EUROPEAN COMMISSION Brussels, 31.10.2016 COM(2016) 702 final 2016/0345(COD) Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on the European Union trade mark (codification) (Text with EEA relevance)



EXPLANATORY MEMORANDUM 1.In the context of a people’s Europe, the Commission attaches great importance to simplifying and clarifying the law of the Union so as to make it clearer and more accessible to citizens, thus giving them new opportunities and the chance to make use of the specific rights it gives them. This aim cannot be achieved so long as numerous provisions that have been amended several times, often quite substantially, remain scattered, so that they must be sought partly in the original instrument and partly in later amending ones. Considerable research work, comparing many different instruments, is thus needed to identify the current rules. For this reason a codification of rules that have frequently been amended is also essential if the law is to be clear and transparent. 2.On 1 April 1987 the Commission decided to instruct its staff that all acts should be codified after no more than ten amendments, stressing that this is a minimum requirement and that departments should endeavour to codify at even shorter intervals the texts for which they are responsible, to ensure that their provisions are clear and readily understandable. 3.The Conclusions of the Presidency of the Edinburgh European Council (December 1992) confirmed this, stressing the importance of codification as it offers certainty as to the law applicable to a given matter at a given time. Codification must be undertaken in full compliance with the normal procedure for the adoption of acts of the Union. Given that no changes of substance may be made to the instruments affected by codification, the European Parliament, the Council and the Commission have agreed, by an interinstitutional agreement dated 20 December 1994, that an accelerated procedure may be used for the fast-track adoption of codification instruments. 4.The purpose of this proposal is to undertake a codification of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark. The new Regulation will supersede the various acts incorporated in it; this proposal fully preserves the content of the acts being codified and hence does no more than bring them together with only such formal amendments as are required by the codification exercise itself. 5.The codification proposal was drawn up on the basis of a preliminary consolidation, in 24 official languages, of Regulation (EC) No 207/2009 and the instruments amending it, carried out by the Publications Office of the European Union, by means of a data-processing system. Where the Articles have been given new numbers, the correlation between the old and the new numbers is shown in a table set out in Annex III to the codified Regulation. ê 207/2009 (adapted) è1 2424/2015 Art. 1.1 è2 2424/2015 Art. 1.5 2016/0345 (COD) Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on the è1 European Union trade mark ç (codification) (Text with EEA relevance)

THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION, Having regard to the Treaty Ö on the Functioning of Õ the Ö European Õ è2 Union ç, and in particular Ö the first paragraph of Õ Article Ö 118 Õ thereof, Having regard to the proposal from the European Commission, After transmission of the draft legislative act to the national parliaments, Having regard to the opinion of the European Economic and Social Committee, Acting in accordance with the ordinary legislative procedure, Whereas: ê 207/2009 recital 1 (adapted) (1)Council Regulation (EC) No Ö 207/2009 Õ has been substantially amended several times. In the interests of clarity and rationality, Ö that Õ Regulation should be codified. ê 2424/2015 recital 1 (adapted) (2)Council Regulation (EC) No 40/94, which was codified in 2009 as Regulation (EC) No 207/2009, created a system of trade mark protection specific to the Union which provided for the protection of trade marks at the level of the Union, in parallel to the protection of trade marks available at the level of the Member States according to the national trade mark systems, harmonised by Council Directive 89/104/EEC, which was codified as Directive 2008/95/EC of the European Parliament and of the Council. ê 207/2009 recital 2 (adapted) è1 2424/2015 Art. 1.5 (3)It is desirable to promote throughout the è1 Union ç a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market. In order to Ö establish Õ a market of this kind and make it increasingly a single market, not only Ö should Õ 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 Ö should Õ be Ö laid down Õ which enable undertakings to adapt their activities to the scale of the è1 Union ç, whether in manufacturing and distributing goods or in providing services. For those purposes, trade marks enabling the products and services of undertakings to be distinguished by identical means throughout the entire è1 Union ç, regardless of frontiers, should feature amongst the legal instruments which undertakings have at their disposal. ê 207/2009 recital 3 è1 2424/2015 Art. 1.5

è2 2424/2015 Art. 1.2 (4)For the purpose of pursuing the è1 Union ç's said objectives it would appear necessary to provide for è1 Union ç arrangements for trade marks whereby undertakings can by means of one procedural system obtain è2 EU trade marks ç to which uniform protection is given and which produce their effects throughout the entire area of the è1 Union ç. The principle of the unitary character of the è2 EU trade mark ç thus stated should apply unless otherwise provided for in this Regulation. ê 207/2009 recital 4 (adapted) è1 2424/2015 Art. 1.5 (5)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 order to open up unrestricted economic activity in the whole of the internal market for the benefit of undertakings, Ö it should be possible to register Õ trade marks which are governed by a uniform è1 Union ç law directly applicable in all Member States. ê 2424/2015 recital 5 (6)The experience acquired since the establishment of the Community trade mark system has shown that undertakings from within the Union and from third countries have accepted the system which has become a successful and viable complement and alternative to the protection of trade marks at the level of the Member States. ê 207/2009 recital 6 (adapted) è1 2424/2015 Art. 1.5 è2 2424/2015 Art. 1.2 (7)The è1 Union ç law relating to trade marks nevertheless does not replace the laws of the Member States on trade marks. It would not in fact appear to be justified to require undertakings to apply for registration of their trade marks as è2 EU trade marks ç. ê 2424/2015 recital 6 (adapted) (8)National trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Union level, or which are unable to obtain Union-wide protection while national protection does not face any obstacles. It should be left to each person seeking trade mark protection to decide whether the protection is sought only as a national trade mark in one or more Member States, or only as an EU trade mark, or both. ê 207/2009 recital 7 è1 2424/2015 Art. 1.2

