31. 8. 84 Official Journal of the European Communities No C 230/1 
II 
(Preparatory Acts) 
COMMISSION 
Amended proposal for a Council Regulation on the Community trade mark 
COM(84) 470 final 
(Submitted by the Commission to the Council pursuant to Article 149 (2) of the EEC Treaty on 
9 August 1984) 
(84/C 230/01) 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
THE COUNCIL OF THE EUROPEAN COMMUNITIES, 
Having regard to the Treaty establishing the European 
Economic Community, and in particular Article 235 
thereof, 
Having regard to the proposal from the Commission, 
Having regard to the opinion of the European 
Parliament, 
Having regard to the opinion of the Economic and Social 
Committee, 
Whereas: 
It is desirable to promote throughout the Community a 
harmonious development of economic activities and a 
continuous and balanced expansion by establishing a 
common market which functions properly and offers 
conditions which are similar to those obtaining in a 
national market. In order to create a market of this kind 
and make it increasingly a single market, not only must 
the barriers to free movement of goods and services be 
removed and arrangements be instituted which ensure 
that competition is not distorted, but, in addition, legal 
conditions must be created which enable undertakings to 
adapt their activities to the scale of the Community, 
whether in manufacturing and distributing goods or in 
providing services. For those purposes, trade marks 
enabling the products and service of undertakings to be 
distinguished by identical means throughout the entire Unchanged. 
Unchanged. 
Having regard to the proposal from the 
Commission (*), 
Having regard to the opinion of the European 
Parliament (2), 
Having regard to the opinion of the Economic and Social 
Committee (3), 
Whereas: 
Unchanged. 
(') OJ No C 351, 31. 12. 1980, p. 1. 
(2) OJ No C 307, 14. 11. 1983, p. 46. 
(3) OJ No C 310, 30. 11. 1981, p. 22. 
No C 230/2 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Community, regardless of frontiers, should feature 
amongst the legal instruments which undertakings have 
at their disposal. 
Action by the Community would appear to be necessary 
for the purpose of attaining the Community's said 
objectives. Such action involves the creation of 
Community arrangements for trade marks whereby 
undertakings can by means of one system of procedure 
obtain Community trade marks to which uniform 
protection is given and which produce their effects 
throughout the entire area of the Community. Unchanged. 
The Treaty does not provide the requisite powers to 
create a legal instrument such as a Community trade 
mark. The barrier of territoriality of the rights conferred 
on proprietors of trade marks by the laws of the Member 
States cannot be removed by approximation of laws. In 
these circumstances the only appropriate way of opening 
up urestricted economic activity in the whole of the 
common market for the benefit of undertakings is to 
create trade marks which are governed solely by a law of 
the Community, that law being directly applicable in all 
Member States. Unchanged. 
The Community law relating to trade marks nevertheless 
does not replace the laws of the Member States on trade 
marks, for at the stage to which the establishment of the 
common market has now advanced it would not appear 
to be proper to require undertakings to apply for 
registration of their trade marks as Community trade 
marks. National trade marks do in fact continue to be 
necessary for those undertakings whose activities are such 
that protection of their trade marks at Community level is 
of no use to them. Unchanged. 
In order not to detract from the unity of the system of 
Community trade marks and from the primacy of the 
Community law which governs them, such trade marks 
must not be subject to the laws of the Member States, save 
in so far as this Regulation expressly provides. Unchanged. 
The rights in a Community trade mark are not to be 
capable of being obtained otherwise than by registration, 
and registration is to be refused if the trade mark is not 
distinctive, is unlawful or is not available. In the latter 
case the Office should not withold registration unless the 
prior right which conflicts with the trade mark is a trade 
mark which is registered and used in the common market, 
if the proprietor of the prior right has entered opposition 
to registration of the trade mark as a Community trade 
mark and all efforts to produce an amicable settlement 
between the parties have failed. 
The interests of proprietors of prior private rights which 
have not been registered will also be protected, whatever 
those rights may be, for any proprietor of a prior right, 
whether registered or not, is entitled to claim that a 
Community trade mark, once registered, is invalid. It The rights in a Community trade mark are not to be 
capable of being obtained otherwise than by registration, 
and registration is to be refused if the trade mark is not 
distinctive, is unlawful or is not available. In the latter 
case the Office should not withhold registration as a 
Community trade mark unless the proprietor of the 
earlier right with which the trade mark conflicts has 
entered admissible opposition to its registration and all 
efforts to produce an amicable settlement between the 
parties have failed. 
The interests of proprietors of prior rights will also be 
protected, whatever those rights may be, for any 
proprietor of a prior right, whether registered or not, is 
entitled to claim that a Community trade mark, once 
registered, is invalid. 
31. 8. 84 Official Journal of the European Communities No C 230/3 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
may in due time be appropriate, depending particularly 
on the degree of integration then achieved by the 
Community, to contemplate new measures for the 
purpose of settling conflicts between Community trade 
marks and prior rights existing at national level. 
The protection conferred by a Community trade mark is 
bound up with the concept of similarity of signs, 
similarity of goods and services and the possibility of 
confusion arising therefrom. The purpose of protection is 
to guarantee the trade mark's function as an indicator of 
origin. It is essential that the said concepts be interpreted 
strictly so that the freedom of action of persons who are in 
competition with each other is not needlessly restricted. It 
is necessary, in particular, that by simultaneous 
comparison of signs, goods and services it be certain in 
each case that customers are in reality likely to confuse 
products and services which are identified by those signs. 
For the purpose of determining whether a sign which is 
alleged to infringe a trade mark which consists of a 
number of elements is so similar to it that confusion may 
arise between them, the trade mark must be viewed as a 
whole. In order to determine whether a Community trade 
mark and a sign consisting of words sound the same or are 
at any rate phonetically similar, it is not possible to 
disregard the fact that the Community exists and that the 
public is increasingly aware of the correct pronunciation 
of words in the languages which are spoken therein. Unchanged. 
In view of the fact that the function of a Community trade 
mark is to indicate origin the proprietor must not be 
entitled to prohibit its use by a third party in relation to 
foods which have been put into circulation in the 
Community or outside it, under the trade mark, by him or 
with his consent, nor to prohibit its use, for reasons based 
on trade mark law, by a licensee who supplies the goods 
or services under the trade mark outside the territory 
covered by the licence. It follows from the principle of free flow of goods that the 
proprietor of a Community trade mark must not be 
entitled to prohibit its use by a third party in relation to 
goods which have been put into circulation in the 
Community, under the trade mark, by him or with his 
consent, nor to prohibit its use, for reasons based on trade 
mark law, by a licensee who supplies the goods or services 
under the trade mark outside the territory covered by the 
licence. 
There is no justification for protecting Community trade 
marks or, as against them, any trade mark which has been 
registered before them, except where the trade marks are 
actually used. Unchanged. 
A Community trade mark is to be regarded as an object of 
property which exists separately from the undertaking 
whose products or services are designated by it. 
Accordingly, a Community trade mark must be capable 
of being, inter alia, transferred to, or charged as security 
in favour of, a third party and of being the subject-matter 
of licences. The conditions applicable for revocation and 
invalidity of trade marks must also be regulated in a 
uniform manner. A Community trade mark is to be regarded as an object of 
property which exists separately from the undertaking 
whose goods or services are designated by it. 
Accordingly, a Community trade mark must, subject to 
the overriding need to prevent deception of consumers, be 
capable of being, inter alia, transferred to, or charged as 
security in favour of, a third party and of being the 
subject-matter of licences. The conditions applicable for 
revocation and invalidity of trade marks must also be 
regulated in a uniform manner. 
Decisions regarding the validity of Community trade 
marks must have absolute effect and cover the entire area Decisions regarding the validity and infringement of 
Community trade marks must have effect and cover the 
No C 230/4 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
of the common market, for this is the only way of 
preventing inconsistent decisions on the part of the courts 
and the Office and of ensuring that the unitary character 
of Community trade marks is not undermined. The rules 
contained in the Convention on Jurisdiction and 
Enforcement of Judgments in Civil and Commercial 
Matters apply to all actions at law relating to Community 
trade marks, save where this Regulation derogates from 
those rules. entire area of the Community for this is the only way of 
preventing inconsistent decisions on the part of the courts 
and the Office and of ensuring that the unitary character 
of Community trade marks is not undermined. The rules 
contained in the Convention on jurisdiction and 
enforcement of judgments in civil and commercial 
matters apply to all actions at law relating to Community 
trade marks, save where this Regulation derogates from 
those rules. 
Administrative measures are necessary at Community 
level for implementing in relation to every trade mark the 
trade mark law created by this Regulation. It is therefore 
essential, while retaining the Community's existing 
institutional structure and balance of powers, to establish 
a Community Trade Marks Office which is independent 
in relation to technical matters and has legal, 
administrative and financial autonomy. To this end it is 
necessary and appropriate that it should be a body of the 
Community having legal personality and exercising the 
precisely delimited implementing powers which are 
conferred on it by this Regulation, and that it should 
operate within the framework of Community law 
without detracting from the competences exercised by the 
Community's institutions. Unchanged. 
In order to ensure that parties who are affected by 
decisions made by the Office are protected by the law in a 
manner which is entirely suited to the special character of 
trade mark law, it is necessary to establish, within the 
Office, boards of appeal composed of three independent 
members who are qualified in law and who will be 
responsible for examining, from the point of view of both 
substance and law, the decisions made by the Office's 
divisions. Unchanged. 
In order to ensure that in interpreting and applying this 
Regulation the law is observed, the decisions made by the 
boards of appeal must be open to appeal to the Court of 
Justice. This judicial control must be available even in 
cases where none of the parties appeals against an 
erroneous decision made by a board of appeal. The 
Commission must in such cases be enabled to enter an 
appeal in the Court of Justice in the interest of the 
law. Unchanged. 
The institutional structure of the Community, the 
balance of powers and the democratic control of the 
Office's budget can only be maintained if the Assembly 
and the Council adopt the Office's budget in conformity 
with the provisions contained in the Treaty which relate 
to the adoption of the budget of the European 
Communites, and utilize, in relation to the Office's 
revenue and expenditure, together with the Court of 
Auditors, the powers of control which are conferred by 
the Treaty. Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/5 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
HAS ADOPTED THIS REGULATION: 
TITLE I 
GENERAL PROVISIONS 
Article 1 
[Community trade mark] 
1. A trade mark for goods or services which conforms 
with the conditions contained in this Regulation and is 
registered in manner herein provided is hereinafter 
referred to as a 'Community trade mark'. 
2. A Community trade mark shall have identical effect 
throughout the Community. No trade mark shall be 
registered as a Community trade mark otherwise than for 
the entire area of the Community; a Community trade 
mark shall not be transferred or surrendered or be the 
subject of a decision revoking the rights of the proprietor 
or declaring it invalid, nor shall its use be prohibited, save 
in respect of the entire area of the Community. 
Article 2 
[Community Trade Marks Office] 
For the purpose of the application of this Regulation a 
Community Trade Marks Office, hereinafter referred to 
as 'the Office', is hereby established. 
TITLE II 
THE LAW RELATING TO TRADE MARKS 
Section 1 
DEFINITION OF A COMMUNITY TRADE MARK 
OBTAINING A COMMUNITY TRADE MARK 
Article 3 
[Signs of which a Community trade mark may consist] 
A Community trade mark may consist of words 
(including surnames), designs, letters, numerals, 
combinations of colours, the shape of goods or of their 
packaging, or of any other signs which are capable of 
distinguishing the goods or services of one undertaking 
from those of other undertakings. 
Article 4 
[Persons who can be proprietors of Community 
trade marks] 
1. The following persons may be proprietors of 
Community trade marks: 
(a) nationals of any Member State, and nationals of any 
non-member State who are habitually resident in the 
Community or who have a real and effective 
industrial or commercial place of business in the 
Community; TITLE I 
GENERAL PROVISIONS 
Article 1 
[Community trade mark] 
Unchanged. 
Article 2 
[Community Trade Marks Office] 
Unchanged. 
TITLE II 
THE LAW RELATING TO TRADE MARKS 
Section 1 
DEFINITION OF A COMMUNITY TRADE MARK 
OBTAINING A COMMUNITY TRADE MARK 
Article 3 
[Signs of which a Community trade mark may consist] 
A Community trade mark may consist of any signs, 
particularly words, including personal names, designs, 
letters, numerals, combinations of colours, the shape of 
goods or of their packaging, which are capable of 
distinguishing the goods or services of one undertaking 
from those of other undertakings. 
Article 4 
[Persons who can be proprietors of Community 
trade marks] 
1. The following persons may be proprietors of 
Community trade marks: 
(a) nationals of the Member States; 
No C 230/6 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL 
(b) nationals of any State which is party to the Paris 
Convention for the Protection of Industrial Property, 
hereinafter referred to as the Paris Convention, and 
persons who are deemed to be such by the operation 
of Article 3 thereof; 
(c) nationals of any other State which accords to 
nationals of the Member States the same trade mark 
protection as it accords to its own nationals. 
2. Legal persons, including those companies and 
associations which under the law that governs them are 
regarded as legal persons, shall be treated as nationals 
within the meaning of paragraph 1. 
Article 5 
[Means whereby the rights in a Community trade mark 
are obtained] 
The rights in a Community trade mark are obtained by 
registration. 
Article 6 
[Absolute grounds for refusal] 
1. Trade marks which do not conform to the 
requirements of Article 3 or 4, and trade marks which are 
not distinctive, shall not be registered; in particular the 
following trade marks shall not be registered: 
(a) those which consist solely of signs or indications 
which in trade may be requisite for the purpose of 
showing the kind, quality, quantity, intended 
purpose, value, geographical origin, the time of 
production of the goods or of rendering of the service, 
or other characteristics of the goods or service; 
(b) those which consist solely of signs or indications 
which are customarily used to designate the goods or 
service in the current language of the trade or in the 
bona fide and established practices thereof. 
2. In addition, the following shall not be registered: 
(a) the shape which results from the nature of the goods 
themselves, or which has some technical 
consequence; also the shape of the goods where this 
affects their intrinsic value; AMENDED PROPOSAL 
(b) nationals of any State which is party to the Paris 
Convention for the protection of industrial property, 
hereinafter referred to as 'the Paris Convention'; 
(c) nationals of States which are not party to the Paris 
Convention: 
— who are domiciled or who have real and effective 
industrial or commercial establishments on the 
territory of the Community or of a State which is 
party to the Paris Convention, or 
— when these States accord to nationals of all the 
Member States the same trade mark protection as 
they accord to their own nationals. 
2. Unchanged. 
Article 5 
[Means whereby the rights in a Community trade mark 
are obtained] 
Unchanged. 
Article 6 
[Absolute grounds for refusal] 
1. Unchanged. 
2. In addition, the following shall not be registered: 
(a) Unchanged; 
31. 8. 84 Official Journal of the European Communities No C 230/7 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
(b) trade marks which include signs or indications liable 
to mislead the public, particularly as to the nature, 
quality or geographical origin of the goods or 
service; 
(c) trade marks which are contrary to public policy or to 
accepted principles of morality, and those which fall 
within the provisions or Article 6 ter of the Paris 
Convention. (b) trade marks which are liable to mislead the public 
particularly as to the nature, quality or geographical 
origin of the goods or service; 
(c) trade marks which are contrary to public policy or to 
accepted principles of morality, or those which have 
not been authorized by the competent authorities and 
are to be refused pursuant to Article 6 ter of the Paris 
Convention; 
(d) trade marks which include badges, emblems and 
escutcheons other than those covered by Article 6 ter 
of the Paris Convention and of public interest, 
specified in the implementing Regulation. 
3. Paragraphs 1 and 2 shall apply, nothwithstanding 
that the grounds of non-registrability obtain in only part 
of the common market. 3. Paragraphs 1 and 2 shall apply, notwithstanding 
that the grounds of non-registrability obtain in only part 
of the Community. 
4. Paragraph 1 (a) shall not apply if the trade mark has 
become distinctive in consequence of the use which has 
been made of it. 4. Paragraph 1 (a) shall not apply if the trade mark has 
become distinctive in relation to the goods or services for 
which registration is requested in consequence of the use 
which has been made of it. 
