opposition set out in Articles 41 and 42.’.

(42) In Article 43, the following paragraph is added: ‘3. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details of the procedure governing the amendment of the application.’.

(43) Article 44 is amended as follows: (a) in paragraph 2, point (b) is replaced by the following: ‘(b) before the date of filing referred to in Article 27 has been accorded by the Office and during the opposition period provided for in Article 41(1).’; (b) paragraph 3 is deleted; (c) the following paragraph is inserted: ‘4a. Where the Office finds that the requirements laid down in paragraph 1 and in the rules adopted pursuant to paragraph 9(a) are not fulfilled, it shall invite the applicant to remedy the deficiencies within a period to be specified by the Office. If the deficiencies are not remedied before the time limit expires, the Office shall refuse the declaration of division.’; (d) the following paragraphs are added: ‘8. Where the declaration of division relates to an application which has already been published pursuant to Article 39, the division shall be published. The divisional application shall be published. The publication shall not open a new period for the filing of oppositions. 9. The Commission shall adopt implementing acts specifying: (a) the details to be contained in a declaration of the division of an application made pursuant to paragraph 1; (b) the details as to how to process a declaration of the division of an application, ensuring that a separate file, including a new application number, is established for the divisional application; (c) the details to be contained in the publication of the divisional application pursuant to paragraph 8. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(44) Article 45 is replaced by the following: ‘Article 45 Registration 1. Where an application meets the requirements set out in this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trade mark and the particulars referred to in Article 87(2) shall be recorded in the Register. The registration shall be published. 2. The Office shall issue a certificate of registration. That certificate may be issued by electronic means. The Office shall provide certified or uncertified copies of the certificate subject to the payment of a fee, where those copies are issued other than by electronic means. 3. The Commission shall adopt implementing acts specifying the details to be contained in and the form of the certificate of registration referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(45) Article 47 is replaced by the following: ‘Article 47 Renewal 1. Registration of the EU trade mark shall be renewed at the request of the proprietor of the EU trade mark or any person expressly authorised by him, provided that the fees have been paid. 2. The Office shall inform the proprietor of the EU trade mark, and any person having a registered right in respect of the EU trade mark, of the expiry of the registration at least six months before the said expiry. Failure to give such information shall not involve the responsibility of the Office and shall not affect the expiry of the registration. 3. The request for renewal shall be submitted in the six-month period prior to the expiry of the registration. The basic fee for the renewal, and where appropriate, one or more class fees for each class of goods or services exceeding the first one shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the expiry of registration, provided that an additional fee for late payment of the renewal fee or late submission of the request for renewal is paid within this further period. 4. The request for renewal shall include: (a) the name of the person requesting renewal; (b) the registration number of the EU trade mark to be renewed; (c) if the renewal is requested for only part of the registered goods and services, an indication of those classes or those goods and services for which renewal is requested, or those classes or those goods and services for which renewal is not requested, grouped according to the classes of the Nice classification, each group being preceded by the number of the class of that classification to which that group of goods or services belongs, and presented in the order of classes of that classification. If the payment referred to in paragraph 3 is made, it shall be deemed to constitute a request for renewal provided that it contains all necessary indications to establish the purpose of the payment. 5. Where the request is submitted or the fees paid in respect of only some of the goods or services for which the EU trade mark is registered, registration shall be renewed for those goods or services only. Where the fees paid are insufficient to cover all the classes of goods and services for which renewal is requested, registration shall be renewed if it is clear which class or classes are to be covered. In the absence of other criteria, the Office shall take the classes into account in the order of classification. 6. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered. 7. Where the request for renewal is filed within the periods provided for in paragraph 3, but the other conditions governing renewal provided for in this Article are not satisfied, the Office shall inform the applicant of the deficiencies found. 8. Where a request for renewal is not submitted or is submitted after the expiry of the period provided for in paragraph 3, or where the fees are not paid or are paid only after the period in question has expired, or where the deficiencies referred to in paragraph 7 are not remedied within that period, the Office shall determine that the registration has expired and shall notify the proprietor of the EU trade mark accordingly. Where the determination has become final, the Office shall cancel the mark from the register. The cancellation shall take effect from the day following the date on which the existing registration expired. Where the renewal fees have been paid but the registration is not renewed, those fees shall be refunded. 9. A single request for renewal may be submitted for two or more marks, upon payment of the required fees for each of the marks, provided that the proprietors or the representatives are the same in each case.’.