(9)The rights in an è1 EU trade mark ç should not be obtained otherwise than by registration, and registration should be refused in particular if the trade mark is not distinctive, if it is unlawful or if it conflicts with earlier rights. ê 2424/2015 recital 9 (adapted) (10)A sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. ê 207/2009 recital 8 è1 2424/2015 Art. 1.2 (11)The protection afforded by an è1 EU trade mark ç, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in cases of similarity between the mark and the sign and the goods or services. An interpretation should be given of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. ê 2424/2015 (adapted) (12)In order to ensure legal certainty and full consistency with the principle of priority, under which a registered earlier trade mark takes precedence over later registered trade marks, it is necessary to provide that the enforcement of rights conferred by an EU trade mark should be without prejudice to the rights of proprietors acquired prior to the filing or priority date of the EU trade mark. This is in conformity with Article 16(1) of the Agreement on trade-related aspects of intellectual property rights of 15 April 1994. (13)Confusion as to the commercial source from which the goods or services emanate may occur when a company uses the same or a similar sign as a trade name in Ö such Õ a way that a link is established between the company bearing the name and the goods or services coming from that company. Infringement of an EU trade mark should therefore also comprise the use of the sign as a trade name or similar designation as long as the use is made for the purposes of distinguishing goods or services. (14)In order to ensure legal certainty and full consistency with specific Union legislation, it is appropriate to provide that the proprietor of an EU trade mark should be entitled to prohibit a third party from using a sign in comparative advertising where such comparative advertising is contrary to Directive 2006/114/EC of the European Parliament and of the Council. (15)In order to Ö ensure Õ trade mark protection and combat counterfeiting effectively, and in line with international obligations of the Union under the framework of the World Trade Organisation (WTO), in particular Article V of the General Agreement on Tariffs and Trade (GATT) on freedom of transit and, as regards generic medicines, the ‘Declaration on the TRIPS Agreement and public health’ adopted by the Doha WTO Ministerial Conference on 14 November 2001, the proprietor of an EU trade mark should be entitled to prevent third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods come from third countries and bear without authorisation a trade mark which is identical or essentially identical with the EU trade mark registered in respect of such goods. (16)To this effect, it should be permissible for EU trade mark proprietors to prevent the entry of infringing goods and their placement in all customs situations, including transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission, also when such goods are not intended to be placed on the market of the Union. In performing customs controls, the customs authorities should make use of the powers and procedures laid down in Regulation (EU) No 608/2013 of the European Parliament and the Council, also at the request of the right holders. In particular, the customs authorities should carry out the relevant controls on the basis of risk analysis criteria. (17)In order to reconcile the need to ensure the effective enforcement of trade mark rights with the necessity to avoid hampering the free flow of trade in legitimate goods, the entitlement of the proprietor of the EU trade mark should lapse where, during the subsequent proceedings initiated before the European Union trade mark court (‘EU trade mark court’) competent to take a substantive decision on whether the EU trade mark has been infringed, the declarant or the holder of the goods is able to prove that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination. (18)Article 28 of Regulation (EU) No 608/2013 provides that a right holder is to be liable for damages towards the holder of the goods where, inter alia, the goods in question are subsequently found not to infringe an intellectual property right. (19)Appropriate measures should be taken with a view to ensuring the smooth transit of generic medicines. With respect to international non-proprietary names (INN) as globally recognised generic names for active substances in pharmaceutical preparations, it is vital to take due account of the existing limitations on the effect of EU trade mark rights. Consequently, the proprietor of an EU trade mark should not have the right to prevent a third party from bringing goods into the Union without being released for free circulation there, based upon similarities between the INN for the active ingredient in the medicines and the trade mark. (20)In order to enable proprietors of EU trade marks to combat counterfeiting effectively, they should be entitled to prohibit the affixing of an infringing mark to goods and preparatory acts carried out prior to the affixing. (21)The exclusive rights conferred by an EU trade mark should not entitle the proprietor to prohibit the use of signs or indications by third parties which are used fairly and thus in accordance with honest practices in industrial and commercial matters. In order to Ö ensure Õ equal conditions for trade names and EU trade marks in the event of conflicts, given that trade names are regularly granted unrestricted protection against later trade marks, such use should be only considered to include the use of the personal name of the third party. It should further permit the use of descriptive or non-distinctive signs or indications in general. Furthermore, the proprietor should not be entitled to prevent the fair and honest use of the EU trade mark for the purpose of identifying or referring to the goods or services as those of the proprietor. Use of a trade mark by third parties to draw the consumer's attention to the resale of genuine goods that were originally sold by or with the consent of the proprietor of the EU trade mark in the Union should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this Regulation should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression.

ê 207/2009 recital 9 (adapted) è1 2424/2015 Art. 1.2 (22)It follows from the principle of free movement of goods that the proprietor of an è1 EU trade mark ç must not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the Ö European Economic Area Õ, under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods. ê 2424/2015 recital 22 (23)In order to ensure legal certainty and safeguard legitimately acquired trade mark rights, it is appropriate and necessary to lay down, without prejudice to the principle that the later trade mark cannot be enforced against the earlier trade mark, that proprietors of EU trade marks should not be entitled to oppose the use of a later trade mark if the later trade mark was acquired at a time when the earlier trade mark could not be enforced against the later trade mark. ê 207/2009 recital 10 è1 2424/2015 Art. 1.2 (24)There is no justification for protecting è1 EU trade marks ç or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used. ê 2424/2015 recital 23 (25)For reasons of equity and legal certainty, the use of an EU trade mark in a form that differs in elements which do not alter the distinctive character of that mark, in the form in which it is registered, should be sufficient to preserve the rights conferred regardless of whether the trade mark in the form as used is also registered. ê 207/2009 recital 11 (adapted) è1 2424/2015 Art. 1.2 (26)An è1 EU trade mark ç is to be regarded as an object of property which exists separately from the undertakings whose goods or services are designated by it. Accordingly, it should be capable of being transferred, of being charged as security in favour of a third party and of being the subject matter of licences. ê 207/2009 recital 12 (adapted)