Article 7 
[Relative grounds for refusal] Article 7 
[Relative grounds for refusal] 
1. A trade mark shall not be registered if it is identical 
with or similar to an earlier trade mark, and the goods or 
services designated by each of the trade marks are 
identical with or similar to each other with the result 
that there arises a serious likelihood of confusion on the 
part of the public in the territory in which the earlier trade 
mark has effect. 1. A trade mark shall not be registered: 
(a) if it is identical with an earlier right, and the goods or 
services are identical with those for which the earlier 
right was registered in the cases referred to in 
paragraph 2 (a) or (b) or has been used in the cases 
referred to in paragraph 2 (c) or (d); 
(b) if it is identical with an earlier right, and the goods or 
services are similar to those for which the earlier right 
was registered in the cases referred to in paragraph 2 
(a) or (b) or has been used in the cases referred to in 
paragraph 2 (c) or (d), with the result that there arises 
a likelihood of confusion between the Community 
trade mark applied for and the earlier right on the 
part of the public in the territory in which the earlier 
right has effect; 
(c) if it is similar to an earlier right, and the goods or 
services are identical with or similar to those for 
which the earlier right was registered in the cases 
referred to in paragraph 2 (a) or (b) or has been used 
in the cases referred to in paragraph 2 (c) or (d), with 
the result that there arises a likelihood of confusion 
between the Community trade mark applied for and 
the earlier right on the part of the public in the 
territory in which the earlier right has effect. 
No C 230/8 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. Earlier trade marks are trade marks of the 
following kinds in respect of which the date of application 
for registration preceded the date of application for 
registration of the Community trade mark, taking 
account, where appropriate, of the priorities claimed in 
respect of those trade marks: 
(a) Community trade marks; 
(b) trade marks registered in a Member State, including 
those registered in the Benelux countries; 
(c) trade marks registered under arrangements which 
have effect in a Member State; 
and trade marks which, on the date on which application 
is made for registration of them as Community trade 
marks are well known in a Member State, in the sense in 
which the words 'well known' are used in Article 6 bis of 
the Paris Convention. 2. An 'earlier right' means: 
(a) trade marks of the following kinds in respect of which 
the date of application for registration preceded the 
date of application for registration of the Community 
trade mark, taking account, where appropriate, of 
the priorities claimed in respect of those trade 
marks: 
— Community trade marks, 
— trade marks registered in a Member State, 
including those registered in the Benelux 
countries, 
— trade marks registered under international 
arrangements which have effect in a Member 
State; 
(b) application for the trade marks referred to in (a), 
subject to their registration; 
(c) trade marks which, on the date of application for 
registration of the Community trade mark are well 
known in Member State, in the sense in which the 
words 'well known' are used in Article 6a of the Paris 
Convention; 
(d) any signs used in the business world before the 
application for registration of the Community trade 
mark which, under the law of the Member State 
governing them, confer on their proprietor the right 
to prohibit the use of subsequent trade marks; 
(e) any signs containing: 
— the name of a third person, where use of this name 
in relation to the goods or services for which the 
Community trade mark is applied for is liable to 
cause serious detriment to the honour, reputation 
or credit of that person, 
— a portrait of a third person, 
— a work of a third person protected by copyright or 
by an industrial model or design, 
so however, that in any opposition based on such a sign 
a likelihood of confusion does not need to be 
established. 
3. Where an agent or representative of the rightful 
proprietor of a trade mark applies for registration thereof 
in his own name without the proprietor's consent, 
registration shall be refused unless the agent or 
representative justifies his action. 3. Unchanged. 
4. This Article applies only where the proprietor of the 
earlier trade mark, or of a trade mark to which paragraph 
3 applies, has been successful in opposing registration of 
the Community trade mark, his opposition having been in 
conformity with the provisions of this Regulation. 4. This Article applies only where the proprietor of an 
earlier right within the meaning of paragraph 2, which 
does not subsist only in a particular locality, or of a trade 
mark to which paragraph 3 applies, has been successful in 
opposing registration of the Community trade mark, his 
opposition having been in conformity with the provisions 
of this Regulation. 
31. 8. 84 Official Journal of the European Communities No C 230/9 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Section 2 
EFFECTS OF COMMUNITY TRADE MARKS Section 2 
EFFECTS OF COMMUNITY TRADE MARKS 
Article 8 
[Rights conferred by a Community trade mark] 
1. A Community trade mark confers on the proprietor 
exclusive rights therein. The proprietor shall be entitled 
to prohibit any third party from using in the course of 
trade, save with his consent: 
(a) any sign which is identical with or similar to the 
Community trade mark in relation to goods or 
services which are identical with or similar to those 
for which the Community trade mark is registered, 
where such use involves a serious likelihood of 
confusion on the part of the public; 
(b) any sign which is identical with or similar to the 
Community trade mark in relation to goods or 
services which are not similar to those for which the 
Community trade mark is registered, where the 
Community trade mark is of wide repute and use of 
that sign is detrimental to that repute. Article 8 
[Rights conferred by a Community trade mark] 
1. A Community trade mark confers on the proprietor 
exclusive rights therein. The proprietor shall be entitled 
to prohibit any third party from using in the course of 
trade, save with his consent: 
(a) any sign which is identical with the Community trade 
mark in relation to goods or services which are 
identical with those for which the Community trade 
mark is registered; 
(b) any sign which is identical with the Community trade 
mark in relation to goods or services which are 
similar to those for which the Community trade mark 
is registered where because of the similarity of the 
goods or services, such use involves a likelihood of 
confusion between the sign and the Community trade 
mark on the part of the public; 
(c) any sign which is similar to the Community trade 
mark in relation to goods or services which are 
identical with or similar to those for which the 
Community trade mark is registered, where because 
of the similarity of the signs and the identity or 
similarity of the goods or services such use involves a 
likelihood of confusion between the sign and the 
Community trade mark on the part of the public; 
(d) any sign which is identical with or similar to the 
Community trade mark in relation to goods or 
services which are not similar to those for which the 
Community trade mark is registered, where the latter 
is of wide repute in the Community and where use of 
that sign would constitute unwarranted exploitation 
of the commercial value and the repute of the 
Community trade mark. 
2. Use of the following kinds, inter alia, may be 
prohibited under paragraph 1: 
(a) affixing the sign to the goods or to the packaging 
thereof; 
(b) putting the goods on the market under that sign, or 
supplying services thereunder; 
(c) using the sign on business correspondence or 
invoices. 2. The following, inter alia, may be prohibited under 
paragraph 1: 
(a) Unchanged; 
(b) Unchanged; 
(c) using the sign on business papers. 
3. The rights conferred by a Community trade mark 
shall prevail against third parties from the date of 
publication of registration of the trade mark. Reasonable 
compensation may however be claimed in respect of Unchanged. 
No C 230/10 Official Journal of the 
ORIGINAL PROPOSAL 
matters arising after the date of publication of a 
Community trade mark application, which matters 
would, after publication of registration of the trade mark, 
be prohibited by virtue of that publication. The court 
seized of the case shall stay the proceedings until the 
registration has been published. 
Article 9 
[Reproduction of Community trade marks in 
dictionaries] 
1. The publisher of a dictionary, encyclopaedia or 
similar work shall ensure that any reproduction of a 
Community trade mark therein is accompanied by an 
indication that the trade mark is registered. 
2. Where the publisher fails to comply with the 
requirements of paragraph 1 he shall, at the request of the 
proprietor of the Community trade mark, correct the 
matter at his own expense in the next edition of the 
publication. 
Article 10 
[Limitation of the effects of a Community trade mark] 
A Community trade mark does not entitle the proprietor 
to prohibit a third party from using in the course of 
trade: 
(a) his own surname and address; 
(b) indications concerning the kind, quality, quantity, 
intended purpose, value, geographical originx the 
time of production of the goods or of rendering of 
the service, or other characteristics of the goods or 
service; 
(c) the trade mark for the purpose of indicating the 
intended purpose of accessories or spare parts; 
provided he does not use them as a trade mark. 
Article 11 
[Limits of the rights conferred by a Community trade 
mark] 
1. A Community trade mark does not entitle the 
proprietor to prohibit its use in relation to goods which 
have been put on the market under that trade mark by the 
proprietor or with his consent. 
2. Paragraph 1 shall not apply: 
(a) where, the goods having been put on the market 
outside the Community, the proprietor is legally lean Communities 31. 8. 84 
AMENDED PROPOSAL 
Article 9 
[Reproduction of Community trade marks in 
dictionaries] 
1. The publisher of a dictionary encyclopaedia or 
similar work shall ensure that any reproduction of a 
Community trade mark therein is accompanied by an 
indication that the trade mark is registered, where the 
reproduction of this trade mark in such works gives the 
impression that it constitutes the generic name of the 
goods or services for which the trade mark is 
registered. 
2. Unchanged. 
Article 10 
[Limitation of the effects of a Community trade mark] 
A Community trade mark does not entitle the proprietor 
to prohibit a third party from using in the course of 
trade: 
(a) his own name and address; 
(b) Unchanged; 
(c) the trade mark where it is necessary to indicate the 
intended purpose of a product or service, in particular 
accessories or spare parts; 
provided he uses them in accordance with honest 
industrial or commercial practice. 
Article 11 
[Limits of the rights conferred by a Community trade 
mark] 
1. A Community trade mark does not entitle the 
proprietor to prohibit its use in relation to goods which 
have been put on the market in the Community under that 
trade mark by the proprietor or with his consent. 
2. Paragraph 1 shall not apply where the condition of 
the goods is changed or impaired after they have been put 
on the market. 
31. 8. 84 Official Journal of the European Communities No C 230/11 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
entitled to oppose their importation into the 
Community; 
(b) where the condition of the goods is changed or 
impaired after they have been put on the market; 
(c) where the goods are repackaged by a third party; but 
this provision shall not apply where the third party 
proves that the use made of the trade mark by the 
proprietor, taking into consideration his system of 
marketing, tends to fragment the markets artificially 
and that the repackaging could not affect the original 
condition of the goods, if the third party informs the 
proprietor beforehand that the repackaged goods are 
to be put on the market and the new packaging 
indicates that the goods have been repackaged by the 
third party. 
Article 12 
[Supplementary application of national law relating to 
infringement] 
1. The effects of Community trade marks shall be 
governed solely by the provisions of this Regulation. Save 
as otherwise herein provided, the civil sanctions for 
infringement of a Community trade mark shall be 
governed by the law on civil sanctions for infringement of 
a national trade mark which applies in the Member State 
in which the court hearing the action is located. Article 12 
[Supplementary application of national law relating to 
infringement] 
1. The effects of Community trade marks shall be 
governed solely by the provisions of this Regulation. Save 
as otherwise herein provided, the infringements of a 
Community trade mark shall be governed by the law of 
Member States relating to infringement of a national 
trade mark in the Member State in which the Court 
hearing the action is located. 
1 a. This Regulation shall not prevent the proprietor of 
a Community trade mark from bringing actions in respect 
of that mark under the law of Member States relating in 
particular to civil liability and unfair competition, 
provided that such actions are not brought on the same 
grounds as those contained in Articles 8 and 9. 
2. The rules of procedure to be applied shall be 
determined in accordance with Article 76 and the Articles 
which follow it. 2. Unchanged 
Section 3 
USE OF COMMUNITY TRADE MARKS Section 3 
USE OF COMMUNITY TRADE MARKS 
Article 13 
1. A Community trade mark shall be put to serious use 
in the common market, consistently with the terms of this 
Regulation, in connection with the goods or services in 
respect of which it is registered, unless there exist 
legitimate reasons for not doing so. Article 13 
1. If, within a period of five years following 
registration, the proprietor has not put the Community 
trade mark to genuine use in the Community in 
connection with the goods or services in respect of which 
it is registered, or if such use has been suspended during 
an uninterrupted period of five years, the Community 
trade mark shall be subject to the sanctions provided for 
No C 230/12 Official Journal of the 
ORIGINAL PROPOSAL 
2. Circumstances arising independently of the will of 
the proprietor of a Community trade mark are alone 
sufficient to constitute legitimate reasons for not using 
it. 
3. Use of a Community trade mark by a licensee or by 
a person who is associated economically with the 
proprietor shall be deemed to constitute use by the 
proprietor. 
Section 4 
DURATION AND ALTERATION OF COMMUNITY 
TRADE MARKS 
Article 14 
[Duration of registration] 
Community trade marks shall be registered for a period of 
10 years from the date of filing of the application. 
Without prejudice to the application of Article 37, 
registration may be renewed for further periods of 10 
years. 
Article IS 
[Alteration] 
1. No alteration of a Community trade mark shall be 
allowed during the period of registration or on renewal 
thereof. 
2. Where, however, a Community trade mark 
includes the name and address of the proprietor, these 
may be altered, provided the alteration does not 
substantially change the trade mark. Any alteration shall 
be registered. European Communities 31. 8. 84 
AMENDED PROPOSAL 
in this Regulation, unless there exist legitimate reasons 
for non-use. 
la. The following shall also constitute use for the 
purposes of paragraph 1: 
(a) use of the Community trade mark in a form differing 
in elements which do not alter the distinctive 
character of the mark in the form in which it was 
registered; 
(b) affixing of the Community trade mark to products or 
to the packaging thereof in the Community solely for 
export purposes. 
2. Unchanged. 
3. Use of the Community trade mark with the consent 
of the proprietor shall be deemed to constitute use by the 
proprietor. 
Section 4 
DURATION AND ALTERATION OF COMMUNITY 
TRADE MARKS 
Article 14 
[Duration of registration] 
Community trade marks shall be registered for a period of 
10 years from the date of filing of the application. 
Registration may be renewed in accordance with Article 
37 for further periods of 10 years. 
Article IS 
[Alteration] 
1. The Community trade mark shall not be altered in 
the register during the period of registration or on renewal 
thereof. 
2. Where, however, the Community trade mark 
includes the name and address of the proprietor, any 
alteration thereof, provided it does not substantially 
change the trade mark, may be registered at the request of 
the proprietor. 
3. The publication of the registration shall contain a 
representation of the Community trade mark as altered. 
Third parties whose rights may be affected by the 
alteration may challenge the registration thereof within a 
period of three months following publication. 
31. 8. 84 Official Journal of the European Communities No C 230/13 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Section 5 
COMMUNITY TRADE MARKS AS OBJECTS OF 
PROPERTY Section 5 
COMMUNITY TRADE MARKS AS OBJECTS OF 
PROPERTY 
Article 16 
[Dealing with Community trade marks as national trade 
marks] 
1. Unless Articles 17 to 22 otherwise provide, a 
Community trade mark as an object of property shall be 
regarded in all respects, including its geographical 
coverage of the entire area of the Community, as a trade 
mark registered in the Member State in which, according 
to the Register of Community trade marks, the applicant 
had his habitual residence or principal place of business 
or, failing either of these, a place of business, on the date 
of filing of the Community trade mark application. Article 16 
[Dealing with Community trade marks as national trade 
marks] 
1. Unless Articles 17 to 22 provide otherwise, a 
Community trade mark as an object of property shall be 
dealt with in its entirety, and for the whole area of the 
Community, as a national trade mark registered in the 
Member State in which, according to the Register of 
Community trade marks: 
(a) the applicant had his domicile or principal place of 
business on the date of filing of the Community trade 
mark application, or 
(b) where subparagraph (a) does not apply, the applicant 
had a place of business on that date. 
2. In cases which are not provided for by paragraph 1 
the Member State referred to in that paragraph shall be 
the Member State in which the headquarters of the Office 
is situated. 2. Unchanged. 
3. If two or more persons are mentioned in the 
Register of Community trade marks as joint applicants, 
paragraph 1 shall apply to the joint applicant first 
mentioned; failing this, it shall apply to the subsequent 
joint applicants in the order in which they are mentioned. 
Where paragraph 1 does not apply to any of the joint 
applicants, paragraph 2 shall apply. 
Article 17 
[Transfer] 
1. A Community trade mark may be transferred, 
separately from any transfer of the undertaking, in 
respect of some or all of the goods or services for which it 
is registered. Article 17 
[Transfer] 
Unchanged. 
