1995R2868 — EN — 10.03.2008 — 003.001

This document is meant purely as a documentation tool and the institutions do not assume any liability for its contents

Amended by:







NB: This consolidated version contains references to the European unit of accout and/or the ecu, which from 1 January 1999 should be understood as references to the euro — Council Regulation (EEC) No 3308/80 (OJ L 345, 20.12.1980, p. 1) and Coundil Regulation (EC) No 1103/97 (OJ L 162, 19.6.1997, p. 1).









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COMMISSION REGULATION (EC) No 2868/95

of 13 December 1995

implementing Council Regulation (EC) No 40/94 on the Community trade mark







THE COMMISSION OF THE EUROPEAN COMMUNITIES, Having regard to the Treaty establishing the European Community, Having regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ( 1 ) as amended by Regulation (EC) No 3288/94 ( 2 ), and in particular Article 140 thereof, Whereas Regulation (EC) No 40/94 (hereinafter ‘the Regulation’) creates a new trade mark system allowing a trade mark having effect throughout the Community to be obtained on the basis of an application to the Office for Harmonization in the Internal Market (trade marks and designs) (‘the Office’); Whereas for this purpose, the Regulation contains the necessary provisions for a procedure leading to the registration of a Community trade mark, as well as for the administration of Community trade marks, for appeals against decisions of the Office and for proceedings for the revocation or invalidation of a Community trade mark; Whereas Article 140 of the Regulation provides that the rules implementing the Regulation shall be adopted in an implementing regulation; Whereas the implementing regulation is to be adopted in accordance with the procedure laid down in Article 141 of the Regulation; Whereas this implementing regulation therefore lays down the rules necessary for implementing the provisions of the Regulation on the Community trade mark; Whereas these rules should ensure the smooth and efficient operating of trade mark proceedings before the Office; Whereas in accordance with Article 116 (1) of the Regulation, all the elements of the application for a Community trade mark specified in its Article 26 (1) as well as any other information the publication of which is prescribed by this implementing regulation should be published in all the official languages of the Community; Whereas, however, it is not appropriate for the trade mark itself, names, addresses, dates and any other similar data to be translated and published in all the official languages of the Community; Whereas the Office should make available standard forms for proceedings before the Office in all official languages of the Community; Whereas the measures envisaged in this Regulation are in accordance with the opinion of the Committee established under Article 141 of the Regulation, HAS ADOPTED THIS REGULATION:







Article 1

The rules implementing the Regulation shall be as follows:

TITLE I

APPLICATION PROCEDURE

Rule 1

Content of the application

(1) The application for a Community trade mark shall contain: (a) a request for registration of the mark as a Community trade mark; ▼M2 (b) the name, address and nationality of the applicant and the State in which he is domiciled or has his seat or an establishment. Names of natural persons shall be indicated by the persons family name and given name(s). Names of legal entities, as well as bodies falling under Article 3 of the Regulation, shall be indicated by their official designation and include the legal form of the entity, which may be abbreviated in a customary manner. The telephone numbers, fax numbers, electronic mail address and details of other data communications links under which the applicant accepts to receive communications may be given. Only one address shall, in principle, be indicated for each applicant. Where several addresses are indicated, only the address mentioned first shall be taken into account, except where the applicant designates one of the addresses as an address for service; ▼B (c) a list of the goods and services for which the trade mark is to be registered, in accordance with Rule 2 ►M2 , or a reference to the list of the goods and services of a previous Community trade mark application ◄ ; (d) a representation of the mark in accordance with Rule 3; (e) if the applicant has appointed a representative, his name and the address of his place of business in accordance with point (b); if the representative has more than one business address or if there are two or more representatives with different business addresses, the application shall indicate which address shall be used as an address for service; where such an indication is not made, only the first-mentioned address shall be taken into account as an address for service; (f) where the priority of a previous application is claimed pursuant to Article 30 of the Regulation, a declaration to that effect, stating the date on which and the country in or for which the previous application was filed; (g) where exhibition priority is claimed pursuant to Article 33 of the Regulation, a declaration to that effect, stating the name of the exhibition and the date of the first display of the goods or services; (h) where the seniority of one or more earlier trade marks, registered in a Member State, including a trade mark registered in the Benelux countries or registered under international arrangements having effect in a Member State (hereinafter referred to as ‘earlier registered trade marks, as referred to in Article 34 of the Regulation’) is claimed pursuant to Article 34 of the Regulation, a declaration to that effect, stating the Member State or Member States in or for which the earlier mark is registered, the date from which the relevant registration was effective, the number of the relevant registration, and the goods and services for which the mark is registered; (i) where applicable, a statement that the application is for registration of a Community collective mark pursuant to Article 64 of the Regulation; (j) specification of the language in which the application has been filed, and of the second language pursuant to Article 115 (3) of the Regulation; ▼M2 (k) the signature of the applicant or his representative in accordance with Rule 79; ▼M2 (l) where applicable, the request of a search report referred to in Article 39(2) of the Regulation. ▼B

(2) The application for a Community collective mark may include the regulations governing its use.

(3) The application may include a statement by the applicant that he disclaims any exclusive right to an element of the trade mark which is not distinctive, to be specified by the applicant.

(4) If there is more than one applicant, the application may contain the appointment of one applicant or representative as common representative.

Rule 2

List of goods and services

(1) The common classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, shall be applied to the classification of the goods and services.

(2) The list of goods and services shall be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified in only one class of the Nice Classification.

(3) The goods and services shall, in principle, be grouped according to the classes of the Nice classification, each group being preceded by the number of the class of that Classification to which that group of goods or services belongs and presented in the order of the classes under that Classification.

(4) The classification of goods and services shall serve exclusively administrative purposes. Therefore, goods and services may not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services may not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

Rule 3

Representation of the mark

(1) If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application. The use of small letters and capital letters shall be permitted and shall be followed accordingly in publications of the mark and in the registration by the Office.

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(2) In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears. The sheet on which the mark is reproduced shall not exceed DIN A4 size (29,7 cm high, 21 cm wide) and the space used for the reproduction (type-area) shall not be larger than 26,2 cm × 17 cm. A margin of at least 2,5 cm shall be left on the left-hand side. Where it is not obvious, the correct position of the mark shall be indicated by adding the word ‘top’ to each reproduction. The reproduction of the mark shall be of such quality as to enable it to be reduced or enlarged to a size not more than 8 cm wide by 16 cm high for publication in the Community Trade Mark Bulletin.

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(3) In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark.

(4) Where registration of a three-dimensional mark is applied for, the application shall contain an indication to that effect. The representation shall consist of a photographic reproduction or a graphic representation of the mark. The representation may contain up to six different perspectives of the mark.

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(5) Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added.

(6) Where registration of a sound mark is applied for, the representation of the trade mark shall consist of a graphical representation of the sound, in particular a musical notation; where the application is filed through electronic means, it may be accompanied by an electronic file containing the sound. The President of the Office shall determine the formats and maximum size of the electronic file.

Rule 4

Fees for the application

The fees payable for the application shall be:

(a) the basic fee;

(b) a class fee for each class exceeding three to which the goods or services belong according to Rule 2;

(c) where applicable, the search fee.

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Rule 5

Filing of the application

(1) The Office shall mark the documents making up the application with the date of its receipt and the file number of the application. 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.

(2) If the application is filed with the central industrial property office of a Member Sate or at the Benelux Trade Mark Office in accordance with Article 25 of the Regulation, the office of filing shall number all the pages of the application with arabic numerals. Before forwarding, the office of filing shall mark the documents making up the application with the date of receipt and the number of pages. The office of filing shall issue to the applicant without delay a receipt which shall include at least the nature and the number of the documents and the date of their receipt.

(3) If the Office receives an application forwarded by the central industrial property office of a Member State or the Benelux Trade Mark Office, it shall mark the application with the date of receipt and the file number and shall issue to the applicant without delay a receipt in accordance with the second sentence of paragraph 1, indicating the date of receipt at the Office.

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Rule 5a

Search report

The search reports shall be prepared using a standard form which contains at least the following information:

(a) the name of the central industrial property offices that carried out the search;

(b) the number of the trademark applications or registrations mentioned in the search report;

(c) the date of application and if applicable date of priority of the trademark applications or registrations mentioned in the search report;

(d) the date of registration of the trademarks mentioned in the search report;

(e) the name and contact address of the holder of the trademarks applications or registrations mentioned in the search report;

(f) a representation of the trademarks applied for or registered mentioned in the search report;

(g) an indication of the classes, according to the Nice Classification, for which the earlier national trademarks are applied for or registered or of the goods and services for which the trademarks mentioned in the search report are either applied for or registered.