è1 2424/2015 Art. 1.5 (27)Administrative measures are necessary at è1 Union ç level for implementing in relation to every trade mark the trade mark law Ö laid down Õ by this Regulation. It is therefore essential, while retaining the è1 Union ç's existing institutional structure and balance of powers, to provide for a Ö European Union Intellectual Property Office (‘the Office’) Õ which is independent in relation to technical matters and has legal, administrative and financial autonomy. To this end it is necessary and appropriate that Ö the Õ Office should be a body of the è1 Union ç having legal personality and exercising the powers which are conferred on it by this Regulation, and that it should operate within the framework of è1 Union ç law without detracting from the competencies exercised by the è1 Union ç institutions. ê 2424/2015 recital 25 (adapted) (28)EU trade mark protection is granted in relation to specific goods or services whose nature and number determine the extent of protection afforded to the trade mark proprietor. It is therefore essential to Ö lay down Õ rules for the designation and classification of goods and services in Ö this Õ Regulation and to ensure legal certainty and sound administration by requiring that the goods and services for which trade mark protection is sought are identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on the basis of the application alone, to determine the extent of the protection applied for. The use of general terms should be interpreted as only including all goods and services clearly covered by the literal meaning of the term. Proprietors of EU trade marks, which because of the practice of the Office Ö prior to 22 June 2012 were Õ registered in respect of the entire heading of a class of the Ö system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 Õ, should be given the possibility to adapt their lists of goods and services in order to ensure that the content of the Register meets the requisite standard of clarity and precision in accordance with the case law of the Court of Justice of the European Union. ê 2424/2015 recital 26 (adapted) (29)Ö In order to avoid unnecessary delays in registering an EU trade mark, Õ it is appropriate to Ö lay down a Õ regime of Ö optional Õ EU and national trade mark searches Ö that should be Õ flexible in terms of user needs and preferences. The optional EU and national trade mark searches should be complemented by the making available of all-encompassing, fast and powerful search engines for the use of the public free of charge within the context of cooperation between the Office and the central industrial property offices of the Member States, including the Benelux Office for Intellectual Property. ê 207/2009 recital 13 (adapted) (30)It is necessary to ensure that parties who are affected by decisions made by the Office are protected by the law in a manner which is suited to the special character of trade mark law. To that end, provision Ö should be Õ made for an appeal to lie from decisions of the various Ö decision-making instances Õ of the Office. A Board of Appeal of the Office Ö should Õ decide on Ö the appeal Õ. Decisions of the Boards of Appeal Ö should Õ, in turn, Ö be Õ amenable to actions before the Ö General Õ Court, which has jurisdiction to annul or to alter the contested decision. ê 207/2009 recital 15 (adapted) è1 2424/2015 Art. 1.2 (31)In order to Ö ensure Õ the protection of è1 EU trade marks ç the Member States should designate, having regard to their own national system, as limited a number as possible of national courts of first and second instance having jurisdiction in matters of infringement and validity of è1 EU trade marks ç. ê 207/2009 recital 16 è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.5 (32)Decisions regarding the validity and infringement of è1 EU trade marks ç must have effect and cover the entire area of the è2 Union ç, as 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 è1 EU trade marks ç is not undermined. The provisions of Regulation (EU) No 1215/2012 of the European Parliament and of the Council should apply to all actions at law relating to è1 EU trade marks ç, save where this Regulation derogates from those rules.

ê 207/2009 recital 17 è1 2424/2015 Art. 1.2 (33)Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of an è1 EU trade mark ç and parallel national trade marks. For this purpose, when the actions are brought in the same Member State, the way in which this is to be achieved is a matter for national procedural rules, which are not prejudiced by this Regulation, whilst when the actions are brought in different Member States, provisions modelled on the rules on lis pendens and related actions of Regulation (EU) No 1215/2012 appear appropriate. ê 2424/2015 recital 30 (34)With the aim of promoting convergence of practices and of developing common tools, it is necessary to establish an appropriate framework for cooperation between the Office and the industrial property offices of the Member States, including the Benelux Office for Intellectual Property, defining key areas of cooperation and enabling the Office to coordinate relevant common projects of interest to the Union and the Member States and to finance, up to a maximum amount, those projects. Those cooperation activities should be beneficial for undertakings using trade mark systems in Europe. For users of the Union regime laid down in this Regulation, the projects, particularly the databases for search and consultation purposes, should provide additional, inclusive, efficient tools that are free of charge to comply with the specific requirements arising from the unitary character of the EU trade mark. ê 2424/2015 recital 33 (35)It is desirable to facilitate friendly, expeditious and efficient dispute resolution by entrusting the Office with the establishment of a mediation centre the services of which could be used by any person with the aim of achieving a friendly settlement of disputes relating to EU trade marks and Community designs by mutual agreement. ê 2424/2015 recital 34 (36)The setting up of the EU trade mark system has resulted in increased financial burdens for the central industrial property offices and other authorities of the Member States. The additional costs are related to the handling of a higher number of opposition and invalidity proceedings involving EU trade marks or brought by proprietors of such trade marks; to the awareness-raising activities linked to the EU trade mark system; as well as to activities intended to ensure the enforcement of EU trade mark rights. It is, therefore, appropriate to ensure that the Office offset part of the costs incurred by Member States for the role they play in ensuring the smooth functioning of the EU trade mark system. The payment of such offsetting should be subject to the submission, by Member States, of relevant statistical data. The offsetting of costs should not be of such an extent that it would cause a budgetary deficit for the Office. ê 207/2009 recital 18 è1 2424/2015 Art. 1.5 (37)In order to guarantee the full autonomy and independence of the Office, it is considered necessary to grant it an autonomous budget whose revenue comes principally from fees paid by the users of the system. However, the è1 Union ç budgetary procedure remains applicable as far as any subsidies chargeable to the general budget of the è1 Union ç are concerned. Moreover, the auditing of accounts should be undertaken by the Court of Auditors. ê 2424/2015 recital 35 (38)In the interest of sound financial management, the accumulation by the Office of significant budgetary surpluses should be avoided. This should be without prejudice to the Office maintaining a financial reserve covering one year of its operational expenditure to ensure the continuity of its operations and the performance of its tasks. That reserve should only be used to ensure the continuity of the tasks of the Office as specified in this Regulation.

ê 2424/2015 recital 36 (adapted) (39)Given the essential importance of the amounts of fees payable to the Office for the functioning of the EU trade mark system and its complementary relationship as regards national trade mark systems, it is necessary to set those fee amounts directly in Ö this Õ Regulation in the form of an annex. The amounts of the fees should be fixed at a level which ensures that: first, the revenue they produce is in principle sufficient for the budget of the Office to be balanced; second, there is coexistence and complementarity between the EU trade mark and the national trade mark systems, also taking into account the size of the market covered by the EU trade mark and the needs of small and medium-sized enterprises; and third, the rights of proprietors of an EU trade mark are enforced efficiently in the Member States. ê 2424/2015 recital 39 (adapted) (40)In order to ensure an effective, efficient and expeditious examination and registration of EU trade mark applications by the Office using procedures which are transparent, thorough, fair and equitable, the power to adopt acts in accordance with Article 290 Ö of the Treaty on the Functioning of the European Union Õ (TFEU) should be delegated to the Commission in respect of specifying the details on the procedures for filing and examining an opposition and Ö on the Õ procedures governing the amendment of the application. ê 2424/2015 recital 40 (adapted) (41)In order to ensure that an EU trade mark can be revoked or declared invalid in an effective and efficient way by means of transparent, thorough, fair and equitable procedures, the power to adopt acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the procedures for revocation and declaration of invalidity. ê 2424/2015 recital 41 (adapted) (42)In order to allow for an effective, efficient and complete review of decisions of the Office by the Boards of Appeal by means of a transparent, thorough, fair and equitable procedure which takes into account the principles laid down in Ö this Õ Regulation, the power to adopt acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the formal content of the notice of appeal, the procedure for the filing and examination of an appeal, the formal content and form of the Board of Appeal's decisions, and the reimbursement of the appeal fees. ê 2424/2015 recital 42 (adapted) (43)In order to ensure a smooth, effective and efficient operation of the EU trade mark system, the power to adopt acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the requirements as to the details on oral proceedings and the detailed arrangements for taking of evidence, the detailed arrangements for notification, the means of communication and the forms to be used by the parties to proceedings, the rules governing the calculation and duration of time limits, the procedures for the revocation of a decision or for cancellation of an entry in the Register, the detailed arrangements for the resumption of proceedings, and the details on representation before the Office. ê 2424/2015 recital 43 (adapted) (44)In order to ensure an effective and efficient organisation of the Boards of Appeal, the power to adopt acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the details on the organisation of the Boards of Appeal. ê 2424/2015 recital 44 (adapted)