(46) Article 48 is amended as follows: (a) paragraph 3 is replaced by the following: ‘3. The request for alteration shall include the element of the mark to be altered and that element in its altered version. The Commission shall adopt implementing acts specifying the details to be contained in the request for alteration. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’; (b) the following paragraphs are added: ‘4. The request shall be deemed not to have been filed until the required fee has been paid. If the fee has not been paid or has not been paid in full, the Office shall inform the applicant accordingly. A single request may be made for the alteration of the same element in two or more registrations of the same proprietor. The required fee shall be paid in respect of each registration to be altered. If the requirements governing the alteration of the registration are not fulfilled, the Office shall communicate the deficiency to the applicant. If the deficiency is not remedied within a period to be specified by the Office, the Office shall reject the request. 5. The publication of the registration of the alteration shall contain a representation of the EU trade mark as altered. Third parties whose rights may be affected by the alteration may challenge the registration thereof within the period of three months following publication. Articles 41 and 42, and rules adopted pursuant to Article 42a shall apply to the publication of the registration of the alteration.’.

(47) The following article is inserted: ‘Article 48a Change of the name or address 1. A change of the name or address of the proprietor of the EU trade mark which is not an alteration of the EU trade mark pursuant to Article 48(2) and which is not the consequence of a whole or partial transfer of the EU trade mark shall, at the request of the proprietor, be recorded in the Register. The Commission shall adopt implementing acts specifying the details to be contained in a request for the change of name or address pursuant to the first subparagraph of this paragraph. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). 2. A single request may be made for the change of the name or address in respect of two or more registrations of the same proprietor. 3. If the requirements governing the recording of a change are not fulfilled, the Office shall communicate the deficiency to the proprietor of the EU trade mark. If the deficiency is not remedied within a period to be specified by the Office, the Office shall reject the request. 4. Paragraphs 1 to 3 shall also apply to a change of the name or address of the registered representative. 5. Paragraphs 1 to 4 shall apply to applications for EU trade marks. The change shall be recorded in the files kept by the Office on the EU trade mark application.’.

(48) Article 49 is amended as follows: (a) paragraph 3 is replaced by the following: ‘3. If the requirements laid down in paragraph 1 and pursuant to the implementing acts referred to in paragraph 8 are not fulfilled, or the list of goods and services which form the divisional registration overlap with the goods and services which remain in the original registration, the Office shall invite the proprietor of the EU trade mark to remedy the deficiencies within such period as it may specify. If the deficiencies are not remedied before the time period expires, the Office shall refuse the declaration of division.’; (b) the following paragraph is added: ‘8. The Commission shall adopt implementing acts specifying: (a) the details to be contained in a declaration of the division of a registration pursuant to paragraph 1; (b) the details as how to process a declaration of the division of a registration, ensuring that a separate file, including a new registration number, is established for the divisional registration. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(49) Article 50 is amended as follows: (a) paragraphs 2 and 3 are replaced by the following: ‘2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. The validity of the surrender of an EU trade mark which is declared to the Office subsequent to the submission of an application for revocation of that trade mark pursuant to Article 56(1) shall be conditional upon the final rejection or withdrawal of the application for revocation. 3. Surrender shall be entered only with the agreement of the proprietor of a right relating to the EU trade mark and which is entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the EU trade mark proves that he has informed the licensee of his intention to surrender. The entry of the surrender shall be made on expiry of the three-month period after the date on which the proprietor satisfies the Office that he has informed the licensee of his intention to surrender, or before the expiry of that period, as soon as he proves that the licensee has given his consent.’; (b) the following paragraphs are added: ‘4. If the requirements governing surrender are not fulfilled, the Office shall communicate the deficiencies to the declarant. If the deficiencies are not remedied within a period to be specified by the Office, the Office shall reject the entry of surrender in the Register. 5. The Commission shall adopt implementing acts specifying the details to be contained in a declaration of surrender pursuant to paragraph 2 of this Article and the kind of documentation required to establish a third party's agreement pursuant to paragraph 3 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(50) In Article 53, paragraph 1 is amended as follows: (a) the following point is added: ‘(d) where there is an earlier designation of origin or geographical indication as referred to in Article 8(4a) and the conditions set out in that paragraph are fulfilled.’; (b) the following subparagraph is added: ‘All the conditions referred to in the first subparagraph shall be fulfilled at the filing date or the priority date of the EU trade mark.’.

(51) In Article 54, paragraphs 1 and 2 are replaced by the following: ‘1. Where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Union while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith. 2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.’.