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Rule 6

Claiming priority

(1) Where the priority of one or more previous applications pursuant to Article 30 of the Regulation is claimed in the application, the applicant shall indicate the file number of the previous application and file a copy of it within three months from the filing date. The copy shall be certified to be an exact copy of the previous application by the authority which received the previous application, and shall be accompanied by a certificate issued by that authority stating the date of filing of the previous application. ►M2 If the previous application is a Community trade mark application, the Office shall ex officio include a copy of the previous application in the file of the Community trade mark application. ◄

(2) Where the applicant wishes to claim the priority of one or more previous applications pursuant to Article 30 of the Regulation subsequent to the filing of the application, the declaration of priority, stating the date on which and the country in or for which the previous application was made, shall be submitted within a period of two months from the filing date. The indications and evidence required under paragraph 1 shall be submitted to the Office within a period of three months from receipt of the declaration of priority.

(3) If the language of the previous application is not one of the languages of the Office, the Office shall require the applicant to file, within a period specified by the Office, which shall be not less than three months, a translation of the previous application into one of these languages.

(4) The President of the Office may determine that the evidence to be provided by the applicant may consist of less than is required under paragraph 1, provided that the information required is available to the Office from other sources.

Rule 7

Exhibition priority

(1) Where the exhibition priority pursuant to Article 33 of the Regulation has been claimed in the application, the applicant shall, within three months from the filing date, file a certificate issued at the exhibition by the authority responsible for the protection of industrial property at the exhibition. This certificate shall declare that the mark was in fact used for the goods or services, and shall state the opening date of the exhibition and, where the first public use did not coincide with the opening date of the exhibition, the date of such first public use. The certificate must be accompanied by an identification of the actual use of the mark, duly certified by the abovementioned authority.

(2) Where the applicant wishes to claim an exhibition priority subsequently to the filing of the application, the declaration of priority, indicating the name of the exhibition and the date of the first display of the goods or services, shall be submitted within a period of two months from the filing date. The indications and evidence required under paragraph 1 shall be submitted to the Office within a period of three months from receipt of the declaration of priority.

Rule 8

Claiming the seniority of a national trade mark

(1) Where the seniority of one or more earlier registered trade marks, as referred to in Article 34 of the Regulation, has been claimed in the application, the applicant shall, within three months from the filing date, submit a copy of the relevant registration. The copy must be certified by the competent authority to be an exact copy of the relevant registration.

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(2) Where the applicant wishes to claim the seniority of one or more earlier registered trade marks as referred to in Article 34 of the Regulation, subsequent to the filing of the application, the declaration of seniority, indicating 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, shall be submitted within a period of two months from the filing date. The evidence required under paragraph 1 shall be submitted to the Office within a period of three months from receipt of the declaration of seniority.

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(3) The Office shall inform the Benelux Trade Mark Office or the central industrial property office of the Member State concerned of the effective claiming of seniority.

(4) The President of the Office may determine that the evidence to be provided by the applicant may consist of less than is required under paragraph 1, provided that the information required is available to the Office from other sources.

Rule 9

Examination of requirements for a filing date and of formal requirements

(1) If the application fails to meet the requirements for according a filing date because: (a) the application does not contain: (i) a request for registration of the mark as a Community trade mark; (ii) information identifying the applicant; (iii) a list of the goods and services for which the mark is to be registered; iv) a representation of the trade mark; or (b) the basic fee for the application has not been paid within one month of the filing of the application with the Office or, if the application has been filed with the central industrial property office of a Member State or with the Benelux Trade Mark Office, with that office, the Office shall notify the applicant that a date of filing cannot be accorded in view of those deficiencies.

(2) If the deficiencies referred to under paragraph 1 are remedied within two months of receipt of the notification, the date on which all the deficiencies are remedied shall determine the date of filing. If the deficiencies are not remedied before the time limit expires, the application shall not be dealt with as a Community trade mark application. Any fees paid shall be refunded.

(3) Where, although a date of filing has been accorded, the examination reveals that ( 3 )(a) the requirements of Rules 1, 2 and 3 or the other formal requirements governing applications laid down in the Regulation or in these Rules are not complied with; (b) the full amount of the class fees payable under Rule 4 (b), read in conjunction with Commission Regulation (EC) No 2869/95 (1) (hereinafter ‘the Fees Regulation’) has not been received by the Office; (c) where priority has been claimed pursuant to Rules 6 and 7, either in the application itself or within two months after the date of filing, the other requirements of the said Rules are not complied with; or (d) where seniority has been claimed pursuant to Rule 8, either in the application itself or within two months after the date of filing, the other requirements of Rule 8 are not complied with, the Office shall invite the applicant to remedy the deficiencies noted within such period as it may specify.

(4) If the deficiencies referred to in paragraph 3 (a) are not remedied before the time limit expires, the Office shall reject the application.

(5) If the outstanding class fees are not paid before the time limit expires, the application shall be deemed to have been withdrawn, unless it is clear which class or classes the amount paid is intended to cover. 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.

(6) If the deficiencies referred to in paragraph 3 concern the claim to priority, the right of priority for the application shall be lost.

(7) If the deficiencies referred to in paragraph 3 concern the claim to seniority, the right of seniority in respect of that application shall be lost.

(8) If the deficiencies referred to in paragraph 3 concern only some of the goods and 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.

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Rule 10

Searches by national offices

1. If the request for a search report referred to in Article 39(2) of the Regulation is not made in the application for a Community trade mark, or if the search fee referred to in Rule 4(c) is not paid within the time limit for paying the basic application fee, the application shall not be subjected to a search by the central industrial property offices.

2. An international registration designating the European Community shall not be subjected to a search by the central industrial property offices if the request for a search report pursuant to Article 39(2) of the Regulation is not made to the Office within one month starting with the date on which the International Bureau notifies the international registration to the Office, or if the search fee is not paid within the same period.

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Rule 11

Examination as to absolute grounds for refusal

(1) Where, pursuant to Article 7 of the Regulation, the trade mark may not be registered for all or any part of the goods or services applied for, the office shall notify the applicant of the grounds for refusing registration. The Office shall specify a period within which the applicant may withdraw or amend the application or submit his observations.

(2) Where, pursuant to Article 38 (2) of the Regulation, registration of the Community trade mark is subject to the applicant's stating that he disclaims any exclusive right in the non-distinctive elements in the mark, the Office shall notify the applicant thereof, stating the reasons, and shall invite him to submit the relevant statement within such period as it may specify.

(3) Where the applicant fails to overcome the ground for refusing registration or to comply with the condition laid down in paragraph 2 within the time limit, the Office shall refuse the application in whole or in part.

Rule 12

Publication of the application

The publication of the application shall contain:

(a) the applicant's name and address;

(b) where applicable, the name and business address of the representative appointed by the applicant other than a representative falling within the first sentence of Article 88 (3) of the Regulation; if there is more than one representative with the same business address, only the name and business address of the first-named representative shall be published and it shall be followed by the words ‘and others’; if there are two or more representatives with different business addresses, only the address for service determined pursuant to Rule 1 (1) (e) shall be published; where an association of representatives is appointed under Rule 76 (9), only the name and business address of the association shall be published;

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(c) the reproduction of the mark, together with the elements and descriptions referred to in Rule 3; where the reproduction of the mark is in colour or contains colours, the publication shall be in colour and shall indicate the colour or colours making up the mark, as well as, where applicable, the colour code indicated;

▼B

(d) the list of goods and services, 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 the classes of that classification;

(e) the date of filing and the file number;

(f) where applicable, particulars of the claim of priority pursuant to Article 30 of the Regulation;

(g) where applicable, particulars of the claim of exhibition priority pursuant to Article 33 of the Regulation;

(h) where applicable, particulars of the claim of seniority pursuant to Article 34 of the Regulation;

(i) where applicable, a statement that the mark has become distinctive in consequence of the use which has been made of it, pursuant to Article 7 (3) of the Regulation;

(j) where applicable, a statement that the application is for a Community collective mark;

(k) where applicable, a statement by the applicant disclaiming any exclusive right to an element of the mark pursuant to Rule 1 (3) or Rule 11 (2);

(l) the language in which the application was filed and the second language which the applicant has indicated pursuant to Article 115 (3) of the Regulation;

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(m) where applicable, a statement that the application results from a transformation of an international registration designating the European Community pursuant to Article 156 of the Regulation, together with the date of the international registration pursuant to Article 3(4) of the Madrid Protocol or the date on which the territorial extension to the European Community made subsequently to the international registration pursuant to Article 3 ter (2) of the Madrid Protocol was recorded and, where applicable, the date of priority of the international registration.