2. A transfer of the whole of the undertaking shall, 
unless some other intention appears, have effect to 
transfer any Community trade mark of the 
undertaking. 2. A transfer of the whole of the undertaking shall, 
unless otherwise agreed or unless some other intention 
appears clearly from the circumstances, include the 
transfer of the Community trade mark. This provision 
shall apply to the contractual obligation to transfer the 
undertaking. 
3. Without prejudice to paragraph 2, an assignment of 
a Community trade mark shall be made in writing; 
otherwise it shall be void. 3. Without prejudice to paragraph 2, an assignment of 
the Community trade mark shall be made in writing and 
shall require the signature of the parties to the contract, 
except when it is a result of a judgment. 
No C 230/14 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
4. Where it is clear from the transfer documents that 
because of the transfer the Community trade mark will 
mislead the public concerning the nature, quality or 
geographical origin of the goods or services in respect of 
which it is registered, the Office shall not register the 
transfer. 
5. A transfer shall not affect rights acquired by third 
parties before the date of transfer. 
6. A transfer shall not take effect vis-ct-vis the Office or 
third parties until it has been registered, and then only to 
the extent that the transfer documents require. A transfer 
shall nevertheless take effect before registration vis-a-vis 
third parties who have acquired rights in the trade mark 
after the date of transfer but who knew of the transfer at 
the date on which they acquired those rights. 4. Where it is clear from the transfer documents that 
because of the transfer the Community trade mark is 
likely to mislead the public concerning the nature, quality 
or geographical origin of the goods or services in respect 
of which it is registered, the Office shall not register the 
transfer unless the new proprietor agrees to limit 
registration of the Community trade mark to goods or 
services in respect of which it is not likely to mislead. 
5. Unchanged. 
6. Unchanged. 
Article 18 
[Rights in rem] 
1. A Community trade mark may be charged as Unchanged, 
security or otherwise be the subject security rights in rem, 
separately from the undertaking. 
2. Security rights in rem which are created over a 
Community trade mark, and any transfer of those rights, 
shall not have effect vis-a-vis third parties until the rights 
have been registered, or until the transfer has been 
registered, as the case may be. Article 18 
[Rights in rem] 
Article 19 
[Levy of execution] 
1. A Community trade mark be levied in execution Unchanged, 
and be the subject of enforcement measures following 
thereon, separately from the undertaking. 
2. As regards the procedure for enforcement measures 
in respect of a Community trade mark, the courts and 
authorities of the Member State which is relevant for the 
purposes of Article 16 shall have exclusive jurisdiction. Article 19 
[Levy of execution] 
Article 20 
[Insolvency and similar proceedings] 
Until such time as common rules are in operation between 
the Member States, the only Member State in which a 
Community trade mark may form part of the assets in an Article 20 
[Insolvency and similar proceedings] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/15 
ORIGINAL PROPOSAL 
insolvency or in similar proceedings shall be the Member 
State in which those proceedings are first opened. 
Article 21 
[Licensing] 
1. Licenses may be granted in respect of a Community 
trade mark for some or all of the goods or services for 
which it is registered. 
2. The rights conferred by a Community trade mark 
shall not be asserted vis-a-vis a licensee unless he operates 
his licence beyond the period of time for which it was 
granted or uses the trade mark in relation to goods or 
services for which it has not been registered or does not 
comply with the proprietor's instructions concerning the 
quality of the goods or services. 
3. The proprietor of a Community trade mark shall 
ensure that the quality of the goods manufactured or of 
the services provided by the licensee is the same as that of 
the goods manufactured or of the services provided by the 
proprietor. 
4. Paragraphs 5 and 6 of Article 17 apply to 
licences. 
Article 22 
[The right of property in an application for a Community 
trade mark] 
Articles 16 to 21 apply to applications for Community 
trade marks. 
TITLE III 
APPLICATIONS FOR COMMUNITY TRADE 
MARKS 
Section 1 
FILING OF APPLICATION AND THE CONDITIONS 
WHICH GOVERN THEM 
Article 23 
[Filing of applications] 
An application for a Community trade mark shall be filed 
at the Office. 
Article 24 
[Conditions governing applications] AMENDED PROPOSAL 
Article 21 
[Licensing] 
Unchanged. 
2. The rights conferred by a Community trade mark 
may be invoked against a licensee only if he contravenes 
the limits on his licence with regard to its duration or to 
the licenced scope of the goods or services for which the 
trade mark is registered or does not comply with the 
proprietor's instructions in respect of the quality of the 
goods or services. 
3. The proprietor of a Community trade mark shall 
take adequate measures to ensure that the quality of the 
goods manufactured or of the services provided by the 
licensee conforms with his instructions. 
4. Unchanged. 
Article 22 
[The right of property in an application for a Community 
trade mark] 
Unchanged. 
TITLE III 
APPLICATIONS FOR COMMUNITY TRADE 
MARKS 
Section 1 
FILING OF APPLICATION AND THE CONDITIONS 
WHICH GOVERN THEM 
Article 23 
[Filing of applications] 
Unchanged. 
Article 24 
[Conditions governing applications] 
1. The following, inter alia, shall be included in an 
application for a Community trade mark: 1. The following, inter alia, shall be included in an 
application for a Community trade mark: 
No C 230 /16 Official Journal of the 
ORIGINAL PROPOSAL 
(a) particulars identifying the applicant; 
(b) a list of the goods or services; 
(c) a representation of the trade mark; 
(d) where paragraph 2 of Article 72 applies, the relevant 
power of attorney. 
2. The fees shall be paid upon filing of the 
application. 
Article 25 
[Date of filing] 
The date of filing of a Community trade mark application 
shall be the date on which the documents specified in 
Article 24 are received, provided the minimum fees have 
at that date been received by the Office. 
Section 2 
PRIORITY 
Article 26 
[Right of priority] 
1. A person who has duly filed an application for a 
trade mark in or for any State which is a party to the Paris 
Convention, or his successors in title, shall, for the 
purpose of filing a Community trade mark application for 
the same trade mark in respect of goods or services which 
are identical with those for which the application has been 
filed, be entitled to a right of priority for a period of six 
months following the date of filing of the first 
application. 
2. Every filing which is equivalent to a regular 
national filing under the national law of the State where it 
was made or under bilateral or multilateral agreements 
shall be recognized as giving rise to a right of priority. 
3. Regular national filing means any filing which is 
sufficient to establish the date on which the application 
was made, whatever the outcome of the application. 
4. A subsequent application for a trade mark which 
was the subject of a previous first application in respect of 
the same goods or services, and which is filed in or for the 
same State, shall, for the purpose of determining priority, 
be considered as first application, provided that at the 
date of filing of the subsequent application, the previous 
application has been withdrawn, abandoned or refused, 
without leaving any rights outstanding, and no right of ropean Communities 31. 8. 84 
AMENDED PROPOSAL 
(a) information identifying the applicant; 
(b) Unchanged; 
(c) Unchanged; 
(d) (deleted). 
2. The minimum amount of fees shall be paid within 
one month after the filing of the application. 
Article 25 
[Date of filing] 
The date of filing of a Community trade mark application 
shall be the date on which the documents specified in 
Article 24 (1) are received. 
Section 2 
PRIORITY 
Article 26 
[Right of priority] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/17 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
priority has been claimed in respect of it. No right of 
priority shall thereafter be claimed in respect of the 
previous application. 
5. If the first filing has been made in a State which is 
not a party to the Paris Convention, paragraphs 1 to 4 
shall apply only in so far as that State grants on the basis 
of a first filing made at the Office a right of priority which 
is subject to conditions equivalent to those laid down in 
the Paris Convention and which has equivalent effect. 
Article 27 
[Claiming priority] 
An applicant who wishes to take advantage of the priority 
of a previous application shall file a declaration of 
priority. The Office may require production of a copy of 
the previous application and, if necessary, a translation of 
it in the Office's procedural language. Article 27 
[Claiming priority] 
An applicant desiring to take advantage of the priority of 
a previous application shall file a declaration of priority. 
The Office may require production of a copy of the 
previous application and, if necessary, a translation of it 
in the Office's procedural language. 
Article 28 
[Right of priority] 
The right of priority shall operate so that the date of first 
filing shall be treated as the date of filing of the 
Community trade mark application, save for purposes of 
the application of Article 14. Article 28 
[Right of priority] 
The right of priority shall have the effect that the date of 
priority shall count as the date of filing of the Community 
trade mark application for the purposes of establishing 
which rights take precedent. 
Article 29 
[Equivalence of Community filing and national filing] 
For purposes of the application of Article 4 of the Paris 
Convention, a Community trade mark application which 
has been accorded a date of filing shall, in the Member 
States, be equivalent to a regular national filing. Article 29 
[Equivalence of Community filing and national filing] 
A Community trade mark application which has been 
accorded a date of filing shall, in the Member States, be 
equivalent to a regular national filing, where appropriate 
with the priority claimed for the Community trade mark 
application. 
TITLE IV 
REGISTRATION PROCEDURE TITLE IV 
REGISTRATION PROCEDURE 
Section 1 
EXAMINATION OF APPLICATIONS 
Article 30 
[Examination as to whether the application satisfies the 
relevant substantive conditions] 
1. A Community trade mark application shall be 
rejected if it cannot be accorded a date of filing because 
the relevant conditions have not been satisfied. Section 1 
EXAMINATION OF APPLICATIONS 
Article 30 
[Examination as to whether the application satisfies the 
relevant substantive conditions] 
1. The Office shall examine whether: 
(a) the Community trade mark application satisfies the 
requirements for the accordance of a date of filing; 
No C 230/18 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. A Community trade mark application which is 
irregular as to form, or in respect whereof the amount of 
fees paid is equal to the minimum fee chargeable but less 
than the prescribed fee, shall be rejected. No rights of 
priority may be claimed in respect of an application where 
the priority provisions contained in this Regulation have 
not been complied with. (b) the Community trade mark application is regular as 
to form; 
(c) the fees due have been paid in the prescribed 
periods. 
2. Where the Community trade mark application does 
not satisfy the requirements referred to in paragraph 1, 
the Office shall give the applicant an opportunity to 
correct the deficiencies. 
3. Paragraph 2 shall not apply until the applicant has 
been requested to correct the irregularities or to pay the 
prescribed amount of fees. 3. If the deficiencies referred to in paragraph 1 (a) are 
not remedied in the prescribed period, the application 
shall not be dealt with as a Community trade mark 
application. Where the applicant complies with the 
invitation of the Office to remedy these deficiencies, the 
date of filing accorded to the application shall be the date 
on which the deficiencies are remedied. 
4. If the deficiencies referred to in paragraph 1 (b) 
or (c) are not remedied in the prescribed period, the 
application shall be refused. 
5. Where the requirements concerning the claim to 
priority have not been satisfied, the right of priority shall 
be lost for the application. 
Article 31 
[Examination as to absolute grounds for refusal] 
1. Where, under Article 6, a trade mark is ineligible 
for registration in respect of some or all of the goods or 
services covered by the Community trade mark 
application, the application shall be rejected as regards 
those goods or services. 
2. Where the trade mark includes an element which is 
not distinctive, registration of the trade mark may be 
subject to the applicant's agreeing, if the Office requested 
him to do so, that his rights in the trade mark are not 
exclusive. 
3. The application shall not be rejected before the 
applicant has been allowed the opportunity of 
withdrawing or amending the application or of 
submitting his observations on the matter. 
4. The application shall be published in respect of the 
goods or services for which it is not ineligible for 
registration. Article 31 
[Examination as to absolute grounds for refusal] 
1. Unchanged. 
2. Where the trade mark contains an element which is 
not distinctive, and where the inclusion of that element in 
the trade mark could give rise to doubts as to the scope of 
protection of the trade mark, the Office may, as a 
condition for registration of that trade mark, require that 
the applicant states that he disclaims any exclusive right 
to such element. Any disclaimer shall be published 
together with the application or the registration of the 
Community trade mark, as the case may be. 
3. Unchanged. 
4. Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/19 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
5. Where, after publication, the application is rejected 
under paragraphs 1 or 2, the decision that it has been 
rejected shall, upon becoming final, be published. Unchanged. 
Article 32 
[Amendment of application] 
A Community trade mark application may, upon request, 
be amended by restricting the list of goods or services, or 
by rectifying the name and address of the applicant, errors 
of wording or of copying, or other obvious mistakes, 
provided that such rectification does not substantially 
change the trade mark. Article 32 
[Amendment of application] 
1. The applicant may at any time withdraw his 
Community trade mark application or restrict the list of 
goods or services contained therein. Where the 
application has already been published, the withdrawal 
or restriction shall also be published. 
2. In other respects, a Community trade mark 
application may only be amended upon request of the 
applicant by rectifying the name and address of the 
applicant, errors of wording or of copying, or other 
obvious mistakes, provided that such rectification does 
not substantially change the trade mark or extend the list 
of goods or services. Where the amendments affect the 
representation of the trade mark or the list of goods or 
services and are made after publication of the application, 
the trade mark application shall be published as 
amended; Article 15 (3) shall apply mutatis mutandis. 
Section 2 
OBSERVATIONS BY THIRD PARTIES AND 
OPPOSITION 
Article 33 
[Observations by third parties] 
Any natural or legal person and any group or body 
representing manufacturers, producers, traders or 
consumers may, after publication of a Community trade 
mark application, submit to the Office written 
observations explaining on which grounds, under 
Article 6, the trade mark is ineligible for registration. Section 2 
OBSERVATIONS BY THIRD PARTIES AND 
OPPOSITION 
Article 33 
[Observations by third parties] 
1. Following the publication of the Community trade 
mark application, any natural or legal person and any 
group or body representing manufacturers, producers, 
suppliers of services, traders or consumers may submit to 
the Office written observations explaining on which 
grounds, under Article 6, the trade mark is ineligible for 
registration. They shall not be parties to the proceedings 
before the Office. 
2. The observations referred to in paragraph 1 shall be 
communicated to the applicant who may comment on 
them. 
Article 34 
[Opposition] 
1. Proprietors of trade marks of the kinds referred 
to in Article 7 may, within three months following 
publication of a Community trade mark application, 
enter opposition to registration of the trade mark. 
Registration may be opposed only on grounds of 
ineligibility under Article 7. Article 34 
[Opposition] 
1. Within a period of three months following the 
publication of a Community trade mark application, 
notice of opposition to registration of the trade mark may 
be given on the grounds that it may not be registered 
under Article 7: 
No C 230/20 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
(a) by the proprietors of earlier rights referred to in 
Article 7 (2) (a) to (d) as well as licensees authorized 
by the proprietor; 
(b) by the proprietors of earlier rights referred to in 
Article 7 (2) (e) or the persons who are entitled under 
the law of Member States to exercise the rights in 
question; 
(c) by the proprietors of trade marks referred to in 
Article 7 (3). 
2. Opposition shall be expressed in writing and shall 2. Unchanged, 
specify the grounds on which it is made. It shall not be 
treated as duly entered until the opposition fee has been 
paid. 
3. If the opposing party has no habitual residence or 3. If the opponent has neither his domicile nor a place 
place of business within the Community he shall, if the of business within the Community he shall, at the request 
applicant so requests, provide security for the costs of the of the applicant, furnish security for the costs of the 
proceedings. The amount of security and the date by proceedings. The Office shall fix the amount of the 
which it must be provided shall be determined by the security and the period within which it must be deposited. 
Office. If security is not provided, the opposition shall be If the security is not deposited within the period specified, 
treated as having been withdrawn. the opposition shall be deemed to be withdrawn. 
Article 35 Article 35 
[Examination of opposition] [Examination of opposition] 
1. When examining the opposition the Office shall 1. In the examination of the opposition the Office 
invite the parties to submit their observations. shall invite the parties to file their observations. 
2. If the applicant so requests or the Office so requires, 2. If the applicant so requests or the Office so requires, 
the proprietor of an earlier Community trade mark who the proprietor of an earlier Community trade mark who 
has entered an opposition shall furnish proof that that has given notice of opposition shall furnish proof that, 
trade mark has been used in manner required by Article during the period of five years preceding the date of 
13 during the period of five years preceding the date of publication of the Community trade mark application, 
publication of the Community trade mark application, the earlier Community trade mark has been put to 
provided the earlier Community trade mark has at that genuine use in the Community in connection with the 
date been registered for not less than five years. In the goods or services in respect of which it is registered, or 
absence of proof to this effect, the opposition shall be that there exist legitimate reasons for non-use, provided 
rejected. If the earlier Community trade mark has been the earlier Community trade mark has at that date been 
used in relation to part only of the goods or services for registered for not less than five years. In the absence of 
which it is registered it shall, for purposes of the proof to this effect, the opposition shall be rejected. If the 
examination of the opposition, be deemed to be registered earlier Community trade mark has been used in relation 
in respect only of that part. This provision shall apply to part only of the goods or services for which it is 
where the earlier trade mark is a trade mark of the kind registered it shall, for purposes of the examination of the 
described in subparagraph (b) or (c) of paragraph 2 of opposition, be deemed to be registered in respect only of 
Article 7. that part. 