(52) Article 56 is amended as follows: (a) in paragraph 1, point (c), the phrase ‘under the law of the Member State concerned’ is replaced by the phrase ‘under Union legislation or the law of the Member State concerned’; (b) paragraph 3 is replaced by the following: ‘3. An application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Office or by an EU trade mark court as referred to in Article 95, and the decision of the Office or that court on that application has acquired the authority of a final decision.’.

(53) In Article 57, paragraph 2 is replaced by the following: ‘2. If the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which the proprietor of that earlier trade mark cites as justification for his application, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. If, at the date on which the EU trade mark application was filed or at the priority date of the EU trade mark application, the earlier EU trade mark had been registered for not less than five years, the proprietor of the earlier EU trade mark shall furnish proof that, in addition, the conditions set out in Article 42(2) were satisfied at that date. In the absence of proof to this effect, the application for a declaration of invalidity shall be rejected. If the earlier EU trade mark has been used only in relation to part of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect of that part of the goods or services only.’.

(54) The following article is inserted: ‘Article 57a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details of the procedures governing the revocation and declaration of invalidity of an EU trade mark as referred to in Articles 56 and 57, as well as the transfer of an EU trade mark registered in the name of an agent as referred to in Article 18.’.

(55) In Article 58, paragraph 1 is replaced by the following: ‘1. An appeal shall lie from decisions of any of the decision-making instances of the Office listed in points (a) to (d) of Article 130, and, where appropriate, point (f) of that Article. Those decisions shall take effect only as from the date of expiration of the appeal period referred to in Article 60. The filing of the appeal shall have suspensive effect.’.

(56) Article 60 is replaced by the following: ‘Article 60 Time limit and form of appeal 1. Notice of appeal shall be filed in writing at the Office within two months of the date of notification of the decision. The notice shall be deemed to have been filed only when the fee for appeal has been paid. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Within four months of the date of notification of the decision, a written statement setting out the grounds of appeal shall be filed. 2. In inter partes proceedings, the defendant may, in his response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. Such submissions shall cease to have effect should the appellant discontinue the proceedings.’.

(57) Article 62 is deleted.

(58) In Article 64, paragraph 3 is replaced by the following: ‘3. The decisions of the Board of Appeal shall take effect only as from the date of expiry of the period referred to in Article 65(5) or, if an action has been brought before the General Court within that period, as from the date of dismissal of such action or of any appeal filed with the Court of Justice against the decision of the General Court.’.

(59) Article 65 is amended as follows: (a) paragraph 1 is replaced by the following: ‘1. Actions may be brought before the General Court against decisions of the Boards of Appeal in relation to appeals.’; (b) paragraph 3 is replaced by the following: ‘3. The General Court shall have jurisdiction to annul or to alter the contested decision.’; (c) paragraphs 5 and 6 are replaced by the following: ‘5. The action shall be brought before the General Court within two months of the date of notification of the decision of the Board of Appeal. 6. The Office shall take the necessary measures to comply with the judgment of the General Court or, in the event of an appeal against that judgment, the Court of Justice.’.

(60) The following article is inserted: ‘Article 65a Delegation of powers The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying: (a) the formal content of the notice of appeal referred to in Article 60 and the procedure for the filing and the examination of an appeal; (b) the formal content and form of the Board of Appeal's decisions as referred to in Article 64; (c) the reimbursement of the appeal fee as referred to in Article 60.’.

(61) The title of Title VIII is replaced by the following: ‘SPECIFIC PROVISIONS ON EUROPEAN UNION COLLECTIVE MARKS AND CERTIFICATION MARKS’.

(62) The following section heading is inserted before Article 66: ‘SECTION 1 EU collective marks’.

(63) In Article 66, paragraph 3 is replaced by the following: ‘3. Titles I to VII and IX to XIV shall apply to EU collective marks to the extent that this section does not provide otherwise.’.

(64) Article 67 is amended as follows: (a) paragraph 1 is replaced by the following: ‘1. An applicant for an EU collective mark shall submit regulations governing its use within two months of the date of filing.’; (b) the following paragraph is added: ‘3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2).’.

(65) Article 69 is replaced by the following: ‘Article 69 Observations by third parties Where written observations on an EU collective mark are submitted to the Office pursuant to Article 40, those observations may also be based on the particular grounds on which the application for an EU collective mark should be refused pursuant to Article 68.’.