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Rule 13

Amendment of the application

(1) An application for amendment of the application under Article 44 of the Regulation shall contain: (a) the file number of the application; (b) the name and the address of the applicant in accordance with Rule 1 (1) (b); ▼M2 ————— ▼B (d) the indication of the element of the application to be corrected or amended, and that element in its corrected or amended version; (e) where the amendment relates to the representation of the mark, a representation of the mark as amended, in accordance with Rule 3.

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(3) If the requirements governing the amendment of the application 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 application for amendment.

(4) Where the amendment is published pursuant to Article 44 (2) of the Regulation, Rules 15 to 22 shall apply mutatis mutandis.

(5) A single application for amendment may be made for the amendment of the same element in two or more applications of the same applicant. Where the application for amendment is subject to the payment of a fee, the required fee shall be paid in respect of each application to be amended.

(6) Paragraphs 1 to 5 shall apply mutatis mutandis for applications to correct the name or the business address of a representative appointed by the applicant. Such applications shall not be subject to the payment of a fee.

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Rule 13a

Division of the application

(1) A declaration of the division of the application pursuant to Article 44a of the Regulation shall contain: (a) the file number of the application; (b) the name and address of the applicant in accordance with Rule 1(1)(b); (c) the list of goods and services which shall form the divisional application, or, where the division into more than one divisional application is sought, the list of goods and services for each divisional application; (d) the list of goods and services which shall remain in the original application.

(2) Where the Office finds that the requirements laid down in paragraph 1 are not fulfilled or the list of goods and services which shall form the divisional application overlap with the goods and services which shall remain in the original application, it shall invite the applicant to remedy the deficiencies noted within such period as it may specify. If the deficiencies are not remedied before the time limit expires, the Office shall refuse the declaration of division.

(3) The periods as referred to in Article 44a(2)(b) of the Regulation during which a declaration of division of the application is not admissible shall be: (a) the period before a date of filing has been accorded; (b) the period of three months following the publication of the application provided for in Article 42(1) of the Regulation; (c) the period after the date of issue of the notification to pay the registration fee referred to in Rule 23(1).

(4) Where the Office finds, that the declaration of division is inadmissible pursuant to Article 44a of the Regulation or pursuant to paragraph 3(a) and (b), it shall refuse the declaration of division.

(5) The Office shall establish a separate file for the divisional application, which shall consist of a complete copy of the file of the original application, including the declaration of division and the correspondence relating thereto. The Office shall assign a new application number to the divisional application.

(6) Where the declaration of division relates to an application which has already been published pursuant to Article 40 of the Regulation, the division shall be published in the Community Trade Marks Bulletin. The divisional application shall be published; the publication shall contain the indications and elements referred to in Rule 12. The publication does not open a new period for the filing of oppositions.

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Rule 14

Correction of mistakes and errors in publications

(1) Where the publication of the application contains a mistake or error attributable to the Office, the Office shall correct the mistake or error acting of its own motion or at the request of the applicant.

(2) Where a request as referred to in paragraph 1 is made by the applicant, Rule 13 shall apply mutatis mutandis. The request shall not be subject to the payment of a fee.

(3) The corrections effected under this Rule shall be published.

(4) Article 42 (2) of the Regulation and Rules 15 to 22 shall apply mutatis mutandis where the correction concerns the list of goods or services or the representation of the mark.

TITLE II

PROCEDURE FOR OPPOSITION AND PROOF OF USE

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Rule 15

Notice of opposition

(1) A notice of opposition may be entered on the basis of one or more earlier marks within the meaning of Article 8(2) of the Regulation (earlier marks) and one and/or more other earlier rights within the meaning of Article 8(4) of the Regulation (earlier rights), provided that the earlier marks or earlier rights all belong to the same proprietor or proprietors. If an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them.

(2) The notice of opposition shall contain: (a) the file number of the application against which opposition is entered and the name of the applicant for the Community trade mark; (b) a clear identification of the earlier mark or earlier right on which the opposition is based, namely: (i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) of the Regulation or where the opposition is based on Article 8(3) of the Regulation, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a Community trade mark; (ii) where the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of the Regulation, the indication of the Member State where the mark is well-known and either the indications referred to in point (i) or a representation of the mark; (iii) where the opposition is based on an earlier right within the meaning of Article 8(4), an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Community or in one or more Member States, and if so, an indication of the Member States; (c) the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4) and (5) of the Regulation are fulfilled; (d) the filing date and, where available, the registration date and the priority date of the earlier mark, unless it is an unregistered well-known trade mark; (e) a representation of the earlier mark as registered or applied for; if the earlier mark is in colour, the representation shall be in colour; (f) the goods and services on which the opposition is based; (g) where the opposition is based on an earlier mark having a reputation within the meaning of Article 8(5) of the Regulation, an indication of the Member State in which, and the goods and services for which, the mark has a reputation; (h) as concerns the opposing party: (i) the name and address of the opposing party in accordance with Rule 1(1)(b); (ii) where the opposing party has appointed a representative, the name and business address of the representative in accordance with Rule 1(1)(e); (iii) where the opposition is entered by a licensee or by a person who is entitled under the relevant national law to exercise an earlier right, a statement to that effect and indications concerning the authorisation or entitlement to file the opposition.

(3) The notice of opposition may contain: (a) an indication of the goods and services against which the opposition is directed; in the absence of such an indication the opposition shall be considered to be directed against all of the goods and services of the opposed Community trade mark application; (b) a reasoned statement setting out the main facts and arguments on which the opposition relies, and evidence to support the opposition.

(4) Where the opposition is based on more than one earlier mark or earlier right, paragraphs 2 and 3 shall apply for each of these rights.

Rule 16

Use of languages in the notice of opposition

(1) The time limit referred to in Article 115(6) of the Regulation within which the opposing party has to file a translation of his opposition shall be one month from the expiry of the opposition period.

(2) Where the opposing party or the applicant, before the date on which the opposition proceedings are deemed to commence pursuant to Rule 18(1), informs the Office that the applicant and the opposing party have agreed on a different language for the opposition proceedings pursuant to Article 115(7) of the Regulation, the opposing party shall, where the notice of opposition has not been filed in that language, file a translation of the notice of opposition in that language within a period of one month from the said date. Where the translation is not filed or filed late, the language of the proceedings shall remain unchanged.

Rule 16a

Information of the applicant

Any notice of opposition and any document submitted by the opposing party, as well as any communication addressed to one of the parties by the Office prior to the expiry of the period referred to in Rule 18 shall be sent by the Office to the other party for purposes of informing of the introduction of an opposition.

Rule 17

Examination of admissibility

(1) If the opposition fee has not been paid within the opposition period, the opposition shall be deemed not to have been entered. If the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party.

(2) If the notice of opposition has not been filed within the opposition period, or if the notice of opposition does not clearly identify the application against which opposition is entered or the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(a) and (b), or does not contain grounds for opposition in accordance with Rule 15(2)(c), and if those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

(3) Where the opposing party does not submit a translation as required under Rule 16(1), the opposition shall be rejected as inadmissible. Where the opposing party submits an incomplete translation, the part of the notice of opposition that has not been translated shall not be taken into account in the examination of admissibility.

(4) If the notice of opposition does not comply with the other provisions of Rule 15, the Office shall inform the opposing party accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the opposition as inadmissible.

(5) Any finding pursuant to paragraph 1 that the notice of opposition is deemed not to have been entered and any decision to reject an opposition as inadmissible under paragraphs 2, 3 and 4 shall be notified to the applicant.

Rule 18

Commencement of opposition proceedings

(1) When the opposition is found admissible pursuant to Rule 17, the Office shall send a communication to the parties informing them that the opposition proceedings shall be deemed to commence two months after receipt of the communication. This period may be extended up to a total of 24 months if both parties submit requests for such an extension before the period expires.

(2) If, within the period referred to in paragraph 1, the application is withdrawn or restricted to goods and services against which the opposition is not directed, or the Office is informed about a settlement between the parties, or the application is rejected in parallel proceedings, the opposition proceedings shall be closed.

(3) If, within the period referred to in paragraph 1, the applicant restricts the application by deleting some of the goods and services against which the opposition is directed, the Office shall invite the opposing party to state, within such a period as it may specify, whether he maintains the opposition, and if so, against which of the remaining goods and services. If the opposing party withdraws the opposition in view of the restriction the opposition proceedings shall be closed.