(45)In order to ensure the effective and efficient registration of international trade marks in a manner that is fully consistent with the rules of the Protocol relating to the Madrid Agreement concerning the international registration of marks, Ö adopted at Madrid on 27 June 1989 ('Madrid Protocol'), Õ the power to adopt acts in accordance with Article 290 TFEU should be delegated to the Commission in respect of specifying the details on the procedures concerning the filing and examination of an opposition, including the necessary communications to be made to the World Intellectual Property Organisation (WIPO), and the details of the procedure concerning international registrations based on a basic application or basic registration relating to a collective mark, certification mark or guarantee mark. ê 2424/2015 recital 38 (adapted) (46)It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level Ö , and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making Õ. Ö In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States' experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. Õ ê 2424/2015 recital 45 (47)In order to ensure uniform conditions for the implementation of this Regulation, implementing powers should be conferred on the Commission in respect of specifying the details concerning applications, requests, certificates, claims, regulations, notifications and any other document under the relevant procedural requirements established by this Regulation as well as in respect of maximum rates for costs essential to the proceedings and actually incurred, details concerning publications in the European Union Trade Marks Bulletin and the Official Journal of the Office, the detailed arrangements for exchange of information between the Office and national authorities, detailed arrangements concerning translations of supporting documents in written proceedings, exact types of decisions to be taken by a single member of the opposition or cancellation divisions, details of the notification obligation pursuant to the Madrid Protocol, and detailed requirements regarding the request for territorial extension subsequent to international registration. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council. ê 2424/2015 recital 46 (48)Since the objectives of this Regulation cannot be sufficiently achieved by the Member States but can rather, by reason of its scale and effects, be better achieved at Union level, the Union may adopt measures, in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty on European Union. In accordance with the principle of proportionality as set out in that Article, this Regulation does not go beyond what is necessary in order to achieve those objectives, ê 207/2009 HAVE ADOPTED THIS REGULATION: CHAPTER I GENERAL PROVISIONS Article 1 ê 2424/2015 Art. 1.2 EU trade mark

ê 207/2009 (adapted) è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.5 1. A trade mark for goods or services which is registered in accordance with the conditions contained in this Regulation and in the manner herein provided is hereinafter referred to as a è1 ‘European Union trade mark (“EU trade mark”)’ ç. 2. An è1 EU trade mark ç shall have a unitary character. It shall have equal effect throughout the è2 Union ç: it shall not be registered, 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 whole è2 Union ç. This principle shall apply unless otherwise provided Ö for Õ in this Regulation. ê 2424/2015 Art. 1.7 (adapted) Article 2 Office 1. A European Union Intellectual Property Office (‘the Office’) is established. 2. All references in Union law to the Office for Harmonization in the Internal Market (Trade Marks and Designs shall be read as references to the Office. ê 207/2009 è1 2424/2015 Art. 1.2 Article 3 Capacity to act For the purpose of implementing this Regulation, companies or firms and other legal bodies shall be regarded as legal persons if, under the terms of the law governing them, they have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued. CHAPTER II THE LAW RELATING TO TRADE MARKS SECTION 1

Definition of an è1 EU trade mark ç and obtaining an è1 EU trade mark ç ê 2424/2015 Art. 1.8 Article 4 Signs of which an EU trade mark may consist An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a)distinguishing the goods or services of one undertaking from those of other undertakings; and (b)being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. ê 207/2009 è1 2424/2015 Art. 1.2 Article 5 Persons who can be proprietors of è1 EU trade marks ç Any natural or legal person, including authorities established under public law, may be the proprietor of an è1 EU trade mark ç. Article 6 Means whereby an è1 EU trade mark ç is obtained An è1 EU trade mark ç shall be obtained by registration. Article 7 Absolute grounds for refusal 1. The following shall not be registered:

(a)signs which do not conform to the requirements of Article 4; (b)trade marks which are devoid of any distinctive character; (c)trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (d)trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; ê 2424/2015 Art. 1.9(a) (e)signs which consist exclusively of: (i)the shape, or another characteristic, which results from the nature of the goods themselves; (ii)the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii)the shape, or another characteristic, which gives substantial value to the goods; ê 207/2009 (f)trade marks which are contrary to public policy or to accepted principles of morality; (g)trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h)trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’; (i)trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given; ê 2424/2015 Art. 1.9(b) (j)trade marks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications; (k)trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;

ê 2424/2015 Art. 1.9(c) (l)trade marks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed; (m)trade marks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species. ê 207/2009 (adapted) è1 2424/2015 Art. 1.5 è2 2424/2015 Art. 1.2 2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the è1 Union ç. 3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Article 8 Relative grounds for refusal 1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (a)if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; (b)if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 2. For the purposes of paragraph 1, ‘earlier trade marks’ means: (a)trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the è2 EU trade mark ç, taking account, where appropriate, of the priorities claimed in respect of those trade marks: (i)è2 EU trade marks ç; (ii)trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property; (iii)trade marks registered under international arrangements which have effect in a Member State;

(iv)trade marks registered under international arrangements which have effect in the è1 Union ç; (b)applications for the trade marks referred to in point (a), subject to their registration; (c)trade marks which, on the date of application for registration of the è2 EU trade mark ç, or, where appropriate, of the priority claimed in respect of the application for registration of the è2 EU trade mark ç, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention. 3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action. 4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to è1 Union ç legislation or the law of the Member State governing that sign: (a)rights to that sign were acquired prior to the date of application for registration of the è2 EU trade mark ç, or the date of the priority claimed for the application for registration of the è2 EU trade mark ç; (b)that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. ê 2424/2015 Art. 1.10(a) 5. Upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications: (i)an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration; (ii)that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark. ê 2424/2015 Art. 1.10(b) 6. Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. ê 207/2009 è1 2424/2015 Art. 1.2 SECTION 2 Effects of è1 EU trade marks ç