2a. Paragraph 2 shail apply mutatis mutandis to 
earlier national trade marks referred to in Article 7 (2) (a), 
with the proviso that use in the Member State in which 
the earlier national trade mark is protected shall be 
substituted for use in the Community. 
3. The Office shall, if it thinks fit, invite the parties 3. The Office shall, if it thinks fit, invite the parties 
to make a friendly settlement. The Office shall make to make a friendly settlement. The Office shall make 
proposals to them for this purpose if it considers that proposals to them for this purpose if it considers that the 
31. 8. 84 Official Journal of the European Communities No C 230/21 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
conditions can be imposed on the prospective use of the 
trade mark applied for and of the earlier trade mark in 
such manner that there will be no serious likelihood of 
confusion on the part of the public. prospective use of the trade mark applied for, of the 
earlier trade mark or of the earlier right can be subjected 
to conditions so that there will be no likelihood of 
confusion on the part of the public. 
4. If examination of the opposition reveals that the 
trade mark is not eligible for registration in respect of 
some or all of the goods or services for which the 
Community trade mark application has been made, the 
application shall be rejected in respect of those goods or 
services. Otherwise the opposition shall be rejected. Unchanged. 
5. Where a final decision is taken to refuse the 
application the decision shall be published. 5. Where the application is refused completely, the 
decision shall be published upon becoming final. 
Section 3 
REGISTRATION Section 3 
REGISTRATION 
Article 36 Article 36 
Where an application meets the requirements of this 
Regulation and the registration fee has been paid in due 
time, the trade mark shall be registered as a Community 
trade mark. If the fee is not paid within the period 
prescribed the application shall be deemed to have been 
withdrawn. Where an application meets the requirements of this 
Regulation and the registration fee has been paid within 
the period prescribed, the trade mark shall be registered 
as a Community trade mark. If the fee is not paid within 
this period prescribed the application shall be deemed to 
be withdrawn. 
TITLE V 
RENEWAL TITLE V 
RENEWAL 
Article 37 
1. Where it is desired to renew the registration of a 
Community trade mark an application shall be made. A 
declaration of user shall be produced and fees shall be 
paid. Article 37 
1. Registration of the Community trade mark shall be 
renewed at the request of the proprietor of the trade mark 
or a licensee expressly authorized by the proprietor, 
provided that the fees are paid. 
la. The Office shall inform the proprietor of the 
Community trade mark and any third party who has a 
right in respect of the Community trade mark recorded in 
the Register of the expiry of the registration in good time 
before the said expiry. 
2. The declaration of user shall specify the goods or 
services in respect of which the Community trade mark 
has been used in manner required by Article 13 during the 
period of five years prior to expiry of the registration. 2. Deleted. 
3. The application shall be submitted, the declaration 
of user produced and the fees paid not earlier than six 
months before expiry of the registration. Failing this, they 
may validly be submitted, filed and paid within six 
months following the date of expiry of the registration, 
but on payment of an additional fee. 3. The request shall be submitted and the fees paid 
within the six months preceding the expiry of the 
registration. Failing this, they may validly be submitted 
and paid within six months following the date of expiry of 
the registration but on payment of an additional fee. 
No C 230/22 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
4. Where the application is submitted, the declaration 
of user produced and the fees paid in respect of part only 
of the goods or services for which the Community trade 
mark is registered, registration shall be renewed only for 
that part of the goods or services. 
5. Renewal shall take effect from the date on which 
the existing registration expires. The renewal shall be 
registered. 4. Where the request is submitted and the fees paid in 
respect of part only of the goods or services for which the 
Community trade mark is registered, registration shall be 
renewed only for that part of the goods or services. 
Unchanged. 
TITLE VI 
SURRENDER, REVOCATION AND INVALIDITY 
Section 1 
SURRENDER 
Article 38 
1. A Community trade mark may be surrendered in 
respect of some or all of the goods or services for which it 
is registered. 
2. Surrender shall be effected by the proprietor of the 
trade mark by means of writing delivered to the Office. 
The surrender shall not have effect until it is recorded in 
the Register. 
3. Surrender shall be registered only with the consent 
of any third party who has a right in rem which is 
recorded in the Register. If a licence is recorded in the 
Register, the surrender shall be recorded only if the 
proprietor of the trade mark proves that he has previously 
informed the licensee of his intention to surrender it. TITLE VI 
SURRENDER, REVOCATION AND INVALIDITY 
Section 1 
SURRENDER 
Article 38 
1. Unchanged. 
Unchanged. 
3. Surrender will be entered in the Register only with 
the agreement of any third party who has a right under 
Articles 18,19 or 20 recorded in the Register. If a licence 
is recorded in the Register, surrender will be entered only 
if the proprietor of the trade mark proves that he has 
informed the licensee of his intention to surrender; this 
entry will be made on expiry of the period prescribed. 
Section 2 
GROUNDS FOR AND CONSEQUENCES OF 
REVOCATION Section 2 
GROUNDS FOR AND CONSEQUENCES OF 
REVOCATION 
Article 39 
[Grounds for revocation] 
1. The rights of the proprietor of a Community trade 
mark shall be revoked: 
if the trade mark has not been used in manner 
required by Article 13 during an unbroken period of 
five years; but no person may claim that the 
proprietor's rights in a Community trade mark 
should be revoked where, during the interval between 
expiry for the five year period and filing of the 
application for revocation, the trade mark has been 
used in manner required by Article 13 and this use 
was made in good faith; Article 39 
[Grounds for revocation] 
1. The rights of the proprietor of a Community trade 
mark shall be declared to be revoked on application to the 
Office or on the basis of a counterclaim in infringement 
proceedings: 
(a) if the trade mark, within an uninterrupted period of 
five years, has not been put to genuine use in the 
Community in connection with the goods or services 
in respect of which it is registered, unless there exist 
legitimate reasons for non-use; however, no person 
may claim that the proprietor's rights in a 
Community trade mark should be revoked where, 
during the interval between expiry of the five year 
period and filing of the application or counter-claim 
use of the trade mark has been started or resumed in 
good faith; 
31. 8. 84 Official Journal of the European Communities No C 230/23 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
(b) if, in consequence of acts of the proprietor, the trade 
mark has become the common name for a product or 
service in respect whereof it is registered; 
(c) if, in consequence of the use made of it in respect of 
the goods or services for which it is registered, it is 
liable to mislead the public, particularly as to the 
nature, quality or geographical origin of those goods 
or services. 
2. Where the grounds for revocation of rights exist in 
respect of part only of the goods or services for which the 
Community trade mark is registered, the rights of the 
proprietor shall be revoked in respect only of that part of 
the goods or services. 
Article 40 
[Consequences of revocation] 
1. Revocation shall be declared by a decision adopted 
in conformity with the terms of this Regulation. 
2. The Community trade mark shall, within the tenor 
of the decision revoking it, be deemed not to have had the 
effects provided for in this Regulation from the time when 
any of the grounds for revocation existed. 
3. Subject to the provisions contained in the laws of 
the Member States relating to actions for compensation 
for damage caused by negligence or by lack of good faith 
on the part of the proprietor of the trade mark, or relating 
to unjust enrichment, the retroactive effect of revocation 
shall not affect: 
(a) any decision on infringement which has acquired the 
authority of a final decision and has been executed 
before the decision revoking the rights of the 
proprietor was adopted; 
(b) any contract concluded before the decision revoking 
the rights of the proprietor was adopted, in so far as 
the contract has been performed before the adoption 
of that decision, but restitution of sums paid under 
the contract may be claimed on grounds of equity to 
the extent justified by the circumstances. (b) if, in consequence of acts or inactivity of the 
proprietor, the trade mark has become the common 
name in the trade for a product or service in respect of 
which it is registered; 
(c) Unchanged. 
2. Where the grounds for revocation of rights exist in 
respect of part only of the goods or services for which the 
Community trade mark is registered, the rights of the 
proprietor shall be declared to be revoked in respect only 
of that part of the goods or services. 
Article 40 
[Consequences of revocation] 
1. Deleted. 
2. The Community trade mark shall, as from the date 
of the decision revoking the rights of the proprietor, be 
deemed no longer to have the effects provided for in this 
Regulation, to the extent that the rights of the proprietor 
have been revoked. At the request of one of the parties it 
may be provided in the decision that the decision has 
effect from an earlier date at which any of the grounds for 
revocation existed. 
3. Unchanged. 
Section 3 
GROUNDS FOR AND CONSEQUENCES OF 
INVALIDITY Section 3 
GROUNDS FOR AND CONSEQUENCES OF 
INVALIDITY 
Article 41 
[Absolute grounds of invalidity] 
1. A Community trade mark which is registered in 
breach of the provisions of Article 6 shall be invalid. Article 41 
[Absolute grounds of invalidity] 
1. A Community trade mark which is registered in 
breach of the provisions of Article 6 shall be declared 
invalid on application to the Office or on the basis of a 
counterclaim in infringement proceedings. 
No C 230/24 Official Journal of the 
ORIGINAL PROPOSAL 
2. Where subparagraph (a) of paragraph 1 of Article 6 
has been contravened, the Community trade mark shall 
nevertheless not be declared invalid if it has become 
distinctive after registration. 
3. Where the ground of invalidity exists in respect of 
part only of the goods or services for which the 
Community trade mark is registered, the trade mark shall 
be invalid as regards only that part of the goods or 
services. 
Article 42 
[Relative grounds of invalidity] 
1. A Community trade mark shall be invalid: 
(a) where a trade mark of the kind described in Article 7 
exists in opposition to it and the conditions set out in 
paragraph 1 or 3 of that Article obtain; 
(b) where some other prior right exists in opposition to it 
and there is a serious likelihood of confusion on the 
part of the public between the trade mark and that 
right; but this provision shall not apply if the right 
subsists only in a particular locality. The expression 
'some other prior right' means any sign used in the 
course of trade before filing of the Community trade 
mark application which, under the law of the 
Member State which governs the sign, entitles the 
proprietor to prohibit the use of any later trade 
mark. 
2. A Community trade mark shall also be invalid if it 
contains: 
(a) a work protected by copyright or by an industrial 
design or model; 
(b) a portrait; 
(c) a surname, where use of the trade mark in relation to 
the goods or services for which it is registered is liable 
to cause serious detriment to the honour, reputation 
or credit of the person whose surname it is. 
3. A Community trade mark shall not be declared 
invalid where the proprietor of any such right as is 
mentioned in paragraph 1 or 2 has consented to 
registration of that trade mark. 
4. Where the proprietor of any such right as is 
mentioned in paragraph 1 or 2 applies for a declaration 
that a Community trade mark is invalid, he shall not enter 
a new application for that purpose on the basis of another »ean Communities 31. 8, 84 
AMENDED PROPOSAL 
2. Where the Community trade mark is registered in 
breach of the provision of Article 6 (1) (a), it may 
nevertheless not be declared invalid if, in consequence of 
the use which has been made of it, it has become 
distinctive after registration, in relation to the goods or 
services for which it is registered. 
3. Where the ground of invalidity exists in respect of 
part only of the goods or services for which the 
Community trade mark is registered, the trade mark shall 
be declared invalid as regards only that part of the goods 
or services. 
Article 42 
[Relative grounds of invalidity] 
1. A Community trade mark shall be declared invalid 
on application to the Office or on the basis of a 
counterclaim in infringement proceedings: 
(a) where an earlier right referred to in Article 7 exists in 
opposition to it and the conditions set out in 
paragraph 1 of the Article obtain, except where the 
earlier right subsists only in a particular locality; 
(b) where the conditions set out in Article 7 (3) 
obtain. 
2. Deleted. 
3. A Community trade mark may not be declared 
invalid where the proprietor of any such right as is 
mentioned in paragraph 1 has consented expressly to 
registration of the Community trade mark. 
4. Where the proprietor of any such right as is 
mentioned in paragraph 1 has previously applied for a 
declaration that a Community trade mark is invalid or 
made a counterclaim in infringement proceedings, he may 
31. 8. 84 Official Journal of the European Communities No C 230/25 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
such right which he could have averred in support of the 
first application. 
5. Paragraph 3 of Article 41 shall apply. not enter a new application or counterclaim for that 
purpose on the basis of another such right which he could 
have invoked in support of his first request. 
5. Article 41 (3) shall apply mutatis mutandis. 
Article 43 
[Consequences of invalidity] 
1. Where a decision is adopted declaring a 
Community trade mark invalid, the trade mark shall, 
within the tenor of the decision declaring it invalid, be 
deemed never to have had the effects provided for in this 
Regulation from the time when the trade mark came into 
existence. 
2. Paragraph 1 and 3 of Article 40 shall apply to 
invalidity of Community trade marks. Article 43 
[Consequences of invalidity] 
1. The Community trade mark shall be deemed not to 
have had, as from the outset, the effects specified in this 
Regulation, to the extent that the trade mark has been 
declared invalid. 
2. Article 40 (3) shall apply mutatis mutandis to 
invalidity of Community trade marks. 
Article 44 
[Limitation in consequence of acquiescence] 
1. Where the proprietor of any such right as is 
mentioned in paragraph 1 or 2 of Article 42 has 
acquiesced in the use of a Community trade mark for a 
period of three successive years, he shall not be entitled to 
apply for a declaration that the trade mark is invalid on 
the ground that that right, or some other right of his, 
exists, but this provision shall not apply if the Community 
trade mark was applied for in bad faith. 
2. Paragraph 1 shall not affect the right of the 
proprietor of a well-known trade mark, as defined in 
paragraph 2 of Article 7, to apply for a declaration that a 
Community trade mark is invalid, provided he makes the 
application within the period of five years following 
registration of the Community trade mark. 
3. The proprietor of a Community trade mark shall 
not be entitled to oppose use of the right referred to in 
paragraph 1 even though the proprietor of that right is no 
longer entitled to apply for a declaration that the 
Community trade mark is invalid. Article 44 
[Limitation in consequence of acquiescence] 
1. Where the proprietor of a Community trade mark 
has acquiesced in the use of a later Community trade 
mark in the Community for a period of three successive 
years, being aware of such use, he shall not be entitled 
either to apply for a declaration that the later trade mark 
is invalid or to oppose the use of the later trade mark in 
respect of the goods or services for which the later trade 
mark has been used, unless the later Community trade 
mark was applied for in bad faith. 
la. Where the proprietor of another earlier right 
mentioned in Article 7 (2) (a) to (d) has acquiesced in the 
use of a later Community trade mark in the Member State 
in which the earlier right is protected for a period of three 
successive years, being aware of such use, he shall not be 
entitled to apply for a declaration that the Community 
trade mark is invalid in respect of the goods or services for 
which the Community trade mark has been used, unless 
the Community trade mark was applied for in bad 
faith. 
2. Unchanged. 
3. The proprietor of a later Community trade mark 
shall not be entitled to oppose use of the earlier right 
referred to in paragraph 1 or la even though that right 
may no longer be invoked against the later Community 
trade mark. 
No C 230/26 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL 
Article 45 
[Prior rights subsisting in particular localities] 
1. The proprietor of a prior right subsisting in a 
particular locality may oppose use of the Community 
trade mark in the territory where his right is valid. 
2. Paragraph 1 shall cease to apply if the proprietor of 
the prior right has acquiesced in the use of the Community 
trade mark for a period of three successive years; but this 
provision shall not apply if the Community trade mark 
was applied for in bad faith. 
3. The proprietor of the Community trade mark shall 
not be entitled to oppose use of the right referred to in 
paragraph 1 even if that provision has ceased to apply. 