(4) If before expiry of the period referred to in paragraph 1 the opposition proceedings are closed pursuant to paragraphs 2 or 3, no decision on costs shall be taken.

(5) If before expiry of the period referred to in paragraph 1 the opposition proceedings are closed following a withdrawal or restriction of the application or pursuant to paragraph 3, the opposition fee shall be refunded.

Rule 19

Substantiation of the opposition

(1) The Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).

(2) Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence: (a) if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting: (i) if the trade mark is not yet registered, a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed; or (ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered; (b) if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of the Regulation, evidence showing that this mark is well-known in the relevant territory; (c) if the opposition is based on a mark with reputation within the meaning of Article 8(5) of the Regulation, in addition to the evidence referred to in point (a) of this paragraph, evidence showing that the mark has a reputation, as well as evidence or arguments showing that 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; (d) if the opposition is based on an earlier right within the meaning of Article 8(4) of the Regulation, evidence of its acquisition, continued existence and scope of protection of that right; (e) if the opposition is based on Article 8(3) of the Regulation, evidence of the opposing party's proprietorship and of the nature of his relationship with the agent or representative.

(3) The information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

(4) The Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Rule 20

Examination of the opposition

(1) If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.

(2) If the opposition is not rejected pursuant to paragraph 1, the Office shall communicate the submission of the opposing party to the applicant and shall invite him to file his observations within a period specified by the Office.

(3) If the applicant submits no observations, the Office shall base its ruling on the opposition on the evidence before it.

(4) The observations submitted by the applicant shall be communicated to the opposing party who shall be invited by the Office, if it considers it necessary to do so, to reply within a period specified by the Office.

(5) Rule 18(2) and (3) shall apply mutatis mutandis after the date on which the opposition proceedings are deemed to commence.

(6) In appropriate cases, the Office may invite the parties to limit their observations to particular issues, in which case it shall allow the party to raise the other issues at a later stage of the proceedings. In no case shall the Office be required to inform the parties which facts or evidence could be or have not been submitted.

(7) The Office may suspend opposition proceedings: (a) where the opposition is based on an application for registration pursuant to Article 8(2)(b) of the Regulation until a final decision is taken in that proceeding; (b) where the opposition is based on an application for registration for a geographical indication or designation of origin under Council Regulation (EEC) No 2081/92 ( 4 ) until a final decision is taken in that proceeding; or (c) where a suspension is appropriate under the circumstances.

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Rule 21

Multiple oppositions

(1) Where a number of oppositions have been entered in respect of the same application for a Community trade mark, the Office may deal with them in one set of proceedings. The Office may subsequently decide to no longer deal with them in this way.

(2) If a preliminary examination of one or more oppositions reveals that the Community trade mark for which an application for registration has been filed is possibly not eligible for registration in respect of some or all of the goods or services for which registration is sought, the Office may suspend the other opposition proceedings. The Office shall inform the remaining opposing parties of any relevant decisions taken during those proceedings which are continued.

(3) Once a decision rejecting the application has become final, the oppositions on which a decision was deferred in accordance with paragraph 2 shall be deemed to have been disposed of and the opposing parties concerned shall be informed accordingly. Such disposition shall be considered to constitute a case which has not proceeded to judgment within the meaning of Article 81 (4) of the Regulation.

(4) The Office shall refund 50 % of the opposition fee paid by each opposing party whose opposition is deemed to have been disposed of in accordance with paragraphs 1, 2 and 3.

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Rule 22

Proof of use

(1) A request for proof of use pursuant to Article 43(2) or (3) of the Regulation shall be admissible only if the applicant submits such a request within the period specified by the Office pursuant to Rule 20(2).

(2) Where the opposing party has to furnish proof of use or show that there are proper reasons for non-use, the Office shall invite him to provide the proof required within such period as it shall specify. If the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.

(3) The indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 4.

(4) The evidence shall be filed in accordance with Rules 79 and 79a and shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of the Regulation.

(5) A request for proof of use may be made with or without submitting at the same time observations on the grounds on which the opposition is based. Such observations may be filed together with the observations in reply to the proof of use.

(6) Where the evidence supplied by the opposing party is not in the language of the opposition proceedings, the Office may require the opposing party to submit a translation of that evidence in that language, within a period specified by the Office.

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TITLE III

REGISTRATION PROCEDURE

Rule 23

Registration of the trade mark

(1) The registration fee provided for in Article 45 of the Regulation shall consist of (a) a basic fee; and (b) a class fee for each class exceeding three in respect of which the mark is to be registered.

(2) Where no opposition has been entered or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the Office shall request the applicant to pay the registration fee within two months of receipt of the request.

(3) If the registration fee is not paid within due time, it may still be validly paid within two months of notification of a communication pointing out the failure to observe the time limit, provided that within this period the additional fee specified in the Fees Regulations is paid.

(4) On receipt of the registration fee the mark applied for and the particulars referred to in Rule 84 (2) shall be recorded in the Register of Community trade marks.

(5) The registration shall be published in the Community Trade Marks Bulletin.

(6) The registration fee shall be refunded if the trade mark applied for is not registered.

Rule 24

Certificate of registration

(1) The Office shall issue to the proprietor of the trade mark a certificate of registration which shall contain the entries in the Register provided for in Rule 84 (2) and a statement to the effect that those entries have been recorded in the Register.

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(2) The Office shall provide certified or uncertified copies of the certificate of registration, upon payment of a fee.

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Rule 25

Alteration of the registration

(1) An application for alteration of the registration pursuant to Article 48 (2) of the Regulation shall contain: (a) the registration number, (b) the name and the address of the proprietor of the mark in accordance with Rule 1 (1) (b); ▼M2 ————— ▼B (d) the indication of the element in the representation of the mark to be altered and that element in its altered version; (e) a representation of the mark as altered, in accordance with Rule 3.

(2) The application shall be deemed not to have been filed until the required fee has been paid. If the fee has not been paid or has not been paid in full, the Office shall inform the applicant accordingly.

(3) If the requirements governing the alteration of the registration are not fulfilled, the Office shall communicate the deficiency to the applicant. If the deficiency is not remedied within a period to be specified by the Office, the Office shall reject the application.

(4) Where the registration of the alteration is challenged pursuant to Article 48 (3) of the Regulation, the provisions on opposition contained in the Regulation and in these Rules shall apply mutatis mutandis.

(5) A single application may be made for the alteration of the same element in two or more registrations of the same proprietor. The required fee shall be paid in respect of each registration to be altered.

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Rule 25a

Division of a registration

(1) A declaration of the division of a registration pursuant to Article 48a of the Regulation shall contain: (a) the registration number; (b) the name and address of the proprietor of the trade mark in accordance with Rule 1(1)(b); (c) the list of goods and services which shall form the divisional registration, or, where the division into more than one divisional registration is sought, the list of goods and services for each divisional registration; (d) the list of goods and services which shall remain in the original registration.

(2) Where the Office finds that the requirements laid down in paragraph 1 are not fulfilled or the list of goods and services which shall form the divisional registration overlap with the goods and services which shall remain in the original registration, it shall invite the applicant to remedy the deficiencies noted within such period as it may specify. If the deficiencies are not remedied before the time limit expires, the Office shall refuse the declaration of division.

(3) Where the Office finds, that the declaration of division is inadmissible pursuant to Article 48a of the Regulation, it shall refuse the declaration of division.

(4) The Office shall establish a separate file for the divisional registration, which shall consist of a complete copy of the file of the original registration, including the declaration of division and the correspondence relating thereto. The Office shall assign a new registration number to the divisional registration.

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Rule 26

Change of the name or address of the proprietor of the Community trade mark or of his registered representative

(1) A change of the name or address of the proprietor of the Community trade mark which is not an alteration of the Community trade mark pursuant to Article 48 (2) of the Regulation and which is not the consequence of a whole or partial transfer of the registered mark shall, at the request of the proprietor, be recorded in the register.

(2) An application for the change of the name or address of the proprietor of the registered mark shall contain: (a) the registration number of the mark; (b) the name and the address of the proprietor of the mark as recorded in the register; (c) the indication of the name and address of the proprietor of the mark, as amended, in accordance with Rule 1 (1) (e). ▼M2 ————— ▼B

(3) The application shall not be subject to payment of a fee.

(4) A single application may be made for the change of the name or address in respect of two or more registrations of the same proprietor.