ê 2424/2015 Art. 1.11 Article 9 Rights conferred by an EU trade mark 1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein. 2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a)the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered; (b)the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c)the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark. 3. The following, in particular, may be prohibited under paragraph 2: (a)affixing the sign to the goods or to the packaging thereof; (b)offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; (c)importing or exporting the goods under the sign; (d)using the sign as a trade or company name or part of a trade or company name; (e)using the sign on business papers and in advertising; (f)using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC. 4. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark. The entitlement of the proprietor of an EU trade mark pursuant to the first subparagraph shall lapse if, during the proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation (EU) No 608/2013, evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination. ê 2424/2015 Art. 1.12

Article 10 Right to prohibit preparatory acts in relation to the use of packaging or other means Where the risk exists that the packaging, labels, tags, security or authenticity features or devices or any other means to which the mark is affixed could be used in relation to goods or services and such use would constitute an infringement of the rights of the proprietor of an EU trade mark under Article 9(2) and (3), the proprietor of that trade mark shall have the right to prohibit the following acts if carried out in the course of trade: (a)affixing a sign identical with, or similar to, the EU trade mark on packaging, labels, tags, security or authenticity features or devices or any other means to which the mark may be affixed; (b)offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices or any other means to which the mark is affixed. Article 11 Date from which rights against third parties prevail 1. The rights conferred by an EU trade mark shall prevail against third parties from the date of publication of the registration of the trade mark. 2. Reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EU trade mark application, where those acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. 3. A court seized of a case shall not decide upon the merits of that case until the registration has been published. ê 207/2009 è1 2424/2015 Art. 1.2 Article 12 Reproduction of è1 EU trade marks ç in dictionaries If the reproduction of an è1 EU trade mark ç in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the è1 EU trade mark ç, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark. Article 13 Prohibition on the use of anè1 EU trade mark ç registered in the name of an agent or representative Where an è1 EU trade mark ç is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use, unless the agent or representative justifies his action.

ê 2424/2015 Art. 1.13 Article 14 Limitation of the effects of an EU trade mark 1. An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a)the name or address of the third party, where that third party is a natural person; (b)signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; (c)the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. 2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters. ê 207/2009 è1 2424/2015 Art. 1.2 Article 15 Exhaustion of the rights conferred by an è1 EU trade mark ç ê 2424/2015 Art. 1.14 1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent. ê 207/2009 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

ê 2424/2015 Art. 1.15 Article 16 Intervening right of the proprietor of a later registered trade mark as a defence in infringement proceedings 1. In infringement proceedings, the proprietor of an EU trade mark shall not be entitled to prohibit the use of a later registered EU trade mark where that later trade mark would not be declared invalid pursuant to Article 60(1), (3) or (4), Article 61(1) or (2), or Article 64(2) of this Regulation. 2. In infringement proceedings, the proprietor of an EU trade mark shall not be entitled to prohibit the use of a later registered national trade mark where that later registered national trade mark would not be declared invalid pursuant to Article 8, or Article 9(1) or (2), or Article 46(3) of Directive (EU) 2015/2436 of the European Parliament and of the Council. 3. Where the proprietor of an EU trade mark is not entitled to prohibit the use of a later registered trade mark pursuant to paragraph 1 or 2, the proprietor of that later registered trade mark shall not be entitled to prohibit the use of that earlier EU trade mark in infringement proceedings. ê 207/2009 è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.5 Article 17 Complementary application of national law relating to infringement 1. The effects of è1 EU trade marks ç shall be governed solely by the provisions of this Regulation. In other respects, infringement of an è1 EU trade mark ç shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Chapter X. 2. This Regulation shall not prevent actions concerning an è1 EU trade mark ç being brought under the law of Member States relating in particular to civil liability and unfair competition. 3. The rules of procedure to be applied shall be determined in accordance with the provisions of Chapter X. SECTION 3 Use of è1 EU trade marks ç Article 18 Use of è1 EU trade marks ç 1. If, within a period of five years following registration, the proprietor has not put the è1 EU trade mark ç to genuine use in the è2 Union ç 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 è1 EU trade mark ç shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

ê 2424/2015 Art. 1.16 The following shall also constitute use within the meaning of the first subparagraph: (a)use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor; (b)affixing of the EU trade mark to goods or to the packaging thereof in the Union solely for export purposes. ê 207/2009 è1 2424/2015 Art. 1.2 2. Use of the è1 EU trade mark ç with the consent of the proprietor shall be deemed to constitute use by the proprietor. SECTION 4 è1 EU trade marks ç as objects of property Article 19 Dealing with è1 EU trade marks ç as national trade marks ê 2424/2015 Art. 1.17 1. Unless Articles 20 to 28 provide otherwise, an EU trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the Union, as a national trade mark registered in the Member State in which, according to the Register: ê 207/2009 (adapted) è1 2424/2015 Art. 1.2 (a)the proprietor has his seat or his domicile on the relevant date;

(b)where point (a) does not apply, the proprietor has an establishment on the relevant date. 2. In cases which are not provided for by paragraph 1, the Member State referred to in that paragraph shall be the Member State in which the seat of the Office is situated. 3. If two or more persons are mentioned in the Register as joint proprietors, paragraph 1 shall apply to the joint proprietor first mentioned; failing this, it shall apply to the subsequent joint proprietors in the order in which they are mentioned. Where paragraph 1 does not apply to any of the joint proprietors, paragraph 2 shall apply. Article 20 Transfer 1. An è1 EU trade mark ç 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. 2. A transfer of the whole of the undertaking shall include the transfer of the è1 EU trade mark ç except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking. 3. Without prejudice to paragraph 2, an assignment of the è1 EU trade mark ç shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void. 4. On request of one of the parties a transfer shall be entered in the Register and published. ê 2424/2015 Art. 1.18(b) 5. An application for registration of a transfer shall contain information to identify the EU trade mark, the new proprietor, the goods and services to which the transfer relates, as well as documents duly establishing the transfer in accordance with paragraphs 2 and 3. The application may further contain, where applicable, information to identify the representative of the new proprietor. 6. The Commission shall adopt implementing acts specifying: (a)the details to be contained in the application for registration of a transfer; (b)the kind of documentation required to establish a transfer, taking account of the agreements given by the registered proprietor and the successor in title; (c)the details of how to process applications for partial transfers, ensuring that the goods and services in the remaining registration and the new registration do not overlap and that a separate file, including a new registration number, is established for the new registration. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2). 7. Where the conditions applicable to the registration of a transfer, as laid down in paragraphs 1, 2 and 3, or in the implementing acts referred to in paragraph 6, are not fulfilled, the Office shall notify the applicant of the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, it shall reject the application for registration of the transfer. 8. A single application for registration of a transfer may be submitted for two or more trade marks, provided that the registered proprietor and the successor in title are the same in each case. 9. Paragraphs 5 to 8 shall also apply to applications for EU trade marks.