(66) In Article 71, paragraph 3 is replaced by the following: ‘3. Written observations made in accordance with Article 69 may also be submitted with regard to amended regulations governing use.’.

(67) In Title VIII, the following section is added: ‘SECTION 2 EU certification marks Article 74a EU certification marks 1. An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified. 2. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified. 3. Titles I to VII and IX to XIV shall apply to EU certification marks to the extent that this Section does not provide otherwise. Article 74b Regulations governing use of the EU certification mark 1. An applicant for an EU certification mark shall submit regulations governing the use of the certification mark within two months of the date of filing. 2. The regulations governing use shall specify the persons authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark. Those regulations shall also specify the conditions of use of the mark, including sanctions. 3. The Commission shall adopt implementing acts specifying the details to be contained in the regulations referred to in paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). Article 74c Refusal of the application 1. In addition to the grounds for refusal of an EU trade mark application provided for in Articles 36 and 37, an application for an EU certification mark shall be refused where the conditions set out in Articles 74a and 74b are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality. 2. An application for an EU certification mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. 3. An application shall not be refused if the applicant, as a result of an amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2. Article 74d Observations by third parties Where written observations on an EU certification mark are submitted to the Office pursuant to Article 40, those observations may also be based on the particular grounds on which the application for an EU certification mark should be refused pursuant to Article 74c. Article 74e Use of the EU certification mark Use of an EU certification mark by any person who has authority to use it according to the regulations governing use referred to in Article 74b shall satisfy the requirements of this Regulation, provided that the other conditions laid down in this Regulation with regard to the use of EU trade marks are fulfilled. Article 74f Amendment of the regulations governing use of the mark 1. The proprietor of an EU certification mark shall submit to the Office any amended regulations governing use. 2. Amendments shall not be mentioned in the Register where the regulations as amended do not satisfy the requirements of Article 74b or involve one of the grounds for refusal referred to in Article 74c. 3. Written observations in accordance with Article 74d may also be submitted with regard to amended regulations governing use. 4. For the purposes of this Regulation, amendments to the regulations governing use shall take effect only as from the date of entry of the mention of the amendment in the Register. Article 74g Transfer By way of derogation from Article 17(1), an EU certification mark may only be transferred to a person who meets the requirements of Article 74a(2). Article 74h Persons who are entitled to bring an action for infringement 1. Only the proprietor of an EU certification mark, or any person specifically authorised by him to that effect, shall be entitled to bring an action for infringement. 2. The proprietor of an EU certification mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage as a consequence of unauthorised use of the mark. Article 74i Grounds for revocation In addition to the grounds for revocation provided for in Article 51, the rights of the proprietor of an EU certification mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, where any of the following conditions is fulfilled: (a) the proprietor no longer complies with the requirements set out in Article 74a(2); (b) the proprietor does not take reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register; (c) the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 74c(2); (d) an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of Article 74f(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article. Article 74j Grounds for invalidity In addition to the grounds for invalidity provided for in Articles 52 and 53, an EU certification mark which is registered in breach of Article 74c shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of Article 74c. Article 74k Conversion Without prejudice to Article 112(2), conversion of an application for an EU certification mark or of a registered EU certification mark shall not take place where the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to Article 28 of Directive (EU) 2015/2436 of the European Parliament and of the Council.’.

(68) Article 75 is replaced by the following: ‘Article 75 Decisions and communications of the Office 1. Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Where oral proceedings are held before the Office, the decision may be given orally. Subsequently, the decision shall be notified in writing to the parties. 2. Any decision, communication or notice from the Office shall indicate the department or division of the Office as well as the name or the names of the official or officials responsible. They shall be signed by that official or those officials, or, instead of a signature, carry a printed or stamped seal of the Office. The Executive Director may determine that other means of identifying the department or division of the Office and the name of the official or officials responsible, or an identification other than a seal, may be used where decisions, communications or notices from the Office are transmitted by telecopier or any other technical means of communication. 3. Decisions of the Office which are open to appeal shall be accompanied by a written communication indicating that any notice of appeal is to be filed in writing at the Office within two months of the date of notification of the decision in question. The communications shall also draw the attention of the parties to the provisions laid down in Articles 58, 59 and 60. The parties may not plead any failure on the part of the Office to communicate the availability of appeal proceedings.’.

(69) In Article 76(1), the following sentence is added: ‘In invalidity proceedings taken pursuant to Article 52, the Office shall limit its examination to the grounds and arguments submitted by the parties.’.