Section 4 
PROCEEDINGS IN THE OFFICE IN RELATION TO 
REVOCATION OR INVALIDITY 
Article 46 
[Application for revocation or for a declaration of 
invalidity] 
1. An application for revocation of the rights of the 
proprietor of a Community trade mark or for a 
declaration that the trade mark is invalid may be 
submitted to the Office: 
(a) where Articles 39 and 41 apply, by any natural or 
legal person and any group or body which has the 
capacity to be a party to proceedings in court, 
whether as plaintiff or defendant, for the purpose of 
representing the interests of manufacturers, 
producers, suppliers of services, traders or 
consumers; 
(b) where paragraph 1 of Article 42 applies, by the 
proprietor of the trade mark or other prior right; 
(c) where paragraph 2 of Article 42 applies, by the owner 
of the copyright, the proprietor of the design or 
model, the owner of the relevant surname, the person 
who is the subject of the portrait, or the persons who 
are entitled under the laws of the Member States to 
exercise the rights in question. 
2. The application shall be submitted in writing and 
shall specify the grounds on which it is made. Before the 
fee has been paid the application shall be treated as not 
having been submitted. 
3. Paragraph 3 of Article 34 shall apply. AMENDED PROPOSAL 
Article 45 
[Prior rights subsisting in particular localities] 
1. The proprietor of an earlier right subsisting only in 
a particular locality may oppose use of the Community 
trade mark in the territory where his right is protected. 
2. Paragraph 1 shall cease to apply if the proprietor of 
the earlier right has acquiesced in the use of the 
Community trade mark in the territory where his right is 
protected for a period of three successive years, being 
aware of such use, unless the Community trade mark was 
applied for in bad faith. 
3. The proprietor of the Community trade mark shall 
not be entitled to oppose use of the right referred to in 
paragraph 1 even though that right may no longer be 
invoked against the Community trade mark. 
Section 4 
PROCEEDINGS IN THE OFFICE IN RELATION TO 
REVOCATION OR INVALIDITY 
Article 46 
[Application for revocation or for a declaration of 
invalidity] 
1. An application for revocation of the rights of the 
proprietor of a Community trade mark or for a 
declaration that the trade mark is invalid may be 
submitted to the Office. 
(a) Unchanged; 
(b) where Article 42 (1) applies, by the persons referred 
to in Article 34 (1). 
(c) Deleted. 
2. Unchanged. 
3. Unchanged. 
4. An application for revocation or for a declaration 
of invalidity shall not lie if an application relating to the 4. An application for revocation or for a declaration 
of invalidity shall not lie if an application relating to the 
31. 8. 84 Official Journal of the European Communities No C 230/27 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
same subject-matter and cause of action, and involving 
the same parties, has been adjudicated on by a court in a 
Member State. 
Article 47 
[Examination of the application] 
1. The Office may stay the proceedings of its own 
motion or at the request of any of the parties if, under 
paragraph 1 of Article 78, a counterclaim for revocation 
of the rights of the proprietor of the Community trade 
mark or for a declaration that the Community trade mark 
is invalid has been filed with a court in a Member 
State. 
2. When the Office examines the application for 
revocation of rights or for a declaration of invalidity, it 
shall as often as necessary invite the parties to file 
observations on communications from third parties or 
issued by itself. 
3. The Office may of its own motion contend that the 
Community trade mark, having been registered in breach 
of Article 3, Article 4 or subparagraphs (b) and (c) of 
paragraph 2 of Article 6, is invalid. 
4. If the proprietor of the Community trade mark so 
requests or the Office so requires, the proprietor of an 
earlier Community trade mark, being a party to the 
invalidity proceedings, shall furnish proof that that trade 
mark has been used in manner required by Article 13 
during the period of five years preceding the date of the 
application for a declaration of invalidity, provided that 
at that date the earlier Community trade mark has been 
registered for not less than five years. If, at the date on 
which the Community trade mark application was 
published, the earlier Community trade mark has been 
registered for not less than five years, the proprietor of the 
earlier Community trade mark shall furnish proof that, in 
addition, the conditions contained in paragraph 2 of 
Article 35 were satisfied at that date. In the absence of 
such proof the application for a declaration of invalidity 
shall be rejected. Where the earlier Community trade 
mark has been used in relation to part only of the goods or 
services for which it is registered it shall, for the purposes 
of examining the application for a declaration of 
invalidity, be deemed to be registered in respect only of 
that part of the goods or services. This provision shall 
apply where the earlier Community trade mark is a trade 
mark of the kind described in subparagraph (b) or (c) of 
paragraph 2 of Article 7. same subject-matter and cause of action, and involving 
the same parties, has been adjudicated on by a Court in a 
Member State and has acquired the authority of a final 
decision. 
Article 47 
[Examination of the application] 
1. Unchanged. 
5. In the course of the invalidity proceedings the 
Office shall, if it thinks fit, invite the parties to make a 
friendly settlement. The Office shall make proposals to 
them for this purpose if it considers that conditions can be 2. In the examination of the application for revocation 
of rights or for a declaration of invalidity, the Office shall 
invite the parties, as often as necessary, to file 
observations, within a period to be fixed by the Office, on 
communications from another party or issued by itself. 
3. Unchanged. 
4. If the proprietor of the Community trade mark so 
requests or the Office so requires, the proprietor of an 
earlier Community trade mark, being a party to the 
invalidity proceedings, shall furnish proof that, during 
the period of five years preceding the date of the 
application for a declaration of invalidity, the earlier 
Community trade mark has been put to genuine use in the 
Community in connection with the goods or services in 
respect of which it is registered, or that there exist 
legitimate reasons for non-use provided the earlier 
Community trade mark has at that date been registered 
for not less than five years. If, at the date on which the 
Community trade mark application was published, the 
earlier Community trade mark has been registered for not 
less than five years, the proprietor of the earlier 
Community trade mark shall furnish proof that, in 
addition, the conditions contained in Article 35 (2) were 
satisfied at that date. In the absence of proof to this effect 
the application for a declaration of invalidity shall be 
rejected. If the earlier Community trade mark has been 
used in relation to part only of the goods or services for 
which it is registered it shall, for the purposes of the 
examination of the application for a declaration of 
invalidity, be deemed to be registered in respect only of 
that part of the goods or services. 
4a. Paragraph 4 shall apply mutatis mutandis to 
earlier national trade marks referred to in Article 7 (2) (a), 
with the proviso that use in the Member State in which the 
earlier national trade mark is protected shall be 
substituted for use in the Community. 
5. In the course of the invalidity proceedings the 
Office shall, if it thinks fit, invite the parties to make a 
friendly settlement. The Office shall make proposals to 
them for this purpose if it considers that the prospective 
No C 230/28 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
imposed on the prospective use of the Community trade 
mark, of the earlier trade mark or of the prior right in such 
manner that there will be no serious likelihood of 
confusion on the part of the public. 
6. Where a final decision is taken revoking the rights 
of the proprietor of the Community trade mark or 
declaring it invalid, it shall be removed from the 
register. 
TITLE VII 
APPEALS 
Article 48 
[Decisions from which an appeal will lie] 
1. An appeal shall lie from decisions of the Office. It 
shall have suspensive effect. 
2. An appeal against a decision which does not 
terminate proceedings as regards one of the parties may 
only be made in conjunction with an appeal against the 
final decision, unless the latter contemplates separate 
appeal. 
Article 49 
[Persons entitled to appeal and to be parties to 
proceedings on appeal] 
Any party to proceedings who is adversely affected by a 
decision may appeal. The other parties to those 
proceedings shall automatically be parties to the appeal 
proceedings. 
Article 50 
[Time limit and form of appeal] 
Notice of appeal shall be filed in writing at the Office 
within two months after notification of the decision from 
which the appeal is made. Until such time as the fee for 
appeal has been paid the notice shall be treated as not 
having been filed. Within four months after notification 
of the decision a written statement setting out the grounds 
of appeal shall be filed. 
Article 51 
[Interlocutory revision] 
1. If the department whose decision is contested 
considers that the appeal properly lies and is well use of the Community trade mark, of the earlier trade 
mark or of the earlier right can be subjected to conditions 
so that there will be no likelihood of confusion on the part 
of the public. 
5a. If the examination of the application for 
revocation of rights or for a declaration of invalidity 
reveals that the trade mark should not have been 
registered in respect of some or all of the goods or services 
for which it is registered, the rights of the proprietor of the 
Community trade mark shall be revoked or it shall be 
declared invalid in respect of those goods or services. 
Otherwise the application for revocation of rights or for a 
declaration of invalidity shall be rejected. 
6. Unchanged. 
TITLE VII 
APPEALS 
Article 48 
[Decisions from which an appeal will lie] 
1. Unchanged. 
2. A decision which does not terminate proceedings as 
regards one of the parties can only be appealed together 
with the final decision, unless the decision allows separate 
appeal. 
Article 49 
[Persons entitled to appeal and to be parties to 
proceedings on appeal] 
Unchanged. 
Article 50 
[Time limit and form of appeal] 
Unchanged. 
Article 51 
[Interlocutory revision] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/29 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
founded, it shall rectify its decision. This shall not apply 
where the appellant is in the proceedings opposed by 
another party. 
2. If the appeal is not allowed within one month after 
receipt of the statement of grounds, the appeal shall 
forthwith be remitted to the Board of Appeal without 
comment on the merits. 
Article 52 
[Examination of appeals] 
If the appeal properly lies, the Board of Appeal shall as 
often as necessary invite the parties to file observations on 
communications from another party or issued by itself. Article 52 
[Examination of appeals] 
1. If the appeal is admissible, the Board of Appeal 
shall examine whether the appeal is allowable. 
2. In the examination of the appeal, the Board of 
Appeal shall invite the parties, as often as necessary, to 
file observations, within a period to be fixed by the Board 
of Appeal, on communications from another party or 
issued by itself. 
Article 53 
[Decision on appeal] 
In deciding the appeal the Board of Appeal may exercise 
any power which lies within the competence of the 
department whose decision is the subject of the appeal, or 
it may remit the case to that department for further 
action. In the latter case the department shall, in so far as 
the facts are the same, be bound by the decision of the 
Board of Appeal and by the grounds on which it is 
based. Article 53 
[Decision on appeal] 
1. Following the examination as to the allowability of 
the appeal, the Board of Appeal shall decide on the 
appeal. The Board of Appeal may either exercise any 
power within the competence of the department which 
was responsible for the decision appealed or remit the 
case to that department for further prosecution. 
2. If the Board of Appeal remits the case for further 
prosecution to the department whose decision was 
appealed, that department shall be bound by the ratio 
decidendi of the Board of Appeal, in so far as the facts are 
the same. 
Article 54 
[Further appeal by the parties] 
1. A further appeal to the Court of Justice of the 
European Communities shall lie from decisions of the 
Boards of Appeal. Such further appeals shall have 
suspensive effect. 
2. The further appeal may be lodged on grounds of 
want of jurisdiction, infringement of an essential 
procedural requirement, infringement of the Treaty, of 
this Regulation or of any rule of law relating to their 
application, in so far as that rule of law is not a provision 
of national law, or misuse of power. The Court of Justice 
shall not question the facts as found by and recorded in 
the decision of the Board of Appeal. Article 54 
[Further appeal by the parties] 
1. A further appeal to the Court of Justice of the 
European Communities shall lie from decisions of the 
Boards of Appeal on appeals. Such further appeal shall 
have suspensive effect. 
2. Unchanged. 
No C 230/30 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
3. The further appeal may be made by any party to the 
proceedings before the Board of Appeal who is adversely 
affected by its decision. 
4. The further appeal shall be lodged with the Court of 
Justice within two months after notification of the 
decision of the Board of Appeal. 
5. If the Court of Justice remits the case for further 
action to the Board of Appeal, the Board shall, in so far as 
the facts are the same, be bound by the decision of the 
Court of Justice and by the grounds on which it is 
based. 3. Unchanged. 
4. Unchanged. 
5. Unchanged. 
Article 55 
[Further appeal in the interest of the law] 
1. The Commission may, in the interest of the law, 
lodge a further appeal to the Court of Justice against a 
decision of the Board of Appeal. The further appeal may 
be lodged on grounds of want of jurisdiction, 
infringement of an essential procedural requirement, 
infringement of the Treaty, of this Regulation or of any 
rule of law relating to their application, in so far as that 
rule of law is not a provision of national law, or misuse of 
power. The provisions contained in this paragraph shall 
apply to final decisions only. 
2. Where the decision is reversed, the parties shall not 
be entitled to plead this fact. 
3. The Registrar of the Court of Justice shall notify the 
Member States and the Council that the further appeal 
has been lodged, and they shall be entitled to file 
memoranda or observations in writing with the Court 
within two months after receipt of notification. 
4. No costs or expenses shall be charged or 
reimbursed in connection with such proceedings as are 
provided for in this Article. Article 55 
[Further appeal in the interest of the law] 
Unchanged. 
TITLE VIII 
PROCEDURE 
Section 1 
GENERAL PROVISION 
Article 56 
[Statement of grounds on which decisions are based] 
Decisions of the Office shall state the grounds on which 
they are based. They shall be based only on grounds or on 
evidence on which the parties involved have had the 
opportunity of presenting their observations. TITLE VIII 
PROCEDURE 
Section 1 
GENERAL PROVISION 
Article 56 
[Statement of grounds on which decisions are based] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/31 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article. 57 
[Examination of the facts by the Office of its own 
motion] 
In proceedings before it the Office shall examine the facts 
of its own motion. It may disregard facts or items of 
evidence which have not been submitted in due time by 
the parties involved. 
Article 58 
[Oral proceedings] 
1. If the Office considers that oral proceedings would 
be useful they shall be held either on motion of the Office 
itself or at the request of any of the parties to the 
proceedings. 
2. Oral proceedings before the Examining Division, 
Opposition Division or Administration Division shall not 
be public. 
3. Oral proceedings, incl uding delivery of the decision 
shall, as regards the Cancellation Division and the Board 
of Appeal, be public, in so far as the department before 
which the proceedings are taking place does not decide 
otherwise in circumstances where serious and 
unwarranted disadvantages could arise from admitting 
the public, particularly for any of the parties to the 
proceedings. In derogation from paragraph 2, this 
present paragraph shall apply to oral proceedings before 
the Opposition Division in cases where Article 91 
applies. 
Article 59 
[Taking of evidence] 
1. In any proceedings before the Office, the means of 
giving or obtaining evidence shall include the 
following: 
(a) hearing the parties; 
(b) requests for information; 
(c) production of documents; 
(d) hearing the witnesses; 
(e) opinions by experts; 
(f) inspection; 
(g) sworn statements in writing. Article 57 
[Examination of the facts by the Office of its own 
motion] 
1. In proceedings before it the Office shall examine the 
facts of its own motion. However, in proceedings relating 
to relative grounds for refusal of registration, the Office 
shall be restricted in this examination to the facts, 
evidence and arguments provided by the parties and the 
relief sought. 
2. The Office may disregard facts or evidence which 
are not submitted in due time by the parties 
concerned. 
Article 58 
[Oral proceedings] 
Unchanged. 
Article 59 
[Taking of evidence] 
Unchanged. 
2. The relevant department may commission one of its 2. Unchanged, 
members to examine the evidence adduced. 
No C 230/32 Official Journal of 
ORIGINAL PROPOSAL 
3. If the Office considers it necessary that a party, 
witness or expert give evidence orally, it shall either: 
(a) issue a summons requiring the relevant person to 
appear before it, or 
(b) request the competent judicial authority in the 
country of residence of the relevant person to take the 
evidence, as provided in paragraph 3 of Article 70. 
4. A party, witness or expert who is summoned before 
the Office may request it to allow his evidence to be heard 
by the competent judicial authority in his country of 
residence. On receipt of such request, or if there is no 
response to the summons, the Office may, in accordance 
with the provisions of paragraph 3 of Article 70, request 
the competent judicial authority to take the evidence of 
that person. 
5. If a party, witness or expert gives evidence before 
the Office, the Office may, if it considers it advisable that 
the evidence be given in solemn form, request the 
competent authority in the country of residence of the 
relevant person to hear his evidence under the requisite 
conditions. 
6. When the Office requests a competent judicial 
authority to take the evidence, it may request it to take the 
evidence in solemn form and to permit a member of the 
relevant department to attend the hearing and question 
the party, witness or expert either through the 
intermediary of that judicial authority or directly. 