10. In the case of a partial transfer, any application made by the original proprietor pending with regard to the original registration shall be deemed to be pending with regard to the remaining registration and the new registration. Where such application is subject to the payment of fees and those fees have been paid by the original proprietor, the new proprietor shall not be liable to pay any additional fees with regard to such application. ê 207/2009 è1 2424/2015 Art. 1.2 11. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the è1 EU trade mark ç. 12. Where there are time limits to be observed vis-à-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office. 13. All documents which require notification to the proprietor of the è1 EU trade mark ç in accordance with Article 98 shall be addressed to the person registered as proprietor. ê 2424/2015 Art. 1.19 Article 21 Transfer of a trade mark registered in the name of an agent 1. Where an EU trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to demand the assignment of the EU trade mark in his favour, unless such agent or representative justifies his action. 2. The proprietor may submit a request for assignment pursuant to paragraph 1 of this Article to the following: (a)the Office, pursuant to Article 60(1)(b), instead of an application for a declaration of invalidity; (b)a European Union trade mark court (‘EU trade mark court’) as referred to in Article 123, instead of a counterclaim for a declaration of invalidity based on Article 128(1). ê 207/2009 è1 2424/2015 Art. 1.2 Article 22 Rights in rem

1. An è1 EU trade mark ç may, independently of the undertaking, be given as security or be the subject of rights in rem. ê 2424/2015 Art. 1.20(a) 2. At the request of one of the parties, the rights referred to in paragraph 1 or the transfer of those rights shall be entered in the Register and published. ê 2424/2015 Art. 1.20(b) 3. An entry in the Register effected pursuant to paragraph 2 shall be cancelled or modified at the request of one of the parties. ê 207/2009 è1 2424/2015 Art. 1.2 Article 23 Levy of execution 1. An è1 EU trade mark ç may be levied in execution. 2. As regards the procedure for levy of execution in respect of an è1 EU trade mark ç, the courts and authorities of the Member States determined in accordance with Article 19 shall have exclusive jurisdiction. 3. On request of one the parties, levy of execution shall be entered in the Register and published. ê 2424/2015 Art. 1.21 4. An entry in the Register effected pursuant to paragraph 3 shall be cancelled or modified at the request of one of the parties. ê 207/2009 (adapted)

è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.5 Article 24 Insolvency proceedings 1. The only insolvency proceedings in which an è1 EU trade mark ç may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests. However, where the debtor is an insurance undertaking or a credit institution as defined in Directive 2009/138/EC of the European Parliament and of the Council and Directive 2001/24/EC of the European Parliament and of the Council, respectively, the only insolvency proceedings in which an è1 EU trade mark ç may be involved are those opened in the Member State where that undertaking or institution has been authorised. 2. In the case of joint proprietorship of an è1 EU trade mark ç, paragraph 1 shall apply to the share of the joint proprietor. 3. Where an è1 EU trade mark ç is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the è1 Ö European Union Õ Trade Marks ç Bulletin referred to in Article 116. Article 25 Licensing 1. An è1 EU trade mark ç may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the è2 Union ç. A licence may be exclusive or non-exclusive. 2. The proprietor of an è1 EU trade mark ç may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to: (a)its duration; (b)the form covered by the registration in which the trade mark may be used; (c)the scope of the goods or services for which the licence is granted; (d)the territory in which the trade mark may be affixed; or (e)the quality of the goods manufactured or of the services provided by the licensee. 3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of an è1 EU trade mark ç only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period. 4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the è1 EU trade mark ç. 5. On request of one of the parties the grant or transfer of a licence in respect of an è1 EU trade mark ç shall be entered in the Register and published.

ê 2424/2015 Art. 1.22 6. An entry in the Register effected pursuant to paragraph 5 shall be cancelled or modified at the request of one of the parties. ê 2424/2015 Art. 1.23 (adapted) Article 26 Procedure for entering licences and other rights in the Register 1. Article 20(5) and (6) and the rules adopted pursuant to it and Article 20(8) shall apply mutatis mutandis to the registration of a right in rem or transfer of a right in rem as referred to in Article 22(2), the levy of execution as referred to in Article 23(3), the involvement in insolvency proceedings as referred to in Article 24(3), as well as to the registration of a licence or transfer of a licence as referred to in Article 25(5), subject to the following: (a)the requirement relating to the identification of goods and services to which the transfer relates shall not apply in respect of a request for registration of a right in rem, of a levy of execution or of insolvency proceedings; (b)the requirement relating to the documents proving the transfer shall not apply where the request is made by the proprietor of the EU trade mark. 2. The application for registration of the rights referred to in paragraph 1 shall not be deemed to have been filed until the required fee has been paid. 3. The application for registration of a licence may contain a request to record a licence in the Register as one or more of the following: (a)an exclusive licence; (b)a sub-licence in the event that the licence is granted by a licensee whose licence is recorded in the Register; (c)a licence limited to only part of the goods or services for which the mark is registered; (d)a licence limited to part of the Union; (e)a temporary licence. Where a request is made to record the licence as a licence listed in points (c), (d) and (e) of the first subparagraph, the application for registration of a licence shall indicate the goods and services, the part of the Union and the time period for which the licence is granted. 4. Where the conditions applicable to registration, as laid down in Articles 22 to 25, Ö in Õ paragraphs 1 and 3 of this Article and in the other applicable rules adopted pursuant to this Regulation, are not fulfilled, the Office shall notify the applicant of the deficiency. If the deficiency is not corrected within a period specified by the Office, it shall reject the application for registration. 5. Paragraphs 1 and 3 shall apply mutatis mutandis to applications for EU trade marks.

ê 207/2009 (adapted) è1 2424/2015 Art. 1.2 Article 27 Effects vis-à-vis third parties 1. Legal acts referred to in Articles 20, 22 and 25 concerning an è1 EU trade mark ç shall have effects vis-à-vis third parties in all the Member States only after entry in the Register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired. 2. Paragraph 1 shall not apply in the case of a person who acquires the è1 EU trade mark ç or a right concerning the è1 EU trade mark ç by way of transfer of the whole of the undertaking or by any other universal succession. 3. The effects vis-à-vis third parties of the legal acts referred to in Article 23 shall be governed by the law of the Member State determined in accordance with Article 19. 4. Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-à-vis third parties of bankruptcy or Ö similar Õ proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field. Article 28 The application for an è1 EU trade mark ç as an object of property Articles 19 to 27 shall apply to applications for è1 EU trade marks ç. ê 2424/2015 Art. 1.24 Article 29 Procedure for cancelling or modifying the entry in the Register of licences and other rights 1. A registration effected under Article 26(1) shall be cancelled or modified at the request of one of the persons concerned. 2. The application shall contain the registration number of the EU trade mark concerned and the particulars of the right for which registration is requested to be cancelled or modified. 3. The application for cancellation of a licence, a right in rem or an enforcement measure shall not be deemed to have been filed until the required fee has been paid. 4. The application shall be accompanied by documents showing that the registered right no longer exists or that the licensee or the holder of another right consents to the cancellation or modification of the registration.