(70) In Article 77, the following paragraph is added: ‘4. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for oral proceedings, including the detailed arrangements for the use of languages in accordance with Article 119.’.

(71) Article 78 is amended as follows: (a) in paragraph 3, the following sentence is added: ‘The period of notice provided in such summons shall be at least one month, unless they agree to a shorter period.’; (b) the following paragraphs are added: ‘5. The Executive Director shall determine the amounts of expenses to be paid, including advances, as regards the costs of taking of evidence as referred to in this Article. 6. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for the taking of evidence.’.

(72) Article 79 is replaced by the following: ‘Article 79 Notification 1. The Office shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those concerned are to be notified under other provisions of this Regulation or of acts adopted pursuant to this Regulation, or of which notification has been ordered by the Executive Director. 2. The Executive Director may determine which documents other than decisions subject to a time limit for appeal and summonses shall be notified by registered letter with proof of delivery. 3. Notification may be effected by different means, including by electronic means. The details regarding electronic means shall be determined by the Executive Director. 4. Where notification is to be effected by public notice, the Executive Director shall determine how the public notice is to be given and shall fix the beginning of the one-month period on the expiry of which the document shall be deemed to have been notified. 5. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for notification.’.

(73) The following articles are inserted: ‘Article 79a Notification of loss of rights Where the Office finds that the loss of any rights results from this Regulation or acts adopted pursuant to this Regulation, without any decision having been taken, it shall communicate this to the person concerned in accordance with Article 79. The latter may apply for a decision on the matter within two months of notification of the communication, if he considers that the finding of the Office is incorrect. The Office shall adopt such a decision only where it disagrees with the person requesting it; otherwise the Office shall amend its finding and inform the person requesting the decision. Article 79b Communications to the Office 1. Communications addressed to the Office may be effected by electronic means. The Executive Director shall determine to what extent and under which technical conditions those communications may be submitted electronically. 2. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the rules on the means of communication, including the electronic means of communication, to be used by the parties to proceedings before the Office and the forms to be made available by the Office. Article 79c Time limits 1. Time limits shall be laid down in terms of full years, months, weeks or days. Calculation shall start on the day following the day on which the relevant event occurred. The duration of time limits shall be no less than one month and no more than six months. 2. The Executive Director shall determine, before the commencement of each calendar year, the days on which the Office is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the Office is located. 3. The Executive Director shall determine the duration of the period of interruption in the case of a general interruption in the delivery of post in the Member State where the Office is located or, in the case of an actual interruption of the Office's connection to admitted electronic means of communication. 4. If an exceptional occurrence, such as a natural disaster or strike, interrupts or interferes with proper communication from the parties to the proceedings to the Office or vice-versa, the Executive Director may determine that for parties to the proceedings having their residence or registered office in the Member State concerned or who have appointed a representative with a place of business in the Member State concerned, all time limits that otherwise would expire on or after the date of commencement of such occurrence, as determined by him, shall extend until a date to be determined by him. When determining that date, he shall assess when the exceptional occurrence comes to an end. If the occurrence affects the seat of the Office, such determination of the Executive Director shall specify that it applies in respect of all parties to the proceedings. 5. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the details regarding the calculation and duration of time limits. Article 79d Correction of errors and manifest oversights 1. The Office shall correct any linguistic errors or errors of transcription and manifest oversights in its decisions, or technical errors attributable to it in registering a trade mark or in publishing the registration of its own motion or at the request of a party. 2. Where the correction of errors in the registration of a trade mark or the publication of the registration is requested by the proprietor, Article 48a shall apply mutatis mutandis. 3. Corrections of errors in the registration of a trade mark and in the publication of the registration shall be published by the Office.’.

(74) Article 80 is replaced by the following: ‘Article 80 Revocation of decisions 1. Where the Office has made an entry in the Register or taken a decision which contains an obvious error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party. 2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. The cancellation of the entry in the Register or the revocation of the decision shall be effected within one year of the date on which the entry was made in the Register or that decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the EU trade mark in question that are entered in the Register. The Office shall keep records of any such cancellation or revocation. 3. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the procedure for the revocation of a decision or for the cancellation of an entry in the Register. 4. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility of correcting errors and manifest oversights under Article 79d. Where an appeal has been filed against a decision of the Office containing an error, the appeal proceedings shall become devoid of purpose upon revocation by the Office of its decision pursuant to paragraph 1 of this Article. In the latter case, the appeal fee shall be reimbursed to the appellant.’.