(5) If the requirements governing the recording of a change are not fulfilled, the Office shall communicate the deficiency to the applicant. If the deficiency is not remedied within a period to be specified by the Office, the Office shall reject the application.

(6) Paragraphs 1 to 5 shall apply mutatis mutandis to a change of the name or address of the registered representative.

(7) Paragraphs 1 to 6 shall apply mutatis mutandis to applications for Community trade marks. The change shall be recorded in the files kept by the Office on the Community trade mark application.

Rule 27

Correction of mistakes and errors in the register and in the publication of the registration

(1) Where the registration of the mark or the publication of the registration contains a mistake or error attributable to the Office, the Office shall correct the error or mistake of its own motion or at the request of the proprietor.

(2) Where such a request is made by the proprietor, Rule 26 shall apply mutatis mutandis. The request shall not be subject to payment of a fee.

(3) The Office shall publish the corrections made under this Rule.

Rule 28

Claiming seniority after registration of the Community trade mark

(1) An application pursuant to Article 35 of the Regulation to obtain the seniority of one or more earlier registered trade marks as referred to in Article 34 of the Regulation, shall contain: (a) the registration number of the Community trade mark; (b) the name and address of the proprietor of the Community trade mark in accordance with Rule 1 (1) (b); ▼M2 ————— ▼M2 (d) an indication of the Member State or Member States in or for which the earlier mark is registered, the number and the filing date of the relevant registration, and the goods and services for which the earlier mark is registered; ▼B (e) an indication of the goods and services in respect of which seniority is claimed; (f) a copy of the relevant registration; the copy must be certified as an exact copy of the relevant registration by the competent authority.

(2) If the requirements governing the claiming of seniority are not fulfilled, the Office shall communicate the deficiency to the applicant. If the deficiency is not remedied within a period specified by the Office, the Office shall reject the application.

(3) The Office shall inform the Benelux Trade Mark Office or the central industrial property office of the Member State concerned of the effective claiming of seniority.

(4) The President of the Office may determine that the material to be provided by the applicant may consist of less than is required under paragraph 1 (f), provided that the information required is available to the Office from other sources.

TITLE IV

RENEWAL

Rule 29

Notification of expiry

At least six months before expiry of the registration the Office shall inform the proprietor of the Community trade mark, and any person having a registered right, including a licence, in respect of the Community trade mark, that the registration is approaching expiry. Failure to give such notification shall not affect the expiry of the registration.

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Rule 30

Renewal of registration

(1) An application for renewal shall contain: (a) the name of the person requesting renewal; (b) the registration number of the Community trade mark to be renewed; (c) if the renewal is requested for only part of the goods and services for which the mark is registered, an 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 the classes of that classification.

(2) The fees payable under Article 47 of the Regulation for the renewal of a Community trade mark shall consist of the following: (a) a basic fee; (b) a class fee for each class exceeding three in respect of which renewal is applied for; and (c) where applicable, the additional fee for late payment of the renewal fee or late submission of the request for renewal, pursuant to Article 47(3) of the Regulation, as specified in the Fees Regulation.

(3) It shall be deemed to constitute a request for renewal if the payment referred to in paragraph 2 is made by a means of payment referred to in Article 5(1) of the Fees Regulation, provided that it contains all the indications required under paragraph 1 (a) and (b) of this Rule and Article 7(1) of the Fees Regulation.

(4) Where the application for renewal is filed within the periods provided for in Article 47(3) of the Regulation, but the other conditions governing renewal provided for in Article 47 of the Regulation and these Rules are not satisfied, the Office shall inform the applicant of the deficiencies found.

(5) Where an application for renewal is not submitted or is submitted after expiry of the period provided for in the third sentence of Article 47(3) of the Regulation, or where the fees are not paid or are paid only after the period in question has expired, or where the deficiencies are not remedied within that period, the Office shall determine that the registration has expired and shall so notify the proprietor of the Community trade mark. Where the fees paid are insufficient to cover all the classes of goods and services for which renewal is requested, such a determination shall not be made if it is clear which class or classes are to be covered. In the absence of other criteria, the Office shall take the classes into account in the order of classification.

(6) Where the determination made pursuant to paragraph 5 has become final, the Office shall cancel the mark from the register. The cancellation shall take effect from the day following the day on which the existing registration expired.

(7) Where the renewal fees provided for in paragraph 2 have been paid but the registration is not renewed, those fees shall be refunded.

(8) A single application 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.

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TITLE V

TRANSFER, LICENCES AND OTHER RIGHTS, CHANGES

Rule 31

Transfer

(1) An application for registration of a transfer under Article 17 of the Regulation shall contain: (a) the registration number of the Community trade mark; (b) particulars of the new proprietor in accordance with Rule 1 (1) (b); (c) where not all the registered goods or services are included in the transfer, particulars of the registered goods or services to which the transfer relates; (d) documents duly establishing the transfer in accordance with Article 17 (2) and (3) of the Regulation;

(2) The application may contain, where applicable, the name and business address of the representative of the new proprietor, to be set out in accordance with Rule 1 (1) (e).

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(5) It shall constitute sufficient proof of transfer under paragraph 1 (d): (a) that the application for registration of the transfer is signed by the registered proprietor or his representative and by the successor in title or his representative; or, (b) that the application, if submitted by the successor in title, is accompanied by a declaration, signed by the registered proprietor or his representative, that he agrees to the registration of the successor in title; or (c) that the application is accompanied by a completed transfer form or document, as specified in Rule 83 (1) (d), signed by the registered proprietor or his representative and by the successor in title or his representative.

(6) Where the conditions applicable to the registration of a transfer, as laid down in Article 17 (1) to (4) of the Regulation, in paragraphs 1 to 4 above, and in other applicable Rules are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period specified by the Office, it shall reject the application for registration of the transfer.

(7) A single application for registration of a transfer may be submitted for two or more marks, provided that the registered proprietor and the successor in title are the same in each case.

(8) Paragraphs 1 to 7 shall apply mutatis mutandis to applications for Community trade marks. The transfer shall be recorded in the files kept by the Office concerning the Community trade mark application.

Rule 32

Partial Transfers

(1) Where the application for registration of a transfer relates only to some of the goods and services for which the mark is registered, the application shall contain an indication of the goods and services to which the partial transfer relates.

(2) The goods and services in the original registration shall be distributed between the remaining registration and the new registration so that the goods and services in the remaining registration and the new registration shall not overlap.

(3) Rule 31 shall apply mutatis mutandis to applications for registrations of a partial transfer.

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(4) The Office shall establish a separate file for the new registration, which shall consist of a complete copy of the file of the original registration, including the application for registration of the partial transfer and the correspondence relating thereto. The Office shall assign a new registration number to the new registration.

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(5) 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 these 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.

Rule 33

Registration of licences and other rights

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(1) Rule 31(1), (2), (5) and (7) shall apply mutatis mutandis to the registration of a licence, of a transfer of a licence, of a right in rem, of a transfer of a right in rem, of an enforcement measure or of insolvency proceedings, subject to the following: (a) Rule 31(1)(c) shall not apply in respect of a request for registration of a right in rem, of a levy of execution or of insolvency proceedings; (b) Rule 31(1)(d) and (5) shall not apply where the request was made by the proprietor of the Community trade mark.

(2) The application for registration of a licence, a transfer of a licence, a right in rem, a transfer of a right in rem or an enforcement measure shall not be deemed to have been filed until the required fee has been paid.

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(3) Where the conditions applicable to registration, as laid down in ►M2 Articles 19 to 22 ◄ of the Regulation, ►M2 in paragraph 1 of this Rule and in Rule 34(2), ◄ and the other applicable Rules are not fulfilled, the Office shall notify the applicant of the irregularity. If the irregularity is not corrected within a period specified by the Office, it shall reject the application for registration.

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(4) Paragraphs 1 and 3 shall apply mutatis mutandis to applications for Community trade marks. Licences, rights in rem, insolvency proceedings and enforcement measures shall be recorded in the files kept by the Office concerning the Community trade mark application.

Rule 34

Special provisions for the registration of a licence

(1) The application for registration of a licence may contain a request to record the licence in the Register as one or more of the following: (a) an exclusive licence; (b) a sub-licence in case where the licence is granted by a licensee whose licence is recorded in the Register; (c) a licence limited to only a part of the goods or services for which the mark is registered; (d) a licence limited to part of the Community; (e) a temporary licence.

(2) Where a request is made to record the licence as a licence pursuant to paragraph 1(c), (d) and (e), the application for registration of a licence shall indicate the goods and services and the part of the Community and the time period for which the licence is granted.