Article 60 
[Service] 
The Office shall effect service of all decisions and 
summonses, and of notices which cause time limits to run 
or which are required to be served either in pursuance of 
other provisions of this Regulation or by order of the 
President of the Office. 
Article 61 
[Restitutio in integrum] 
1. Where, in spite of having taken all due care in the 
particular circumstances, the applicant for or proprietor 
of a Community trade mark or any other party to 
proceedings before the Office has been unable to observe 
a time limit vis-a-vis the Office, his rights shall, upon 
application, be restored if his failure to respect the time 
limit has resulted directly, by virtue of the provisions of 
this Regulation, in the loss of any right or means or 
redress. European Communities 31. 8. 84 
AMENDED PROPOSAL 
3. Unchanged. 
4. Unchanged. 
5. If a party, witness or expert gives evidence before 
the Office, the latter may, if it considers it advisable for 
the evidence to be given on oath or in an equally binding 
form, request, in accordance with Article 70 (3), the 
competent court in the country of residence of the person 
concerned to re-examine his evidence under such 
conditions. 
6. When the Office requests a competent court to take 
evidence, it may request the court, in accordance with 
Article 70 (3), to take the evidence on oath or in an 
equally binding form and to permit a member of the 
department concerned to attend the hearing and question 
the party, witness or expert either through the 
intermediary of the court or directly. 
7. The parties shall be informed of the hearing of a 
witness. They shall have the right to be present and to put 
questions to the witness. 
Article 60 
[Service] 
Unchanged. 
Article 61 
[Restitutio in integrum] 
1. Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/33 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. Applications shall be filed in writing within two 
months after the cause of noncompliance with the time 
limit has ceased to operate. The act omitted shall be 
completed within this period. Application may be made 
only within the period of one year following the expiry of 
the time limit which has not been observed. Where the 
formalities for renewal have not been complied with, the 
period specified in paragraph 3 of Article 37 shall be 
deducted from the one-year period. 
3. An application shall state the grounds on which it is 
based and the facts on which it relies. It shall not be 
regarded as duly filed until the fee for restoration of rights 
has been paid. 
4. The decision on the application shall be determined 
by the department which is competent in relation to the 
omitted act. 2. Unchanged. 
Unchanged. 
Unchanged. 
5. The provisions of this Article shall not apply to the 
time limits referred to in paragraph 2 of this Article nor to 
the time limit specified in paragraph 1 of Article 26. 
6. The applicant for or proprietor of a Community 
trade mark shall not oppose the use of a sign in good faith 
by a third party during the period between the time when 
the rights in the application or in the trade mark are lost 
and the restoration of those rights. 
Article 62 
[Reference to general principles] 
In the absence of procedural provisions in this 
Regulation, the Office shall take into account the 
principles of procedural law which are generally 
recognized in the Member States. 
Article 63 
[Termination of financial obligations] 
1. The Office's right to require payment of fees shall 
be extinguished after four years from the end of the 
calendar year in which the fees become due for 
payment. 
2. Rights against the Office for the refunding of fees or 
of sums overcharged by the Office shall be extinguished 
after four years from the end of the calendar year in which 
the rights arose. 
3. A request for payment of a fee shall have effect to 
interrupt the period specified in paragraph 1, and a 
written claim for refund, stating the grounds on which it 
is made, shall have effect to interrupt the period specified 
in paragraph 2. After interruption the period shall begin 5. The provisions of this Article shall not be applicable 
to the time limits referred to in paragraph 2 of this Article, 
Articles 26 (1) and 34(1). 
6. Where the applicant for or proprietor of a 
Community trade mark has his rights re-established, he 
may not invoke his rights vis-a-vis a third party in respect 
of goods or services which that third party has put on the 
market in good faith under that trade mark in the course 
of the period between the loss of rights in the application 
or in the trade mark and publication of the mention of 
re-establishment of those rights. 
Article 62 
[Reference to general principles] 
In the absence of procedural provisions in this 
Regulation, the implementing regulation, the fees 
regulations or the rules of procedure of the Boards of 
Appeal, the Office shall take into account the principles of 
procedural law generally recognized in the Member 
States. 
Article 63 
[Termination of financial obligations] 
Unchanged. 
No C 230/34 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL 
to run again immediately and shall terminate at the latest 
six years after the end of the calendar year in which it 
originally commenced, unless in the meantime judicial 
proceedings to enforce the right have been instituted; in 
this case the period shall end not earlier than one year 
after the judgment has acquired the authority of a final 
decision. AMENDED PROPOSAL 
Section 2 
COSTS 
Article 64 
[Costs] 
1. Each party to opposition proceedings or to 
proceedings for revocation or for a declaration of 
invalidity shall pay the costs incurred by him unless the 
Opposition Division or Cancellation Division decides 
that it would be equitable that the costs of oral 
proceedings or of certain stages in the examination be 
borne in some other manner. A decision concerning 
division of costs may, if applied for, be adopted where a 
Community trade mark application, an opposition, an 
application for revocation of rights or an application for a 
declaration of invalidity is withdrawn, or where 
registration of a Community trade mark is not renewed or 
where the proprietor of a Community trade mark 
surrenders it. 
2. Paragraph 1 shall also apply to the costs incurred by 
each of the parties to appeal proceedings. A Board of 
Appeal decision on division of costs may cover all 
essential items including travel and subsistence and the 
remuneration of an agent, adviser or advocate. 
3. The Registrar of the Opposition Division or 
Cancellation Division shall, upon application, determine 
the amount of costs to be paid where a decision is taken to 
divide them. The amount so determined may upon 
application be amended if the Opposition Division or 
Cancellation Division so decides. Section 2 
COSTS 
Article 64 
[Costs] 
1. Each party to opposition proceedings or to 
proceedings for revocation or to proceedings for a 
declaration of invalidity or to appeal proceedings shall 
meet the costs he has incurred unless a decision of an 
Opposition Division or Cancellation Division or Board of 
Appeal, for reasons of equity, orders a different 
apportionment of essential costs, including travel and 
subsistence and the remuneration of an agent, adviser or 
advocate. A decision on the apportionment of costs may 
also be taken on request when a Community trade mark 
application, an opposition, an application for revocation 
of rights or an application for a declaration of invalidity is 
withdrawn, or when registration of a Community trade 
mark is not renewed or where the proprietor of a 
Community trade mark surrenders it. 
2. Deleted. 
Unchanged. 
Article 65 
[Enforcement of decisions which determine the amount 
of costs] 
1. Final decisions of the Office which determine the 
amount of costs shall be enforceable. Article 65 
[Enforcement of decisions which determine the amount 
of costs] 
Unchanged. 
2. Enforcement shall be governed by the rules of civil 
procedure applicable in the State in which it takes place. 
Subject only to verification that the relevant document is 
authentic, the enforcement clause or endorsement shall be 
appended by the national authority appointed for that 
31. 8. 84 Official Journal of the European Communities No C 230/35 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
purpose by the government of each Member State; the 
governments shall inform the Office and the Court of 
Justice of the identity of each such national authority. 
3. When, upon application by the person concerned, 
these formalities have been completed, he shall be entitled 
to proceed to enforcement by bringing the matter before 
the competent body designated by national law. 
4. Enforcement shall not be suspended except by 
decision of the Court of Justice. Control as to the 
regulatory of enforcement measures shall, however, 
reside with the national courts. 
Section 3 
INFORMATION OF THE PUBLIC AND OF THE OFFICIAL 
AUTHORITIES OF THE MEMBER STATES 
Article 66 
[Register of Community Trade Marks] 
The Office shall keep a register which shall be known as 
the Register of Community Trade Marks, wherein shall 
be recorded the particulars whose registration is required 
by this Regulation. The Register shall be open to public 
inspection. Section 3 
INFORMATION OF THE PUBLIC AND OF THE OFFICIAL 
AUTHORITIES OF THE MEMBER STATES 
Article 66 
[Register of Community Trade Marks] 
The Office shall keep a register to be known as the 
Register of Community Trade Marks, which shall 
contain those particulars the registration of which is 
provided for by this Regulation or by the implementing 
regulation. The Register shall be open to public 
inspection. 
Article 67 
[Inspection of files] 
1. The files relating to Community trade mark 
applications which are awaiting publication shall not be 
made available for inspection without the consent of the 
applicant. 
2. Any person who proves that the applicant for a 
Community trade mark has stated, directly or indirectly, 
that after the trade mark has been registered he will 
invoke it against that person may, without the applicant's 
consent, inspect the file before the application is 
published. 
3. After publication of a Community trade mark 
application the files relating to the application and to the 
trade mark itself may be inspected on request. Certain 
documents in the file may, however, be withheld from 
inspection. Article 67 
[Inspection of files] 
Unchanged. 
2. Unchanged. 
3. Subsequent to the publication of the Community 
trade mark application, the files relating to such 
application and the resulting trade mark may be inspected 
on request. Certain documents in the file may, however, 
be withheld from inspection in accordance with the 
provisions of the implementing regulation. 
Article 68 
[Community Trade Marks Bulletin] Article 68 
[Community Trade Marks Bulletin] 
The Office shall publish periodically a Community Trade The Office shall periodically publish: 
Marks Bulletin containing entries made in the Register of 
No C 230/36 Official Journal of 
ORIGINAL PROPOSAL 
Community Trade Marks and all other particulars of 
which publication is required under this Regulation. 
Article 69 
[Classification of Community trade marks] 
Goods and services for which Community trade marks 
are applied for shall be classified in conformity with the 
Office's system of classification. 
Article 70 
[Administrative and legal cooperation] 
1. Unless this Regulation otherwise provides, the 
Office and the courts or authorities of the Member States 
shall on request give assistance to each other by supplying 
information or sending files for inspection. Where the 
Office send files for inspection to courts, Public 
Prosecutors' Offices or central industrial property offices, 
the restrictions laid down in Article 67 shall not apply. 
2. Information received in pursuance of paragraph 1 
shall be used only for the purpose for which it was 
requested. The Office and the courts or authorities of the 
Member States, and the officials and other employees 
thereof, shall not disclose information received by them in 
pursuance of paragraph 1 if that information is of a 
confidential nature. 
3. Upon receipt of letters rogatory from the Office, the 
courts or other competent authorities of the Member 
States shall undertake on its behalf any inquiries or other 
judicial measures to the extent that they have power to 
do so. 
Article 71 
[Exchange of publication] 
The Office and the central industrial property offices of 
the Member States shall on request dispatch to each other 
for their own use, free of charge, one or more copies of 
their respective publications. European Communities 31. 8. 84 
AMENDED PROPOSAL 
(a) a Community Trade Marks Bulletin containing 
entries made in the Register of Community Trade 
Marks as well as other particulars the publication of 
which is prescribed by this Regulation; 
(b) a Bulletin of the Community Trade Marks Office 
containing notices and information of a general 
character issued by the President of the Office, as well 
as any other information relevant to this Regulation 
or its implementation. 
Article 69 
[Classification of Community trade marks] 
Unchanged. 
Article 70 
[Administrative and legal cooperation] 
1. Unchanged. 
2. Unchanged. 
3. Unchanged. 
4. Each Member State shall designate a central 
authority which will undertake to receive letters rogatory 
issued by the Office and to transmit them to the authority 
competent to execute them. 
Article 71 
[Exchange of publication] 
1. Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/37 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. The Office may conclude agreements relating to the 
exchange or supply of publications. 
Section 4 
REPRESENTATION 
Article 72 
[General principles applicable to representation] 
1. No person shall be compelled to be represented 
before the Office by a professional representative. 
2. However, any natural or legal person whose place 
of habitual residence or principal place of business is not 
in the Community shall be represented before the Office 
by a professional representative. 
3. Natural or legal persons whose place of habitual 
residence or principal place of business is in the 
Community may act vis-ci-vis the Office through one of 
their employees; due authority shall be conferred for this 
purpose on such employee. An employee of a legal person 
to which this paragraph applies may, in derogation from 
paragraph 2 in appropriate cases, also represent other 
legal persons which are economically associated with that 
legal person. Section 4 
REPRESENTATION 
Article 72 
[General principles applicable to representation] 
Unchanged. 
Article 73 
[Professional representatives] 
1. Professional representation of natural or legal 
persons before the Office may be undertaken by any 
advocate who is authorized to practice in a Member State 
and whose place of business is in the Community, to the 
extent that he can act in that State as a representative 
in trade mark matters; or by those professional 
representatives whose names appear on the list 
maintained for this purpose by the Office. 
2. Any natural person who fulfils the following 
conditions may be entered on the list of professional 
representatives: 
(a) he must be a national of one of the Member 
States; 
(b) his place of business or employment must be in the 
Community; 
(c) he must be entitled to represent natural or legal 
persons in trade mark matters before the competent 
departments in the Member State where he practises 
or is employed. Where, in that State, the right to act is 
not conditional on the obtaining of a particular 
professional qualification, any person who acts in 
trade mark matters before the competent 
departments of that State and who applies for his Article 73 
[Professional representatives] 
Unchanged. 
No C 230/38 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
name to be entered on the list must have practised 
continuously for not less than five years. 
3. Entry on the list shall be effected upon request, 
provided it is accompanied by a certificate issued by the 
central industrial property office showing that the 
conditions laid down in paragraph 2 are satisfied. 
TITLE IX 
JURISDICTION AND PROCEDURE IN LEGAL 
ACTIONS RELATING TO COMMUNITY TRADE 
MARKS 
Section 1 
JURISDICTION TITLE IX 
JURISDICTION AND PROCEDURE IN LEGAL 
ACTIONS RELATING TO COMMUNITY TRADE 
MARKS 
Section 1 
JURISDICTION 
Article 73a 
Unless otherwise specified in this Regulation, the 
Convention on Jurisdiction and Enforcement of 
Judgments in Civil and Commercial Matters, signed in 
Brussels on 27 September 1968, with the adjustments 
made by the Convention on the Accession to that 
Convention of the Kingdom of Denmark, of Ireland and 
of the United Kingdom of Great Britain and Northern 
Ireland, signed in Luxembourg on 9 October 1978 and by 
the Convention on the accession of the Hellenic Republic 
to that Convention, signed in Luxembourg on 25 October 
1982, which three Conventions are together hereinafter 
referred to as 'the Convention on Jurisdiction and 
Enforcement', shall apply to actions relating to 
Community trade marks and to decisions given in respect 
of such actions. 
Article 74 
[Jurisdiction of national courts to hear actions for 
infringement of Community trade marks] 
1. Actions for infringement of a Community trade 
mark shall be heard by the courts of the Member State in 
which the defendant has his habitual residence or, if he 
has no habitual residence in the Community, in which he 
has a# place of business. If the defendant has neither 
habitual residence nor place of business in one of the 
Member States, such actions shall be heard by a court in 
the Member State in which the plaintiff has his habitual 
residence or, if he has no habitual residence in the 
Community, in which he has a place of business. If neither 
the defendant nor the plaintiff has his habitual residence 
or a place of business in the Community, the action shall 
be heard by a court in the State in which the seat of the 
Office is situated. The Court hearing the action shall have 
jurisdiction in respect of acts of infringement alleged to 
have been committed in any Member State. Article 74 
[Jurisdiction of national courts to hear actions for 
infringement of Community trade marks] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/39 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. Actions for infringement of a Community trade 
mark may also be heard by a court in the Member State in 
which an act of infringement has been committed. The 
court hearing the action shall have jurisdiction only in 
respect of acts of infringement alleged to have been 
committed in that State. 2. Unchanged. 
3. If the court hearing the action finds that the 
Community trade mark has been infringed by use of 
another Community trade mark it shall order that the 
latter shall not be used anywhere in the Community; in 
any case the order prohibiting the use of the Community 
trade mark shall have effect only in the Member State in 
which an act of infringement occurred. 3. If the court hearing action finds that the 
Community trade mark has been infringed by use of 
another trade mark or another sign it shall order that the 
latter shall not be used anywhere in the Community; 
provisional measures shall be ordered similarly. 
4. Any court in a Member State seized of the 
Community trade mark matter may of its own motion or 
on application by any of the parties request the office for 
an expert opinion on the significance of the meanings, 
definitions and pronunciations of any words comprised in 
trade marks or other signs which are the subject of such an 
action. Such an opinion shall be treated as a part of the 
evidence in the case before the court in question. 