5. Where the requirements for cancellation or modification of the registration are not satisfied, the Office shall notify the applicant of the deficiency. If the deficiency is not corrected within a period to be specified by the Office, it shall reject the application for cancellation or modification of the registration. 6. Paragraphs 1 to 5 of this Article shall apply mutatis mutandis to entries made in the files pursuant to Article 26(5). ê 207/2009 è1 2424/2015 Art. 1.2 CHAPTER III APPLICATION FOR è1 EU TRADE MARKS ç SECTION 1 Filing of applications and the conditions which govern them ê 2424/2015 Art. 1.25 Article 30 Filing of applications 1. An application for an EU trade mark shall be filed at the Office. 2. The Office shall issue to the applicant, without delay, a receipt which shall include at least the file number, a representation, description or other identification of the mark, the nature and the number of the documents and the date of their receipt. That receipt may be issued by electronic means. ê 207/2009 è1 2424/2015 Art. 1.2 Article 31 Conditions with which applications must comply

1. An application for an è1 EU trade mark ç shall contain: (a)a request for the registration of an è1 EU trade mark ç; (b)information identifying the applicant; (c)a list of the goods or services in respect of which the registration is requested; ê 2424/2015 Art. 1.26(a) (d)a representation of the mark, which satisfies the requirements set out in Article 4(b). ê 2424/2015 Art. 1.26(b) 2. The application for an EU trade mark shall be subject to the payment of the application fee covering one class of goods or services and, where appropriate, of one or more class fees for each class of goods and services exceeding the first class and, where applicable, the search fee. 3. In addition to the requirements referred to in paragraphs 1 and 2, an application for an EU trade mark shall comply with the formal requirements laid down in this Regulation and in the implementing acts adopted pursuant to it. If those conditions provide for the trade mark to be represented electronically, the Executive Director may determine the formats and maximum size of such an electronic file. ê 2424/2015 Art. 1.26(c) 4. The Commission shall adopt implementing acts specifying the details to be contained in the application. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2). ê 2424/2015 Art. 1.27 Article 32 Date of filing The date of filing of an EU trade mark application shall be the date on which the documents containing the information specified in Article 31(1) are filed with the Office by the applicant, subject to payment of the application fee within one month of filing those documents.

ê 2424/2015 Art. 1.28 Article 33 Designation and classification of goods and services 1. Goods and services in respect of which trade mark registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (‘the Nice Classification’). 2. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. 3. For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision set out in this Article. 4. The Office shall reject an application in respect of indications or terms which are unclear or imprecise, where the applicant does not suggest an acceptable wording within a period set by the Office to that effect. 5. The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood. 6. Where the applicant requests registration for more than one class, the applicant shall group the goods and services according to the classes of the Nice Classification, each group being preceded by the number of the class to which that group of goods or services belongs, and shall present them in the order of the classes. 7. Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification. 8. Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Office shall take appropriate measures to amend the Register accordingly. The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 18, Article 47(2), Article 58(1)(a), and Article 64(2). EU trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class. 9. Where the register is amended, the exclusive rights conferred by the EU trade mark under Article 9 shall not prevent a third party from continuing to use a trade mark in relation to goods or services where and to the extent that the use of the trade mark for those goods or services: (a)commenced before the register was amended; and (b)did not infringe the proprietor's rights based on the literal meaning of the record of the goods and services in the register at that time. In addition, the amendment of the list of goods or services recorded in the register shall not give the proprietor of the EU trade mark the right to oppose or to apply for a declaration of invalidity of a later trade mark where and to the extent that: (a)the later trade mark was either in use, or an application had been made to register the trade mark, for goods or services before the register was amended; and (b)the use of the trade mark in relation to those goods or services did not infringe, or would not have infringed, the proprietor's rights based on the literal meaning of the record of the goods and services in the register at that time.

ê 207/2009 è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.29(a) SECTION 2 Priority Article 34 Right of priority 1. A person who has duly filed an application for a trade mark in or in respect of any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing an è1 EU trade mark ç application for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application. 2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority. 3. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application. 4. A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority. 5. If the first filing has been made in a State which is not a party to the Paris Convention or to the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of the first filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect. è2 The Executive Director shall, where necessary, request the Commission to consider enquiring as to whether a State within the meaning of the first sentence accords that reciprocal treatment. If the Commission determines that reciprocal treatment in accordance with the first sentence is accorded, it shall publish a communication to that effect in the Official Journal of the European Union. ç ê 2424/2015 Art. 1.29(b) 6. Paragraph 5 shall apply from the date of publication in the Official Journal of the European Union of the communication determining that reciprocal treatment is accorded, unless the communication states an earlier date from which it is applicable. It shall cease to apply from the date of publication in the Official Journal of the European Union of a communication of the Commission to the effect that reciprocal treatment is no longer accorded, unless the communication states an earlier date from which it is applicable. 7. Communications as referred to in paragraphs 5 and 6 shall also be published in the Official Journal of the Office. ê 2424/2015 Art. 1.30 Article 35 Claiming priority

1. Priority claims shall be filed together with the EU trade mark application and shall include the date, number and country of the previous application. The documentation in support of priority claims shall be filed within three months of the filing date. 2. The Commission shall adopt implementing acts specifying the kind of documentation to be filed for claiming the priority of a previous application in accordance with paragraph 1 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2). 3. The Executive Director may determine that the documentation to be provided by the applicant in support of the priority claim may consist of less than what is required under the specifications adopted in accordance with paragraph 2, provided that the information required is available to the Office from other sources. ê 207/2009 (adapted) è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.5 è3 2424/2015 Art. 1.31(a) Article 36 Effect of priority right The right of priority shall have the effect that the date of priority shall count as the date of filing of the è1 EU trade mark ç application for the purposes of establishing which rights take precedence. Article 37 Equivalence of è2 Union ç filing with national filing An è1 EU trade mark ç 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 è1 EU trade mark ç application. SECTION 3 Exhibition priority Article 38 Exhibition priority 1. If an applicant for an è1 EU trade mark ç has displayed goods or services under the mark applied for, at an official or officially recognised international exhibition falling within the terms of the Convention Ö relating to Õ international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972, he may, if he files the application within a period of six months from the date of the first display of the goods or services under the mark applied for, claim a right of priority from that date within the meaning of Article 36. è3 The priority claim shall be filed together with the EU trade mark application. ç