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Rule 35

Cancellation or modification of the registration of licences and other rights

(1) A registration effected under Rule 33 (1) shall be cancelled at the request of one of the persons concerned.

(2) The application shall contain: (a) the registration number of the Community trade mark; and (b) particulars of the right whose registration is to be cancelled.

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(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.

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(4) The application shall be accompanied by documents showing that the registered right no longer exists or by a statement by the licensee or the holder of another right, to the effect that he consents to cancellation of the registration.

(5) Where the requirements for cancellation of the registration are not satisfied, the Office shall notify the applicant of the irregularity. If the irregularity is not corrected within a period specified by the Office, it shall reject the application for cancellation of the registration.

(6) Paragraphs 1, 2, 4 and 5 shall apply mutatis mutandis to a request for the modification of a registration effected under Rule 33 (1).

(7) Paragraphs 1 to 6 shall apply mutatis mutandis to entries made in the files pursuant to Rule 33 (4).

TITLE VI

SURRENDER

Rule 36

Surrender

(1) A declaration of surrender pursuant to Article 49 of the Regulation shall contain: (a) the registration number of the Community trade mark; (b) the name and address of the proprietor in accordance with Rule 1 (1) (b); ▼M2 ————— ▼B (d) where surrender is declared only for some of the goods and services for which the mark is registered, the goods and services for which the surrender is declared or the goods and services for which the mark is to remain registered.

(2) Where a right of a third party relating to the Community trade mark is entered in the register, it shall be sufficient proof of his agreement to the surrender that a declaration of consent to the surrender is signed by the proprietor of that right or his representative. Where a licence has been registered, surrender shall be registered three months after the date on which the proprietor of the Community trade mark satisfies the Office that he has informed the licensee of his intention to surrender it. If the proprietor proves to the Office before the expiry of that period that the licensee has given his consent, the surrender shall be registered forthwith.

(3) 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 the surrender in the Register.

TITLE VII

REVOCATION AND INVALIDITY

Rule 37

Application for revocation or for a declaration of invalidity

An application to the Office for revocation or for a declaration of invalidity pursuant to Article 55 of the Regulation shall contain:

(a) as concerns the registration in respect of which revocation or a declaration of invalidity is sought; (i) the registration number of the Community trade mark in respect of which revocation or a declaration of invalidity is sought; (ii) the name and address of the proprietor of the Community trade mark in respect of which revocation or a declaration of invalidity is sought; (iii) a statement of the registered goods and services in respect of which revocation or a declaration of invalidity is sought;

(b) as regards the grounds on which the application is based, (i) in the case of an application pursuant to Article 50 or Article 51 of the Regulation, a statement of the grounds on which the application for revocation or a declaration of invalidity is based; (ii) in the case of an application pursuant to Article 52 (1) of the Regulation, particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity; (iii) in the case of an application pursuant to Article 52 (2) of the Regulation, particulars of the right on which the application for a declaration of invalidity is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 52 (2) of the Regulation or that he is entitled under the national law applicable to lay claim to that right; (iv) an indication of the facts, evidence and arguments presented in support of those grounds;

(c) as concerns the applicant, (i) his name and address in accordance with Rule 1 (1) (b); (ii) if the applicant has appointed a representative, the name and the business address of the representative, in accordance with Rule 1 (1) (e).

Rule 38

Languages used in revocation or invalidity proceedings

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(1) The time limit referred to in Article 115(6) of the Regulation within which the applicant for revocation or a declaration of invalidity has to file a translation of his application shall be one month, starting with the date of the filing of his application, failing which the application shall be rejected as inadmissible.

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(2) Where the evidence in support of the application is not filed in the language of the revocation or invalidity proceedings, the applicant shall file a translation of that evidence into that language within a period of two months after the filing of such evidence.

(3) Where the applicant for revocation or for a declaration of invalidity or the proprietor of the Community trade mark inform the Office before the expiry of a period of two months from receipt by the Community trade mark proprietor of the communication referred to in Rule 40 (1), that they have agreed on a different language of proceedings pursuant to Article 115 (7) of the Regulation, the applicant shall, where the application was not filed in that language, file a translation of the application in that language within a period of one month from the said date. ►M2 Where the translation is not filed or filed late, the language of the proceedings shall remain unchanged. ◄

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Rule 39

Rejection of the application for revocation or for declaration of invalidity as inadmissible

(1) Where the Office finds that the required fee has not been paid, it shall invite the applicant to pay the fee within a period specified by it. If the required fee is not paid within the period specified by the Office, the Office shall inform the applicant that the application for revocation or for declaration of invalidity is deemed not to have been filed. If the fee has been paid after expiry of the period specified, it shall be refunded to the applicant.

(2) Where the translation required under Rule 38(1) is not filed within the prescribed period, the Office shall reject the application for revocation or for declaration of invalidity as inadmissible.

(3) If the Office finds that the application does not comply with Rule 37, it shall invite the applicant to remedy the deficiencies found within such period as it may specify. If the deficiencies are not remedied before expiry of the time limit, the Office shall reject the application as inadmissible.

(4) Any decision to reject an application for revocation or declaration of invalidity under paragraph 2 or 3 shall be communicated to the applicant and the proprietor of the Community trade mark.

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Rule 40

Examination of the application for revocation or for a declaration of invalidity

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(1) Every application for revocation or for declaration of invalidity which is deemed to have been filed shall be notified to the proprietor of the Community trade mark. When the Office has found the application admissible, it shall invite the proprietor of the Community trade mark to file his observations within such period as it may specify.

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(2) If the proprietor of the Community trade mark files no observations, the Office may decide on the revocation or invalidity on the basis of the evidence before it.

(3) Any observations filed by the proprietor of the Community trade mark shall be communicated to the applicant, who shall be requested by the Office, if it sees fit, to reply within a period specified by the Office.

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(4) Save where Rule 69 otherwise provides or allows, all observations filed by the parties shall be sent to the other party concerned.

(5) In the case of an application for revocation based on Article 50(1)(a) of the Regulation, the Office shall invite the proprietor of the Community trade mark to furnish proof of genuine use of the mark, within such period as it may specify. If the proof is not provided within the time limit set, the Community trade mark shall be revoked. Rule 22(2), (3) and (4) shall apply mutatis mutandis.

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(6) If the applicant has to furnish proof of use or proof that there are proper reasons for non-use under Article 56(2) or (3) of the Regulation, the Office shall invite the applicant to furnish proof of genuine use of the mark, within such period as it may specify. If the proof is not provided within the time limit set, the application for declaration of invalidity shall be rejected. Rule 22(2), (3) and (4) shall apply mutatis mutandis.

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Rule 41

Multiple applications for revocation or for a declaration of invalidity

(1) Where a number of applications for revocation or for a declaration of invalidity have been filed relating to the same Community trade mark, the Office may deal with them in one set of proceedings. The Office may subsequently decide no longer to deal with them in this way.

(2) Rule 21 (2) (3) and (4) shall apply mutatis mutandis.

TITLE VIII

COMMUNITY COLLECTIVE MARKS

Rule 42

Application of provisions

The provisions of these Rules shall apply to Community collective marks, subject to Rule 43.

Rule 43

Regulation governing Community collective marks

(1) Where the application for a Community collective trade mark does not contain the regulations governing its use pursuant to Article 65 of the Regulation, those regulations shall be submitted to the Office within a period of two months after the date of filing.

(2) The regulations governing Community collective marks shall specify: (a) the name of the applicant and his office address; (b) the object of the association or the object for which the legal person governed by public law is constituted; (c) the bodies authorized to represent the association or the said legal person; (d) the conditions for membership; (e) the persons authorized to use the mark; (f) where appropriate, the conditions governing use of the mark, including sanctions; (g) where appropriate, the authorization referred to in the second sentence of Article 65 (2) of the Regulation.

TITLE IX

CONVERSION

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Rule 44

Application for conversion

(1) An application for conversion of a Community trade mark application or a registered Community trade mark into a national trade mark application pursuant to Article 108 of the Regulation shall contain: (a) the name and the address of the applicant for conversion in accordance with Rule 1(1)(b); (b) the filing number of the Community trade mark application or the registration number of the Community trade mark; (c) the indication of the ground for conversion in accordance with Article 108(1)(a) or (b) of the Regulation; (d) the specification of the Member State or the Member States in respect of which conversion is requested; (e) where the request does not relate to all of the goods and services for which the application has been filed or for which the trade mark has been registered, the application shall contain an indication of the goods and services for which conversion is requested, and, where conversion is requested in respect of more than one Member State and the list of goods and services is not the same for all Member States, an indication of the respective goods and services for each Member State; (f) where conversion is requested pursuant to Article 108(6) of the Regulation, the application shall contain the indication of the date on which the decision of the national court has become final, and a copy of that decision; that copy may be submitted in the language in which the decision was given.