(75) Article 82 is amended as follows: (a) paragraph 2 is replaced by the following: ‘2. This Article shall not apply to the time limits laid down in Article 27, Articles 29(1), 33(1), 36(2), 41(1) and (3), 47(3), Article 60, Articles 65(5) and 81(2), and Article 112, or to the time limits laid down in paragraph 1 of this Article or the time limit for claiming seniority pursuant to Article 34 after the application has been filed.’; (b) paragraph 4 is replaced by the following: ‘4. If the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. If a decision has been taken between the expiry of that time limit and the request for the continuation of proceedings, the department competent to decide on the omitted act shall review the decision and, where completion of the omitted act itself is sufficient, take a different decision. If, following the review, the Office concludes that the original decision does not require to be altered, it shall confirm that decision in writing.’.

(76) The following Article is inserted: ‘Article 82a Interruption of proceedings 1. Proceedings before the Office shall be interrupted: (a) in the event of the death or legal incapacity of the applicant for, or proprietor of, an EU trade mark or of the person authorised by national law to act on his behalf. To the extent that that death or incapacity does not affect the authorisation of a representative appointed under Article 93, proceedings shall be interrupted only on application by such representative; (b) in the event of the applicant for, or proprietor of, an EU trade mark being prevented, for legal reasons resulting from action taken against his property, 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, an EU trade mark, or of that representative being prevented, for legal reasons resulting from action taken against his property, from continuing the proceedings before the Office. 2. Proceedings before the Office shall be resumed as soon as the identity of the person authorised to continue them has been established. 3. The Commission shall be empowered to adopt delegated acts in accordance with Article 163a specifying the detailed arrangements for the resumption of proceedings before the Office.’.

(77) Article 83 is replaced by the following: ‘Article 83 Reference to general principles In the absence of procedural provisions in this Regulation or in acts adopted pursuant to this Regulation, the Office shall take into account the principles of procedural law generally recognised in the Member States.’.

(78) Article 85 is amended as follows: (a) paragraph 1 is replaced by the following: ‘1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees paid by the other party. Without prejudice to Article 119(6), the losing party shall also bear all costs incurred by the other party that are essential to the proceedings, including travel and subsistence and the remuneration of a representative within the meaning of Article 93(1), within the limits of the scales set for each category of costs in the implementing act to be adopted in accordance with paragraph 1a of this Article. The fees to be borne by the losing party shall be limited to the fees paid by the other party for opposition, for an application for revocation or for a declaration of invalidity of the EU trade mark and for appeal.’; (b) the following paragraph is inserted: ‘1a. The Commission shall adopt implementing acts specifying the maximum rates for costs essential to the proceedings and actually incurred by the successful party. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 163(2). When specifying such amounts with respect to travel and subsistence costs, the Commission shall take into account the distance between the place of residence or business of the party, representative or witness or expert and the place where the oral proceedings are held, the procedural stage at which the costs have been incurred, and, as far as costs of representation within the meaning of Article 93(1) are concerned, the need to ensure that the obligation to bear the costs may not be misused for tactical reasons by the other party. Subsistence expenses shall be calculated in accordance with the Staff Regulations of Officials of the Union and the Conditions of Employment of Other Servants of the Union, laid down in Council Regulation (EEC, Euratom, ECSC) No 259/68 ( *4 ). The losing party shall bear the costs for one opposing party only and, where applicable, one representative only. (c) paragraph 6 is replaced by the following: ‘6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to paragraphs 1 to 5 of this Article when the costs to be paid are limited to the fees paid to the Office and the representation costs. In all other cases, the registry of the Board of Appeal or a member of the staff of the Opposition Division or Cancellation Division shall fix, on request, the amount of the costs to be reimbursed. The request shall be admissible only for the period of two months following the date on which the decision for which an application was made for the costs to be fixed becomes final and shall be accompanied by a bill and supporting evidence. For the costs of representation pursuant to Article 93(1), an assurance by the representative that the costs have been incurred shall be sufficient. For other costs, it shall be sufficient if their plausibility is established. Where the amount of the costs is fixed pursuant to the first sentence of this paragraph, representation costs shall be awarded at the level laid down in the act adopted pursuant to paragraph 1a of this Article and irrespective of whether they have been actually incurred.’; (d) the following paragraph is added: ‘7. The decision on the fixing of costs, stating the reasons on which it is based, may be reviewed by a decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within one month of the date of notification of the awarding of costs. It shall not be deemed to be filed until the fee for reviewing the amount of the costs has been paid. The Opposition Division, the Cancellation Division or the Board of Appeal, as the case may be, shall take a decision on the request for a review of the decision on the fixing of costs without oral proceedings.’.