Article 75 
[Supplementary provisions] 
Each Member State shall arrange that actions for 
infringement of Community trade marks which are 
brought at first instance shall be heard by a court which 
has jurisdiction for the whole of that State of for several 
jurisdictional districts therein. Article 75 
[Supplementary provisions] 
Unchanged. 
Section 2 
PROCEDURE 
Article 76 
[Rules applicable] 
Unless this Regulation otherwise provides, actions for 
infringement of Community trade marks shall be subject 
to those rules of procedure applicable in the laws of the 
Member States to actions for infringement of national 
trade marks. Section 2 
PROCEDURE 
Article 76 
[Rules applicable] 
Unless this Regulation otherwise provides, actions and 
applications for provisional measures for infringement of 
Community trade marks shall be subject to the rules of 
procedure applicable in the Member State in which the 
court hearing the action is located to actions for 
infringement of national trade marks. 
Article 77 
[Persons who are entitled to bring an action for 
infringement] 
1. Actions for infringements may be brought by the 
proprietor of a Community trade mark. A licensee may 
bring such actions only if the proprietor consents 
thereto. Article 77 
[Persons who are entitled to bring an action for 
infringement] 
Unchanged. 
No C 230/40 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. A licensee shall, for the purpose of obtaining 
compensation for damage suffered by him, be entitled to 
intervene in an infringement action brought by the 
proprietor of the Community trade mark. 
Article 78 
[Counterclaims for declaration of revocation 
or invalidity] 
1. The court which is hearing an action for 
infringement of a Community trade mark shall have 
jurisdiction to give judgment on a counterclaim made by 
the original defendant for a declaration that the rights of 
the proprietor are revoked or that the trade mark is 
invalid. Article 78 
[Counterclaims for declaration of revocation 
or invalidity] 
Unchanged. 
2. No such counterclaim as aforesaid may be made if 
an application or counterclaim relating to the same 
subject-matter and cause of action, and involving the 
same parties, has been determined by the Office. 
3. Article 47, paragraphs 2 to 5, shall apply. 
4. If the court declares that the rights of the proprietor 
are revoked or that the Community trade mark is invalid, 
it shall of its own motion order that the trade mark be 
removed from the Register. When the judgment has 
acquired the authority of a final decision, the Office shall 
remove the trade mark from the Register upon 
application by whichever of the parties first requests it. 
Article 79 
[Stay of proceedings] 
1. The court which is hearing a counter-claim under 
paragraph 1 of Article 78 for a declaration that the rights 
of the proprietor of a Community trade mark are revoked 
or that the trade mark is invalid may, of its own motion or 
on application by any of the parties, stay the proceedings 
and invite the original defendant to present to the Office, 
within such time as the court determines, an application 
for a declaration of revocation or for a declaration of 
invalidity. 
2. The court which is hearing any action relating to a 
Community trade mark may also, of its own motion or on 
application by any of the parties, stay the proceedings 
where an application for a declaration that the rights of 
the proprietor of a Community trade mark shall be 
revoked or that such trade mark is invalid has been 
submitted to the Office. Article 79 
[Stay of proceedings] 
Unchanged. 
Article 80 
[Defences as to the merits] 
In proceedings concerning a Community trade mark, the 
fact that the proprietor's rights therein have been revoked 
or that the trade mark is invalid shall not be pleaded by 
way of defence as to the merits. Article 80 
[Defences as to the merits] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/41 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
TITLE X TITLE X 
EFFECT ON THE LAWS OF THE EFFECT ON THE LAWS OF THE 
MEMBER STATES MEMBER STATES 
Section 1 Section 1 
CUMULATIVE PROTECTION PROHIBITED CUMULATIVE PROTECTION PROHIBITED 
Article 81 ' Article 81 
1. Where the proprietor of a Community trade mark is 
also the proprietor in a Member State of a national trade 
mark which is identical with or similar to the Community 
trade mark and is for goods or services for which the 
Community trade mark is registered, the effects of the 
national trade mark shall, upon publication of the 
registration of the Community trade mark, be suspended 
for so long as the Community trade mark produces its 
effects. 
2. The proprietor of the Community trade mark shall, 
however, be entitled to claim that in the Member State in 
which the national trade mark exists, or continues to be 
registered, his rights in the Community trade mark are 
effective from the date on which he acquired the national 
trade mark. 
3. In derogation from paragraph 1, the effects of the 
national trade mark shall not revive if the Community 
trade mark is removed from the Register following a 
declaration that the proprietor's rights therein are 
revoked on the ground of non-user. 
Section 2 
PROHIBITION ON APPLICATION OF THE NATIONAL 
LAWS OF THE MEMBER STATES TO COMMUNITY 
TRADE MARKS 
Article 82 
Without prejudice to Article 45, the national laws of the 
Member States shall not apply in relation to the validity or 
use of Community trade marks. 1. Where the proprietor of a Community trade mark is 
also the proprietor in a Member State of a national trade 
mark which is identical with or similar to the Community 
trade mark and is for identical or similar goods or services 
for which the Community trade mark is registered the 
effects of the national trade mark shall, upon publication 
of the registration of the Community trade mark, be 
suspended, so far as they give identical rights to those 
given by the Community trade mark, for so long as the 
Community trade mark produces its effects. 
la. Any person who, in one of the Member States, 
has brought an infringement action on the basis of a 
Community trade mark, or a national trade mark which 
does not give identical rights to those given by the 
Community trade mark, may not bring a new action 
against the same respondent or his assignee in respect of 
the same or an identical later infringement, in respect of 
the other trade mark. 
2. The proprietor of the Community trade mark 
may, however, take advantage, for the benefit of the 
Community trade mark, of the date of acquisition of the 
national trade mark, as regards the Member State in 
which the national trade mark existed or remains 
registered. 
3. In derogation from paragraph 1, the suspended 
effects of the national trade mark shall not revive if the 
Community trade mark is removed from the register 
following a declaration that the proprietor's rights therein 
are revoked on the ground of non-user. 
Section 2 
PROHIBITION ON APPLICATION OF THE NATIONAL 
LAWS OF THE MEMBER STATES TO COMMUNITY 
TRADE MARKS 
Article 82 
1. Without prejudice to Articles 45 and 74 to 76, the 
law of Member States shall not apply in relation to the 
use of Community trade marks. However, the law of 
Member States on the granting of provisional measures 
shall apply, provided that final injunctions shall be made 
only after the conclusion of the procedure provided for in 
Articles 46 and 47. 
2. Paragraph 1 shall not prevent actions from being 
brought against a Community trade mark under the law 
of Member States relating in particular to civil liability 
No C 230/42 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
and unfair competition, to the extent that the use of a 
national trade mark may be prohibited under that law, 
provided that such actions are not brought on the same 
grounds as those contained in Articles 7 and 42. 
Section 3 
CONVERSION INTO A NATIONAL TRADE MARK 
APPLICATION 
Article 83 
[Request for the application of national procedure] 
1. The central industrial property offices in the 
Member States shall not apply the procedure for 
registration of a national trade mark on the basis of a 
Community trade mark application or Community trade 
mark, save where the applicant or proprietor of the trade 
mark so requests and the following circumstances 
obtain: 
(a) the Community trade mark application has been 
refused, withdrawn or deemed to have been 
withdrawn; 
(b) the Community trade mark ceases to have effect, but 
this provision shall not apply where the trade mark 
has been removed from the Register following a 
declaration that the proprietor's rights are revoked on 
the grounds of non-user. 
2. Paragraph 1 shall apply only in those Member 
States where the Office or a national court has not decided 
that grounds for refusal of registration or grounds of 
invalidity exist under this Regulation in connection with 
the Community trade mark application or in connection 
with the Community trade mark itself. 
3. A request for conversion shall be filed within three 
months after the application has been refused or 
withdrawn or within three months after the Community 
trade mark ceases to have effect. An applicant or 
proprietor who does not file within the said period of 
three months shall lose the right to claim priority for the 
national trade mark from the date of filing of the 
application or from the date of the Community trade 
mark. Section 3 
CONVERSION INTO A NATIONAL TRADE MARK 
APPLICATION 
Article 83 
[Request for the application of national procedure] 
Unchanged. 
Article 84 
[Submission of the request for conversion] 
1. The Member States shall determine the conditions 
which are to apply to the submission of requests for 
conversion. 
2. The Office shall, if so requested, and provided the 
fee is paid, make available to the applicant or proprietor a 
copy of the file relating to the Community trade mark 
application or Community trade mark. Article 84 
[Submission of the request for conversion] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/43 
ORIGINAL PROPOSAL 
Article 85 
[Communication and publication] 
1. The central industrial property offices in the 
Member States shall inform the Office of all requests for 
conversion which they receive. 
2. Receipt of any such request shall be recorded in the 
Register of Community Trade Marks. If the Community 
trade mark application has been published, the request 
for conversion shall be published also. 
TITLE XI 
COMMUNITY GUARANTEE MARKS AND 
COMMUNITY COLLECTIVE MARKS 
Article 86 
[Community guarantee marks] 
1. Community guarantee marks may consist of any 
sign which is described as such when the guarantee mark 
is applied for, if its purpose is to guarantee the quality, 
method of manufacture or other common characteristics 
of goods or services of different undertakings which use 
the guarantee mark under the proprietor's control. 
2. Community guarantee marks shall not be used in 
respect of goods or services produced or supplied by the 
proprietor himself or by a person who is economically 
associated with him. 
Article 87 
[Community collective marks] 
Representative groups or bodies of manufacturers, 
producers, suppliers of services, or traders may if they 
have legal personality, apply for Community collective 
marks which are described as such in the application and 
are capable of distinguishing the goods or services of their 
members from those of other undertakings. 
Article 88 
[Application of provisions] 
The provisions of this Regulation shall apply to 
Community guarantee marks and to Community 
collective marks, unless Articles 86 to 98 provide 
otherwise. 
Article 89 
[Rules relating to the mark] 
1. Application for Community guarantee marks or 
Community collective marks shall be accompanied by 
regulations relating to them. AMENDED PROPOSAL 
Article 85 
[Communication and publication] 
Unchanged. 
TITLE XI 
COMMUNITY GUARANTEE MARKS AND 
COMMUNITY COLLECTIVE MARKS 
Article 86 
[Community guarantee marks] 
Unchanged. 
Article 87 
[Community collective marks] 
Unchanged. 
Article 88 
[Application of provisions] 
Unchanged. 
Article 89 
[Rules relating to the mark] 
Unchanged. 
No C 230/44 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. The regulations governing a Community guarantee 
mark shall set out the common characteristics of the 
goods or services which the mark is intended to guarantee 
and shall specify the detailed arrangements for real and 
effective supervision of the use of the mark, and suitable 
sanctions. 
Article 90 
[Refusal of application] 
1. An application for a Community guarantee mark or 
Community collective mark shall be refused where the 
provisions of Articles 86, 87 or 89 are not satisfied, or 
where the regulations are contrary to public policy or to 
accepted principles of morality. 
2. An application for a Community guarantee mark 
shall also be refused if the public is liable to be misled as 
regards the nature of the mark. 
Article 91 
[Opposition of Community guarantee marks on absolute 
grounds for refusal] 
1. Any natural or legal person and any group or body 
which has the capacity to be a party to proceedings in 
court, whether as plaintiff or defendant, for the purpose 
of representing the interests of manufacturers, producers, 
suppliers of services, traders or consumers may, within a 
period of three months after publication of an application 
for a Community guarantee mark, file opposition at 
the Office, on any of the following grounds, against 
registration of the mark: 
(a) that under Article 6 or 86 the mark is ineligible for 
registration; 
(b) that the regulations do not comply with the 
requirements of paragraph 2 of Article 89 or are 
contrary to public policy or to accepted principles of 
morality; 
(c) that the public is liable to be misled as regards the 
nature of the mark. Article 90 
[Refusal of application] 
Unchanged. 
Article.91 
[Opposition of Community guarantee marks on absolute 
grounds for refusal] 
Unchanged. 
2. The opposition shall be expressed in writing and 
shall specify the grounds on which it is based. It shall not 
be treated as duly entered until the opposition fee has been 
paid. 
Article 92 
[Observations by third parties] 
Article 33 shall apply in the cases described in 
Article 90. 
Article 93 
[Use of marks] 
The use made of a Community guarantee mark or of a 
Community collective mark by a person entitled to use it Unchanged. Article 92 
[Observations by third parties] 
Article 93 
[Use of marks] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/45 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
shall be in conformity with the provisions of this 
Regulation and with the conditions which it imposes as 
regards such use. 
Article 94 
[Amendment of the regulations governing the mark] 
1. The proprietor of a Community guarantee mark or 
of a Community collective mark shall inform the Office of 
any amendment to the regulations governing it. 
2. Amendments shall not be accepted if they are 
inconsistent with the provisions of Article 89 or are 
contrary to public policy or to accepted principles of 
morality or, where they relate to Community guarantee 
marks, are liable to mislead the public as regards the 
nature of the mark or the guarantees provided by the 
regulations. 
3. The Office shall publish the amendments to 
regulations governing Community guarantee marks or 
Community collective marks, or shall publish the fact 
that the regulations have been amended. Where the 
amendments are published in full, Articles 91 and 92 shall 
apply. 
4. Amendments to regulations shall not take effect 
until they have been registered. 
Article 95 
[Persons who are entitled to bring an action for 
infringement] 
1. The provisions of Article 77 concerning the rights 
of licensees shall apply to every person who has authority 
to use a Community guarantee mark or Community 
collective mark. 
2. The proprietor of a Community guarantee mark or 
Community collective mark shall also be entitled to claim 
compensation for damage sustained by persons who have 
authority to use the mark, if the damage arises in 
consequence of an unauthorized use of the mark. 
Article 96 
[Grounds for revocation] 
The rights of the proprietor of a Community guarantee 
mark or of a Community collective mark shall be 
revoked if: 
(a) he uses the mark in a manner which is inconsistent 
with the provisions of paragraph 2 of Article 86, 
or 
(b) he authorizes or acquiesces in the use of the mark on 
terms which are different from those prescribed by 
this Regulation. 
Article 97 
[Grounds for and consequences of invalidity] 
1. A Community guarantee mark or a Community 
collective mark which is registered in breach of the Article 94 
[Amendment of the regulations governing the mark] 
Unchanged. 
Article 95 
[Persons who are entitled to bring an action for 
infringement] 
Unchanged. 
Article 96 
[Grounds for revocation] 
Unchanged. 
Article 97 
[Grounds for and consequences of invalidity] 
1. A Community guarantee mark or a Community 
collective mark which is registered in breach of the 
No C 230/46 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
provisions of Article 90 shall be invalid. Such mark shall 
also be invalid if an amendment to the regulations 
governing it is registered in breach of paragraph 2 of 
Article 94. The provisions of this Article shall not apply, 
however, if the proprietor of the mark, by further 
amending the regulations, complies with the 
requirements of those Articles. 
2. Where a Community guarantee mark or 
Community collective mark is invalid in consequence of 
amendment of the regulations governing it, it shall be 
deemed not to have had the effects provided for in this 
Regulation from the time when the amendment was 
registered. provisions of Articles 90 or 91 shall be invalid. Such mark 
shall also be invalid if an amendment to the regulations 
governing it is registered in breach of paragraph 2 of 
Article 94. The provisions of this Article shall not apply 
however if the proprietor of the mark, by further 
amending the regulations, complies with the 
requirements of those Articles. 
2. Unchanged. 
Article 98 
[No applications to be made for registration of 
Community guarantee marks or Community collective 
marks which have been removed from the Register, and 
such marks are not to be used) 
1. Where a Community guarantee mark or a 
Community collective mark has not been renewed, or the 
proprietor's rights therein have been revoked, or the mark 
has been declared invalid or has been surrendered, no 
fresh application shall be made for registration thereof 
and it shall not be used on any ground whatsoever for 
goods or services which are similar to those in respect of 
which it was registered until three years have elapsed since 
the relevant non-renewal, revocation, surrender or 
declaration of invalidity. 