(2) The application for conversion shall be filed within the relevant period pursuant to Article 108(4), (5) or (6) of the Regulation. Where conversion is requested following a failure to renew the registration, the period of three months provided for in Article 108(5) of the Regulation shall begin to run on the day following the last day on which the request for renewal can be presented pursuant to Article 47(3) of the Regulation.

Rule 45

Examination of application for conversion

(1) Where the application for conversion does not comply with the requirements of Article 108(1) or (2) of the Regulation or has not been filed within the relevant period of three months or does not comply with Rule 44 or other Rules, the Office shall notify the applicant accordingly and specify a period within which he may amend the application or furnish any missing information or indications.

(2) Where the conversion fee has not been paid within the relevant period of three months, the Office shall inform the applicant that the application for conversion is deemed not to have been filed.

(3) Where the missing indications have not been furnished within the period specified by the Office, the Office shall reject the application for conversion. Where Article 108(2) of the Regulation applies, the Office shall reject the application for conversion as inadmissible only with respect to those Member States for which conversion is excluded under that provision.

(4) If the Office or a Community trade mark court has refused the Community trade mark application or has declared the Community trade mark invalid on absolute grounds by reference to the language of a Member State, conversion shall be excluded under Article 108(2) of the Regulation for all the Member States in which that language is one of the official languages. If the Office or a Community trade mark court has refused the Community trade mark application or has declared the Community trade mark invalid on absolute grounds which are found to apply in the whole Community or on account of an earlier Community trade mark or other Community industrial property right, conversion is excluded under Article 108(2) of the Regulation for all Member States.

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Rule 46

Publication of application for conversion

(1) Where the application for conversion relates to a Community trade mark application which has already been published in the Community Trade Mark Bulletin pursuant to Article 40 of the Regulation or where the application for conversion relates to a Community trade mark, the application for conversion shall be published in the Community Trade Marks Bulletin.

(2) The publication of the application for conversion shall contain: (a) the filing number or the registration number of the trade mark in respect of which conversion is requested; (b) a reference to the previous publication of the application or the registration in the Community Trade marks Bulletin; (c) an indication of the Member State or Member States in respect of which conversion has been requested; (d) where the request does not relate to all of the goods and services for which the application has been filed or for which the trade mark has been registered, an indication of the goods and services for which conversion is requested; (e) where conversion is requested in respect of more than one Member State and the list of goods and services is not the same for all Member States, an indication of the respective goods and services for each Member State; (f) the date of the application for conversion.

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Rule 47

Transmission to central industrial property offices of the Member States

Where the application for conversion complies with the requirements of the Regulation and these Rules, the Office shall transmit the application for conversion and the data referred to in Rule 84(2), to the central industrial property offices of the Member States, including the Benelux Trade Mark Office, for which the application has been found admissible. The Office shall inform the applicant of the date of transmission.

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TITLE X

APPEALS

Rule 48

Content of the notice of appeal

(1) The notice of appeal shall contain: (a) the name and address of the appellant in accordance with rule 1 (1) (b); (b) where the appellant has appointed a representative, the name and the business address of the representative in accordance with Rule 1 (1) (e); (c) a statement identifying the decision which is contested and the extent to which amendment or cancellation of the decision is requested.

(2) The notice of appeal shall be filed in the language of the proceedings in which the decision subject to the appeal was taken.

Rule 49

Rejection of the appeal as inadmissible

(1) If the appeal does not comply with Articles 57, 58 and 59 of the Regulation and Rule 48 (1) (c) and (2), the Board of Appeal shall reject it as inadmissible, unless each deficiency has been remedied before the relevant time limit laid down in Article 59 of the Regulation has expired.

(2) If the Board of Appeal finds that the appeal does not comply with other provisions of the Regulation or other provisions of these Rules, in particular Rule 48 (1) (a) and (b), it shall inform the appellant accordingly and shall request him to remedy the deficiencies noted within such period as it may specify. If the appeal is not corrected in good time, the Board of Appeal shall reject it as inadmissible.

(3) If the fee for appeal has been paid after expiry of the period for the filing of appeal pursuant to Article 59 of the Regulation, the appeal shall be deemed not to have been filed and the appeal fee shall be refunded to the appellant.

Rule 50

Examination of appeals

(1) Unless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis. In particular, when the appeal is directed against a decision taken in opposition proceedings, Article 78a of the Regulation shall not be applicable to the time limits fixed pursuant to Article 61(2) of the Regulation. Where the appeal is directed against a decision of an Opposition Division, the Board shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and these Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 74(2) of the Regulation.

(2) The Board of Appeal's decision shall contain: (a) a statement that it is delivered by the Board; (b) the date when the decision was taken; (c) the names of the Chairman and of the other members of the Board of Appeal taking part; (d) the name of the competent employee of the registry; (e) the names of the parties and of their representatives; (f) a statement of the issues to be decided; (g) a summary of the facts; (h) the reasons; (i) the order of the Board of Appeal, including, where necessary, a decision on costs.

(3) The decision shall be signed by the Chairman and the other members of the Board of Appeal and by the employee of the registry of the Board of Appeal.

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Rule 51

Reimbursement of appeal fees

The appeal fee shall only be reimbursed by order of either of the following:

(a) the department whose decision has been impugned, where it grants revision pursuant to Article 60(1) or Article 60a of the Regulation;

(b) the Board of Appeal, where it allows the appeal and considers such reimbursement equitable by reason of a substantial procedural violation.

▼B

TITLE XI

GENERAL PROVISIONS

Part A

Decisions and communications of the Office

Rule 52

Form of decisions

(1) Decisions of the Office shall be in writing and shall state the reasons on which they are based. Where oral proceedings are held before the Office, the decision may be given orally. Subsequently, the decision in writing shall be notified to the parties.

(2) Decisions of the Office which are open to appeal shall be accompanied by a written communication indicating that notice of appeal must be filed in writing at the Office within two months of the date of notification of the decision from which appeal is to be made. The communications shall also draw the attention of the parties to the provisions laid down in Articles 57, 58 and 59 of the Regulation. The parties may not plead any failure to communicate the availability proceedings.

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Rule 53

Correction of errors in decisions

Where the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it shall ensure that error or mistake is corrected by the department or division responsible.

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Rule 53a

Revocation of a decision or entry in the Register

(1) Where the Office finds of its own motion or pursuant to corresponding information by the parties to the proceedings that a decision or entry in the Register is subject to revocation pursuant to Article 77a of the Regulation, it shall inform the party affected about the intended revocation.

(2) The affected party may submit observations on the intended revocation within a period specified by the Office.

(3) Where the affected party agrees to the intended revocation or where he does not submit any observations within the period, the Office shall revoke the decision or entry. If the affected party does not agree to the revocation, the Office shall take a decision on the revocation.

(4) Paragraphs 1, 2 and 3 shall apply mutatis mutandis if the revocation is likely to affect more than one party. In these cases the observations submitted by one of the parties pursuant to paragraph 3 shall always be communicated to the other party or parties with an invitation to submit observations.

(5) Where the revocation of a decision or an entry in the Register affects a decision or entry that has been published, the revocation shall also be published.

(6) Competence for revocation under paragraphs 1 to 4 shall lie with the department or unit which took the decision.

▼B

Rule 54

Noting of loss of rights

(1) If the Office finds that the loss of any rights results from the Regulation or these Rules without any decision having been taken, it shall communicate this to the person concerned in accordance with Article 77 of the Regulation, and shall draw his attention to the substance of paragraph 2 of this Rule.

(2) If the person concerned considers that the finding of the Office is inaccurate, he may, within two months after notification of the communication referred to in paragraph 1, apply for a decision on the matter by the Office. Such decision shall be given only if the Office disagrees with the person requesting it; otherwise the Office shall amend its finding and inform the person requesting the decision.

Rule 55

Signature, name, seal

(1) 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 the official or officials, or, instead of a signature, carry a printed or stamped seal of the Office.

(2) The President of the Office may determine that other means of identifying the department or division of the Office and the name of the official or officials responsible or an identification other than a seal may be used where decisions, communications or notices are transmitted by telecopier or any other technical means of communication.