(79) In Article 86(2), the second sentence is replaced by the following: ‘Each Member State shall designate a single authority responsible for verifying the authenticity of the decision referred to in paragraph 1 and shall communicate its contact details to the Office, the Court of Justice and the Commission. The order for the enforcement of the decision shall be appended to the decision by that authority, with the verification of the authenticity of the decision as the sole formality.’.

(80) Article 87 is replaced by the following: ‘Article 87 Register of EU trade marks 1. The Office shall keep a Register of EU trade marks which it shall keep up to date. 2. The Register shall contain the following entries relating to EU trade mark applications and registrations: (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 and address of the applicant; (e) the name and business address of the representative, other than a representative as referred to in the first sentence of Article 92(3); (f) the representation of the mark, with indications as to its nature; and, where applicable, a description of the mark; (g) an indication of the goods and services by their names; (h) particulars of claims of priority pursuant to Article 30; (i) particulars of claims of exhibition priority pursuant to Article 33; (j) particulars of claims of seniority of a registered earlier trade mark as referred to in Article 34; (k) a statement that the mark has become distinctive in consequence of the use which has been made of it, pursuant to Article 7(3); (l) an indication that the mark is a collective mark; (m) an indication that the mark is a certification mark; (n) the language in which the application was filed and the second language which the applicant has indicated in his application, pursuant to Article 119(3); (o) the date of registration of the mark in the Register and the registration number; (p) a statement that the application is the result of a transformation of an international registration designating the Union, pursuant to Article 161 of this Regulation, together with the date of the international registration pursuant to Article 3(4) of the Madrid Protocol or the date on which the territorial extension to the Union made subsequent to the international registration pursuant to Article 3ter(2) of the Madrid Protocol was recorded and, where applicable, the date of priority of the international registration. 3. The Register shall also contain the following entries, each accompanied by the date of recording of such entry: (a) changes in the name, address or nationality of the proprietor of an EU trade mark or a change in the State in which he is domiciled or has his seat or establishment; (b) changes in the name or business address of the representative, other than a representative as referred to in the first sentence of Article 92(3); (c) where a new representative is appointed, the name and business address of that representative; (d) amendments and alterations of the mark, pursuant to Articles 43 and 48, and corrections of errors; (e) notice of amendments to the regulations governing the use of the collective mark pursuant to Article 71; (f) particulars of claims of seniority of a registered earlier trade mark as referred to in Article 34, pursuant to Article 35; (g) total or partial transfers pursuant to Article 17; (h) creation or transfer of a right in rem pursuant to Article 19, and the nature of the right in rem; (i) levy of execution pursuant to Article 20 and insolvency proceedings pursuant to Article 21; (j) the grant or transfer of a licence pursuant to Article 22 and, where applicable, the type of licence; (k) renewal of a registration pursuant to Article 47, the date from which it takes effect and any restrictions pursuant to Article 47(4); (l) a record of a determination of the expiry of a registration pursuant to Article 47; (m) declarations of withdrawal or surrender by the proprietor of the mark pursuant to Articles 43 and 50 respectively; (n) the date of submission and the particulars of an opposition pursuant to Article 41, of an application pursuant to Article 56, or a counterclaim pursuant to Article 100(4) for revocation, or for a declaration of invalidity, or of an appeal pursuant to Article 60; (o) the date and content of a decision on an opposition, on an application or counterclaim pursuant to Article 57(6) or the third sentence of Article 100(6), or on an appeal pursuant to Article 64; (p) a record of the receipt of a request for conversion pursuant to Article 113(2); (q) the cancellation of the representative recorded pursuant to point (e) of paragraph 2 of this Article; (r) the cancellation of the seniority of a national mark; (s) the modification to or cancellation from the Register of the items referred to in points (h), (i) and (j) of this paragraph; (t) the replacement of the EU trade mark by an international registration pursuant to Article 157; (u) the date and number of international registrations based on the EU trade mark application which has been registered as an EU trade mark pursuant to Article 148(1); (v) the date and number of international registrations based on the EU trade mark pursuant to Article 148(2); (w) the division of an application pursuant to Article 44 and the division of a registration pursuant to Article 49, together with the items referred to in paragraph 2 of this Article in respect of the divisional registration, as well as the list of goods and services of the original registration as amended; (x) the revocation of a decision or an entry in the Register pursuant to Article 80, where the revocation concerns a decision or entry which has been published; (y) notice of amendments to the regulations governing the use of the certification mark pursuant to Article 74f. 4. The Executive Director may determine that items other than those referred to in paragraphs 2 and 3 of this Article are to be entered in the Register, subject to Article 123(4). 5. The Register may be maintained in electronic form. The Office shall collect, organise, make public and store the items referred to in paragraphs 2 and 3, including any personal data, for the purposes laid down in paragraph 9. The Office shall keep the register easily accessible for public inspection. 6. The proprietor of an EU trade mark shall be notified of any change in the Register. 7. The Office shall provide certified or uncertified extracts from the Register on request and on payment of a fee. 8. The processing of the data concerning the entries set out in paragraphs 2 and 3, including any personal data, shall take place for the purposes of: (a) administering the applications and/or registrations as described in this Regulation and acts adopted pursuant to it; (b) maintaining a public register for inspection by, and the information of, public authorities and economic operators, in order to enable them to exercise the rights conferred on them by this Regulation and be informed about the existence of prior rights belonging to third parties; and (c) producing reports and statistics enabling the Office to optimise its operations and improve the functioning of the system. 9. All the data, including personal data, concerning the entries in paragraphs 2 and 3 shall be considered to be of public interest and may be accessed by any third party. For reasons of legal certainty, the entries in the Register shall be kept for an indefinite period of time.’.