2. Without prejudice to the application of 
subparagraph (b) of paragraph 1 of Article 83, paragraph 
1 of this Article shall not apply to the former proprietor of 
the mark or to his successors in title thereto. Article 98 
[No applications to be made for registration of 
Community guarantee marks or Community collective 
marks which have been removed from the Register, and 
such marks are not to be used) 
Unchanged. 
TITLE XIa 
SYMBOL TO INDICATE A COMMUNITY TRADE 
MARK 
Article 98a 
The symbol of the Greek capital letter epsilon contained 
within a circle, thus E may be used to indicate a registered 
Community trade mark. 
TITLE XII 
THE COMMUNITY TRADE MARKS OFFICE TITLE XII 
THE COMMUNITY TRADE MARKS OFFICE 
Section 1 
GENERAL PROVISIONS Section 1 
GENERAL PROVISIONS 
Article 99 
[Legal status] 
1. The Office is a body of the Community and has 
legal personality. Article 99 
[Legal status] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/47 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. In each of the Member States the Office shall enjoy 
the most extensive legal capacity accorded to legal 
persons under their laws; it may, in particular, acquire or 
dispose of movable and immovable property and may be 
a party to legal proceedings. For these purposes the Office 
shall be represented by its President. 
3. The seat of the Office shall be located at . . . 
Article 100 
[Staff] 
1. The Staff Regulations of officials of the European Unchanged. 
Communities, the conditions of employment of other 
servants of the European Communities, and the rules 
adopted jointly by the institutions of the European 
Communities for purposes of the application of those 
Staff Regulations and conditions of employment shall 
apply to the staff of the Office, but without prejudice to 
the application of Article 118 to the members of the 
Boards of Appeal. 
2. Without prejudice to Article 105, the powers 
conferred on each institution by the Staff Regulations, 
and by the conditions of employment of other servants, 
shall be exercised by the Office in relation to its staff. 
Article 101 
[Privileges and immunities] 
The Protocol on the Privileges and Immunities of the Unchanged. 
European Communities shall apply to the Office. 
Article 102 
[Liability] 
1. The contractual liability of the Office shall be Unchanged, 
governed by the law applicable to the relevant 
contract. 
2. The Court of Justice of the European Communities 
shall have jurisdiction to give judgment pursuant to any 
arbitration clause contained in a contract concluded by 
the Office. 
3. As regards non-contractual liability, the Office 
shall, in accordance with the general principles common 
to the laws of the Member States, make good any damage 
caused by its departments or servants in the performance 
of their duties. Article 100 
[Staff] 
Article 101 
[Privileges and immunities] 
Article 102 
[Liability] 
4. The Court of Justice shall have jurisdiction in 
disputes relating to compensation for any such damage as 
is referred to in paragraph 3. 
5. The personal liability of servants towards the 
Office shall be governed by the provisions laid down in its 
Staff Regulations or in the conditions of employment 
applicable to its staff. 
No C 230/48 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article 103 
[Languages] 
The language of the Office for procedural purposes Article 103 
[Languages] 
The language of the Office for procedural purposes is . . . 
However the persons participating in the procedure shall 
be entitled to conduct written and oral proceedings in any 
language of the Community with translation and, in the 
case of hearings, simultaneous interpretation into the 
languages of the Office and those of the persons 
participating in the procedure in accordance with the 
Implementing Regulations. 
Section 2 
ADMINISTRATION OF THE OFFICE 
Article 104 
[Powers of the President] 
1. The Office shall be administered by the 
President. 
2. To this end the President shall have inter alia the 
following functions and powers: 
(a) he shall take all necessary steps, including the 
adoption of internal administrative instructions and 
the publication of notices, to ensure the functioning 
of the Office; 
(b) he may, after consulting the Advisory Committee, 
place before the Commission any proposal to amend 
this Regulation, the implementing Regulation, the 
rules of procedure of the Boards of Appeal, the fees, 
regulations or the financial rules; 
(c) he shall draw up the estimates of revenues and 
expenditure of the Office and shall implement the 
budget; 
(d) he shall submit a management report to the 
Commission and Advisory Committee each year; 
(e) he shall exercise the powers conferred by paragraph 2 
of Article 100. 
3. The President shall be assisted by a number of 
Vice-Presidents. If the President is unable to act, one of 
the Vice-Presidents shall act in place of him. Section 2 
ADMINISTRATION OF THE OFFICE 
Article 104 
[Powers of the President] 
Unchanged. 
Article 105 
[Appointment of senior officials] 
1. The President of the Office shall be selected from a 
list of three candidates which shall be prepared by the 
Advisory Committee, and shall be appointed by the 
Commission. Power to dismiss the President shall lie with 
the Commission after consulting the Advisory 
Committee. Article 105 
[Appointment of senior officials] 
1. Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/49 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
2. The Vice-Presidentsof the Office and the members 
of the Boards of Appeal shall be appointed or dismissed as 
in paragraph 1. 
3. Without prejudice to paragraph 1 of Article 118, 
the Commission shall exercise disciplinary authority over 
the employees referred to in paragraphs 1 and 2 of this 
Article. 
Article 106 
[Control of legality] 
1. The Commission shall be responsible for legal 
supervision of the acts of the President. 
2. It shall require that any unlawful act of the 
President be altered or annulled. 
3. Any Member State, or any third party who is 
directly and personally concerned, may refer to the 
Commission any act of the President, whether express or 
implied, so that the Commission will examine the legality 
of that act. 
Section 3 
ADVISORY COMMITTEE 
Article 107 
[Creation and powers] 
1. An Advisory Committee to the Office is hereby 
established and is hereinafter referred to as 'the 
Committee'. 
2. It shall settle the list of candidates provided for in 
Article 105. 
3. It shall advise the President concerning matters for 
which the Office is responsible. 
4. It shall be consulted in the cases provided for in this 
Regulation. 
5. It may deliver opinions to the Commission and to 
the President where it considers that this is necessary. 
Article 108 
[Composition] 
1. The Committee shall be composed of one 
representative of the Government or each Member State 
and one representative of the Commission, and their 
alternates. 
2. The members who represent the Governments of 
the Member States, and the alternates of those members, 
shall be appointed by the Council. The member who 
represents the Commission, and his alternate, shall be 
appointed by the Commission. 2. The Vice-Presidents of the Office and the members 
of the Boards of Appeal shall be appointed and the 
Vice-Presidents dismissed as in paragraph 1. 
3. Unchanged. 
Article 106 
[Control of legality] 
Unchanged. 
Section 3 
ADVISORY COMMITTEE 
Article 107 
[Creation and powers] 
Unchanged. 
Article 108 
[Composition] 
Unchanged. 
No C 230/50 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
3. The term of office of members and of their 
alternates shall be three years. It shall be renewable. 
Article 109 
[Presidency] 
The Committee shall elect a President and Vice-President 
from among its members. If the President is unable to act 
the Vice-President shall act in place of him. Article 109 
[Presidency] 
Unchanged. 
Article 110 
[Meetings] 
1. Meetings of the Committee shall be convened by 
the President. 
2. The President of the Office may take part in the 
deliberations. 
3. The Committee shall hold and ordinary meeting 
once a year; it shall also meet at the request of its President 
or of the Commission or of one-third of its members. 
4. It shall adopt rules of procedure. 
5. Its decisions shall be taken by simple majority vote. 
Where, however, the Committee has to take a decision 
under paragraph 1 or 2 or Article 105 or paragraph 1 of 
Article 121, a majority of not less than three-quarters of 
the votes shall be required. Article 110 
[Meetings] 
Unchanged. 
Article 111 
[Duties of office] 
The members of the Committee shall be bound, even after 
cessation of their appointment, not to disclose or make 
use of information which is of a confidential nature. Article 111 
[Duties of office] 
Unchanged. 
Section 4 
ARRANGEMENT OF DEPARTMENTS 
Article 112 
[Departments responsible for procedure] 
For the purposes of implementing the procedures laid 
down in this Regulation, there shall be established within 
the Office: 
(a) an Examining Division; 
(b) an Opposition Division; 
(c) an Administration of Trade Marks Division; 
(d) a Cancellation Division; 
(e) Boards of Appeal. Section 4 
ARRANGEMENT OF DEPARTMENTS 
Article 112 
[Departments responsible for procedure] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/51 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article 113 
[Examining Division] 
1. The Examining Division shall be responsible for 
examining Community trade mark applications and for 
deciding whether trade marks applied for are to be 
registered. 
2. Decisions of the Examining Division shall be taken 
by one of its members. Article 113 
[Examining Division] 
Unchanged. 
Article 114 
[Opposition Division] 
1. The Opposition Division shall be responsible for 
deciding whether a trade mark is to be registered as a 
Community trade mark in cases where observations are 
submitted or opposition is entered. 
2. Decisions of the Opposition Division shall be taken 
by three of its members, of whom two shall not have 
taken part in examining the application. One of the 
deciding members must be qualified in law. 
3. Examination of the opposition may be conducted 
by one of those three members. Article 114 
[Opposition Division] 
Unchanged. 
Article 115 
[Administration of Trade Marks Division] 
1. The Administration of Trade Marks Division shall 
be responsible for doing all such acts of the Office in 
relation to Community trade marks as lie outside the 
competence of other departments thereof. It shall be 
responsible inter alia for deciding what particulars are to 
be recorded in or are to be deleted from the Register of 
Community Trade Marks. 
2. Decisions of the Administration of Trade Marks 
Division shall be taken by one of its members. Article 115 
[Administration of Trade Marks Division] 
Unchanged. 
Article 116 
[Cancellation Division] 
1. The Cancellation Division shall be responsible for 
examining applications for revocation or for declarations 
of invalidity of Community trade marks. 
2. Decisions of the Cancellation Division shall be 
taken by three members who are qualified in law. Article 116 
[Cancellation Division] 
Unchanged. 
3. Examination of applications may be conducted by 
one of those three members. 
No C 230/52 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article 117 
[Boards of Appeal] 
1. The Boards of Appeal shall be responsible for 
examining appeals from decisions of the Examining 
Division, Opposition Division, Cancellation Division 
and Administration of Trade Marks Division. 
2. Each Board of Appeal shall be composed of three 
members who are qualified in law. Article 117 
[Boards of Appeal] 
Unchanged. 
Article 118 
[Independence of members of Boards of Appeal] 
1. The members of the Boards of Appeal shall be 
appointed for a term of five years and may not be removed 
from office during that term, except where there are 
serious grounds for removing them and the Court of 
Justice, having been seized by the Commission, decides 
that the member in question shall be removed. 
2. The members of the Boards of Appeal shall be 
independent. In making their decisions they shall not be 
bound by any instructions they may have received. 
3. The members of the Boards of Appeal shall not be 
members of the Examining Division, Opposition 
Division, Administration of Trade Marks Division or 
Cancellation Division. Article 118 
[Independence of members of Boards of Appeal] 
Unchanged. 
Article 119 
[Exclusion and objection] 
1. Members of the Cancellation Division or of the 
Boards of Appeal shall not take part in determining and 
matter in which they have a personal interest or in which 
they have previously been involved as representatives of 
any of the parties, or in relation to which they 
participated in taking the final decision in the course of 
the registration procedure. Members of the Boards of 
Appeal shall not take part in appeal proceedings if they 
participated in making the decision under appeal. 
2. If, for any of the reasons mentioned in paragraph 1, 
or for any other reason, a member of the Cancellation 
Division or of a Board of Appeal considers that he should 
not take part in determining a matter, he shall inform the 
Division or Board accordingly. 
3. Members of the Cancellation Division or of a Board 
of Appeal may be objected to by any party for any of the 
reasons mentioned in paragraph 1, or if suspected of 
partiality. An objection shall not lie if, while being aware 
of a reason for objecting, the relevant party has taken any Article 119 
[Exclusion and objection] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/53 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
procedural steps. No objection shall be based upon the 
nationality of members. 
4. In the situations mentioned in paragraphs 2 and 3 
the Cancellation Division and the Boards of Appeal shall 
decide, without the participation of the member 
concerned, as to the action to be taken. For the purposes 
of making the decision the member objected to shall be 
replaced in the Division or Board of Appeal by his 
alternate. 
Section 5 
BUDGET AND FINANCIAL CONTROL 
Article 120 
[Budget] 
1. Estimates of all the Office's revenue and 
expenditure shall be prepared for each financial year and 
shall be shown in the Office's budget, and each financial 
year shall correspond with the calendar year. 
2. The revenue and expenditure shown in the budget 
shall be in balance. 
3. Revenue means (without prejudice to other types of 
income) total fees payable under the fees, regulations, and 
to the extent that it is necessary a subvention recorded 
under a specific heading of the budget of the European 
Communities, Commission Section. Section 5 
BUDGET AND FINANCIAL CONTROL 
Article 120 
[Budget] 
Unchanged. 
Article 121 
[Preparation of the budget] 
1. The President shall draw up each year an estimate 
of the Office's revenue and expenditure for the following 
year and shall send it to the Commission not later than 31 
March in each year, together with an establishment plan 
and an opinion from the Committee. 
2. The Commission shall annex the estimate to the 
preliminary draft budget of the European Communities. 
The Commission may attach an opinion on the estimate 
along with an alternative estimate. If a subvention under 
paragraph 3 of Article 120 is necessary, the Commission 
may propose such amendment of the estimate as it 
considers requisite. 
3. The Office's budget shall be adopted by the budget 
authority in accordance with the same procedure as the 
general budget. 
Article 122 
[Control] Article 121 
[Preparation of the budget] 
Unchanged. 
Article 122 
[Control] 
1. Not later than 31 March in each year the President Unchanged, 
shall transmit to the Commission and to the Court of 
No C 230/54 Official Journal of the European Communities 31. 8. 84 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Auditors accounts of the Office's total revenue and 
expenditure for the preceding financial year. The Court 
of Auditors shall examine them in accordance with 
Article 206a of the Treaty. 
2. The European Parliament shall give a discharge to 
the President of the Office in accordance with the 
procedure laid down in Article 206b of the Treaty. 
3. Control of commitment and payment of all 
expenditure and control of the existence and recovery of 
all revenue of the Office shall be carried out by the 
Financial Controller of the Commission. 
Article 123 
[Financial provisions] 
The Financial Regulation applicable to the general budget 
of the European Communities shall apply to the Office 
without prejudice to the provisions contained in this 
Regulation or to special provisions determined by 
regulation adopted by the Council in accordance with the 
conditions laid down in Article 209 of the Treaty. Article 123 
[Financial provisions] 
Unchanged. 
Article 124 
[Fees regulations] 
1. The fees regulations shall determine in particular 
the amounts of the fees and the ways in which they are to 
be paid. 
2. The amounts of the fees shall be fixed in such 
manner that the Office's revenue covers its 
expenditure. 
3. The fees regulations shall be adopted on a proposal 
from the Commission by qualified majority vote of the 
Council after obtaining the opinion of the European 
Parliament. Article 124 
[Fees regulations] 
Unchanged. 
2. The amounts of the fees shall be fixed in such a 
manner that the Office's revenue covers its expenditure 
after a transitional period. 
3. Unchanged. 
TITLE XIII 
FINAL PROVISIONS 
Article 125 
[Community implementing provisions] 
1. The rules implementing this Regulation, 
particularly as regards the calculation and extension of 
periods of time to which a time limit applies, shall be 
adopted in an implementing Regulation. 
2. The implementing Regulation and the rules of 
procedure of the Boards of Appeal shall be adopted by the 
Council, by qualified majority vote, on a proposal from 
the Commission. TITLE XIII 
FINAL PROVISIONS 
Article 125 
[Community implementing provisions] 
Unchanged. 
31. 8. 84 Official Journal of the European Communities No C 230/55 
ORIGINAL PROPOSAL AMENDED PROPOSAL 
Article 126 
[National implementing provisions] 
The Member States shall within 12 months following the 
adoption of this Regulation bring into operation the 
measures which are requisite for the purpose of 
implementing Articles 75 and 84 hereof and shall 
forthwith inform the Commission of those measures. 
Article 127 
Save as regards Articles 75 and 84, this Regulation shall 
enter into force 12 months after it has been published in 
the Official Journal of the European Communities. Article 126 
[National implementing provisions] 
Unchanged. 
Article 127 
Unchanged. 
This Regulation shall be binding in its entirety and 
directly applicable in all Member States.