Part B

Oral proceedings and taking of evidence

Rule 56

Summons to oral proceedings

(1) The parties shall be summoned to oral proceedings provided for in Article 75 of the Regulation and their attention shall be drawn to paragraph 3 of this Rule. At least one month's, notice of the summons shall be given unless the parties agree to a shorter period.

(2) When issuing the summons, the Office shall draw attention to the points which in its opinion need to be discussed in order for the decision to be taken.

(3) If a party who has been duly summoned to oral proceedings before the Office does not appear as summoned, the proceedings may continue without him.

Rule 57

Taking of evidence by the Office

(1) Where the Office considers it necessary to hear the oral evidence of parties, of witnesses or of experts or to carry out an inspection, it shall take a decision to that end, stating the means by which it intends to obtain evidence, the relevant facts to be proved and the date, time and place of hearing or inspection. If oral evidence of witnesses and experts is requested by a party, the decision of the Office shall determine the period of time within which the party filing the request must make known to the Office the names and addresses of the witnesses and experts whom the party wishes to be heard.

(2) The period of notice given in the summons of a party, witness or expert to give evidence shall be at least one month, unless they agree to a shorter period. The summons shall contain: (a) an extract from the decision mentioned in paragraph 1, indicating in particular the date, time and place of the hearing ordered and stating the facts regarding which the parties, witnesses and experts are to be heard; (b) the names of the parties to proceedings and particulars of the rights which the witnesses or experts may invoke under Rule 59 (2) to (5).

Rule 58

Commissioning of experts

(1) The Office shall decide in what form the report made by an expert whom it appoints shall be submitted.

(2) The terms of reference of the expert shall include: (a) a precise description of his task; (b) the time limit laid down for the submission of the expert report; (c) the names of the parties to the proceedings; (d) particulars of the claims which he may invoke under Rule 59 (2), (3) and (4).

(3) A copy of any written report shall be submitted to the parties.

(4) The parties may object to an expert on grounds of incompetence or on the same grounds as those on which objection may be made to an examiner or to a member of a Division or Board of Appeal pursuant to Article 132 (1) and (3) of the Regulation. The department of the Office concerned shall rule on the objection.

Rule 59

Costs of taking of evidence

(1) The taking of evidence by the Office may be made conditional upon deposit with it, by the party who has requested the evidence to be taken, of a sum which shall be fixed by reference to an estimate of the costs.

(2) Witnesses and experts who are summoned by and appear before the Office shall be entitled to reimbursement of reasonable expenses for travel and subsistence. An advance for these expenses may be granted to them by the Office. The first sentence shall apply also to witnesses and experts who appear before the Office without being summoned by it and are heard as witnesses or experts.

(3) Witnesses entitled to reimbursement under paragraph 2 shall also be entitled to appropriate compensation for loss of earnings, and experts to fees for their work. These payments shall be made to the witnesses and experts after they have fulfilled their duties or tasks, where such witnesses and experts have been summoned by the Office of its own initiative.

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(4) The amounts and the advances for expenses to be paid pursuant to paragraphs 1, 2 and 3 shall be determined by the President of the Office and shall be published in the Official Journal of the Office. The amounts shall be calculated on the same basis as laid in the Staff Regulations of the Officials of the European Communities and Annex VII thereto.

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(5) Final liability for the amounts due or paid pursuant to paragraphs 1 to 4 shall lie with: (a) the Office where the Office, at its own initiative, considered it necessary to hear the oral evidence of witnesses or experts; or (b) the party concerned where that party requested the giving of oral evidence by witnesses or experts, subject to the decision on apportionment and fixing of costs pursuant to Articles 81 and 82 of the Regulation and Rule 94. Such party shall reimburse the Office for any advances duly paid.

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Rule 60

Minutes of oral proceedings

(1) Minutes of oral proceedings or the taking of evidence shall be drawn up, containing: (a) the date of the proceedings; (b) the names of the competent officials of the Office, the parties, their representatives, and of the witnesses and experts who are present; (c) the applications and requests made by the parties; (d) the means of giving or obtaining evidence; (e) where applicable, the orders or the decision issued by the Office.

(2) The minutes shall become part of the file of the relevant Community trade mark application or registration. The parties shall be provided with a copy of the minutes.

(3) Where witnesses, experts or parties are heard in accordance with Article 76(1)(a) or (d) of the Regulation or Rule 59(2), their statements shall be recorded.

▼B

Part C

Notifications

Rule 61

General provisions on notifications

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(1) In proceedings before the Office, notifications to be made by the Office shall take the form of transmitting the original document, an uncertified copy thereof or a computer print-out in accordance with Rule 55, or, as concerns documents emanating from the parties themselves, duplicates or uncertified copies.

▼B

(2) Notifications shall be made (a) by post in accordance with Rule 62; (b) by hand delivery in accordance with Rule 63; (c) by deposit in a post box at the Office in accordance with Rule 64; (d) by telecopier and other technical means in accordance with Rule 65; (e) by public notification in accordance with Rule 66.

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(3) Where the addressee has indicated his telecopier number or contact details for communicating with him through other technical means, the Office shall have the choice between any of these means of notification and notification by post.

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Rule 62

Notification by post

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(1) Decisions subject to a time limit for appeal, summonses and other documents as determined by the President of the Office shall be notified by registered letter with advice of delivery. All other notifications shall be by ordinary mail.

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(2) Notifications in respect of addresses having neither their domicile nor their principal place of business nor an establishment in the Community and who have not appointed a representative in accordance with Article 88 (2) of the Regulation shall be effected by posting the document requiring notification by ordinary mail to the last address of the addressee known to the Office. ►M2 ————— ◄

(3) Where notification is effected by registered letter, whether or not with advice of delivery, this shall be deemed to be delivered to the addressee on the 10th day following that of its posting, unless the letter has failed to reach the addressee or has reached him at a later date. In the event of any dispute, it shall be for the Office to establish that the letter has reached its destination or to establish the date on which it was delivered to the addressee, as the case may be.

(4) Notification by registered letter, with or without advice of delivery, shall be deemed to have been effected even if the addressee refuses to accept the letter.

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(5) Notification by ordinary mail shall be deemed to have been effected on the tenth day following that of its posting.

▼B

Rule 63

Notification by hand delivery

Notification may be effected on the premises of the Office by hand delivery of the document to the addressee, who shall on delivery acknowledge its receipt.

Rule 64

Notification by deposit in a post box at the Office

Notification may also be effected to addressees who have been provided with a post box at the Office, by depositing the document therein. A written notification of deposit shall be inserted in the files. The date of deposit shall be recorded on the document. Notification shall be deemed to have taken place on the fifth day following deposit of the document in the post box at the Office.

Rule 65

Notification by telecopier and other technical means

(1) Notification by telecopier shall be effected by transmitting either the original or a copy, as provided for in Rule 61 (1), of the document to be notified. ►M2 Notification shall be deemed to have been taken place on the date on which the communication was received by the telecopying device of the recipient. ◄

(2) Details of notification by other technical means of communication shall be determined by the President of the Office.

Rule 66

Public notification

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(1) If the address of the addressee cannot be established or if after at least one attempt, notification in accordance with Rule 62 has proved impossible, notification shall be effected by public notice.

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(2) The President of the Office shall determine how the public notice is to be given and shall fix the beginning of the one-month period on the expiry of which the document shall be deemed to have been notified.

Rule 67

Notification to representatives

(1) If a representative has been appointed or where the applicant first named in a common application is considered to be the common representative pursuant to Rule 75 (1), notifications shall be addressed to that appointed or common representative.

(2) If several representatives have been appointed for a single interested party, notification to any one of them shall be sufficient, unless a specific address for service has been indicated in accordance with Rule 1 (1) (e).

(3) If several interested parties have appointed a common representative, notification of a single document to the common representative shall be sufficient.

Rule 68

Irregularities in notification

Where a document has reached the addressee, if the Office is unable to prove that it has been duly notified, or if provisions relating to its notification have not been observed, the document shall be deemed to have been notified on the date established by the Office as the date of receipt.

Rule 69

Notification of documents in the case of several parties

Documents emanating from parties which contain substantive proposals, or a declaration of withdrawal of a substantive proposal, shall be notified to the other parties as a matter of course. Notification may be dispensed with where the document contains no new pleadings and the matter is ready for decision.

Part D

Timelimits

Rule 70

Calculation of time limits

(1) Periods shall be laid down in terms of full years, months, weeks or days.

(2) Calculation shall start on the day following the day on which the relevant