(81) The following articles are inserted: ‘Article 87a Database 1. In addition to the obligation to keep a Register within the meaning of Article 87, the Office shall collect and store in an electronic database all the particulars provided by applicants or any other party to the proceedings under this Regulation or acts adopted pursuant to it. 2. The electronic database may include personal data, beyond those included in the Register pursuant to Article 87, to the extent that such particulars are required by this Regulation or acts adopted pursuant to it. The collection, storage and processing of such data shall serve the purposes of: (a) administering the applications and/or registrations as described in this Regulation and acts adopted pursuant to it; (b) accessing the information necessary for conducting the relevant proceedings more easily and efficiently; (c) communicating with the applicants and other parties to the proceedings; (d) producing reports and statistics enabling the Office to optimise its operations and improve the functioning of the system. 3. The Executive Director shall determine the conditions of access to the electronic database and the manner in which its contents, other than the personal data referred to in paragraph 2 of this Article but including those listed in Article 87, may be made available in machine-readable form, including the charge for such access. 4. Access to the personal data referred to in paragraph 2 shall be restricted and such data shall not be made publicly available unless the party concerned has given his express consent. 5. All data shall be kept indefinitely. However, the party concerned may request the removal of any personal data from the database after 18 months from the expiry of the trade mark or the closure of the relevant inter partes procedure. The party concerned shall have the right to obtain the correction of inaccurate or erroneous data at any time. Article 87b Online access to decisions 1. The decisions of the Office shall be made available online for the information and consultation of the general public in the interest of transparency and predictability. Any party to the proceedings that led to the adoption of the decision may request the removal of any personal data included in the decision. 2. The Office may provide online access to judgments of national and Union courts related to its tasks in order to raise public awareness of intellectual property matters and promote convergence of practices. The Office shall respect the conditions of the initial publication with regard to personal data.’.

(82) Article 88 is amended as follows: (a) paragraph 4 is replaced by the following: ‘4. Where the files are inspected pursuant to paragraph 2 or 3 of this Article, documents relating to exclusion or objection pursuant to Article 137, draft decisions and opinions, and all other internal documents used for the preparation of decisions and opinions, as well as parts of the file which the party concerned showed a special interest in keeping confidential before the request for inspection of the files was made, unless inspection of such parts of the file is justified by overriding, legitimate interests of the party seeking inspection, may be withheld from inspection.’; (b) the following paragraphs are added: ‘5. Inspection of the files of EU trade mark applications and of registered EU trade marks shall be of the original document, or of copies thereof, or of technical means of storage if the files are stored in this way. The Executive Director shall determine the means of inspection. 6. Where inspection of files takes place as provided for in paragraph 7, the request for inspection of the files shall not be deemed to have been made until the required fee has been paid. No fee shall be payable if inspection of technical means of storage takes place online. 7. Inspection of the files shall take place at the premises of the Office. On request, inspection of the files shall be effected by means of issu