ê 2424/2015 Art. 1.31(b) 2. An applicant who wishes to claim priority pursuant to paragraph 1 shall file evidence of the display of goods or services under the mark applied for within three months of the filing date. ê 207/2009 3. An exhibition priority granted in a Member State or in a third country does not extend the period of priority laid down in Article 34. ê 2424/2015 Art. 1.31(c) 4. The Commission shall adopt implementing acts specifying the type and details of evidence to be filed for claiming an exhibition priority in accordance with paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2). ê 207/2009 (adapted) è1 2424/2015 Art. 1.2 SECTION 4 Seniority of a national trade mark Article 39 Claiming seniority of a national trade mark Ö in an application for an EU trade mark or subsequent to the filing of the application Õ 1. The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as an è1 EU trade mark ç for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the è1 EU trade mark ç the seniority of the earlier trade mark in respect of the Member State in or for which it is registered. ê 2424/2015 Art. 1.32(a) 2. Seniority claims shall either be filed together with the EU trade mark application or within two months of the filing date of the application, and shall include the Member State or Member States in or for which the mark is registered, the number and the filing date of the relevant registration, and the goods and services for which the mark is registered. Where the seniority of one or more registered earlier trade marks is claimed in the application, the documentation in support of the seniority claim shall be filed within three months of the filing date. Where the applicant wishes to claim the seniority subsequent to the filing of the application, the documentation in support of the seniority claim shall be submitted to the Office within three months of receipt of the seniority claim.

ê 207/2009 è1 2424/2015 Art. 1.2 3. Seniority shall have the sole effect under this Regulation that, where the proprietor of the è1 EU trade mark ç surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered. ê 2424/2015 Art. 1.32(b) 4. The seniority claimed for the EU trade mark shall lapse where the earlier trade mark the seniority of which is claimed is declared to be invalid or revoked. Where the earlier trade mark is revoked, the seniority shall lapse provided that the revocation takes effect prior to the filing date or priority date of that EU trade mark. ê 2424/2015 Art. 1.32(c) 5. The Office shall inform the Benelux Office for Intellectual Property or the central industrial property office of the Member State concerned of the effective claiming of seniority. 6. The Commission shall adopt implementing acts specifying the kind of documentation to be filed for claiming the seniority of a national trade mark or a trade mark registered under international agreements having effect in a Member State in accordance with paragraph 2 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2). 7. The Executive Director may determine that the documentation to be provided by the applicant in support of the seniority claim may consist of less than what is required under the specifications adopted in accordance with paragraph 6, provided that the information required is available to the Office from other sources. ê 207/2009 (adapted) è1 2424/2015 Art. 1.2 Article 40 Claiming seniority Ö of a national trade mark Õ after registration of Ö an Õ è1 EU trade mark ç 1. The proprietor of an è1 EU trade mark ç who is the proprietor of an earlier identical trade mark registered in a Member State, including a trade mark registered in the Benelux countries or of an earlier identical trade mark, with an international registration effective in a Member State, for goods or services which are identical to those for which the earlier trade mark has been registered, or contained within them, may claim the seniority of the earlier trade mark in respect of the Member State in or for which it was registered. ê 2424/2015 Art. 1.33(a) 2. Seniority claims filed pursuant to paragraph 1 of this Article shall include the registration number of the EU trade mark, the name and address of its proprietor, the Member State or Member States in or for which the earlier mark is registered, the number and the filing date of the relevant registration, the goods and services for which the mark is registered and those in respect of which seniority is claimed, and supporting documentation as provided for in the rules adopted pursuant to Article 39(6).

ê 2424/2015 Art. 1.33(b) 3. If the requirements governing the claiming of seniority are not fulfilled, the Office shall communicate the deficiency to the proprietor of the EU trade mark. If the deficiency is not remedied within a period to be specified by the Office, the Office shall reject the claim. 4. Article 39(3), (4), (5) and (7) shall apply. ê 207/2009 è1 2424/2015 Art. 1.2 CHAPTER IV REGISTRATION PROCEDURE SECTION 1 Examination of applications Article 41 Examination of the conditions of filing 1. The Office shall examine whether: (a)the è1 EU trade mark ç application satisfies the requirements for the accordance of a date of filing in accordance with Article 32; ê 2424/2015 Art. 1.34(a) (b)the EU trade mark application complies with the conditions and requirements referred to in Article 31(3); ê 207/2009

è1 2424/2015 Art. 1.2 è2 2424/2015 Art. 1.34(b) è3 2424/2015 Art. 1.34(c) (c)where appropriate, the class fees have been paid within the prescribed period. 2. Where the è1 EU trade mark ç application does not satisfy the requirements referred to in paragraph 1, the Office shall request the applicant to remedy the deficiencies or the default on payment è2 within two months of the receipt of the notification ç. 3. If the deficiencies or the default on payment established pursuant to paragraph 1(a) are not remedied within this period, the application shall not be dealt with as an è1 EU trade mark ç application. If the applicant complies with the Office's request, the Office shall accord as the date of filing of the application the date on which the deficiencies or the default on payment established are remedied. 4. If the deficiencies established pursuant to paragraph 1(b) are not remedied within the prescribed period, the Office shall refuse the application. 5. If the default on payment established pursuant to paragraph 1(c) is not remedied within the prescribed period, the application shall be deemed to be withdrawn unless it is clear which categories of goods or services the amount paid is intended to cover. è3 In the absence of other criteria to determine which classes are intended to be covered, the Office shall take the classes in the order of the classification. The application shall be deemed to have been withdrawn with regard to those classes for which the class fees have not been paid or have not been paid in full. ç 6. Failure to satisfy the requirements concerning the claim to priority shall result in loss of the right of priority for the application. 7. Failure to satisfy the requirements concerning the claiming of seniority of a national trade mark shall result in loss of that right for the application. ê 2424/2015 Art. 1.34(d) 8. Where failure to satisfy the requirements referred to in paragraph 1(b) and (c) concerns only some of the goods or services, the Office shall refuse the application, or the right of priority or the right of seniority shall be lost, only in so far as those goods and services are concerned. ê 207/2009 è1 2424/2015 Art. 1.2 Article 42 Examination as to absolute grounds for refusal 1. Where, under Article 7, a trade mark is ineligible for registration in respect of some or all of the goods or services covered by the è1 EU trade mark ç application, the application shall be refused as regards those goods or services.

ê 2424/2015 Art. 1.35(b) 2. The application shall not be refused before the applicant has been allowed the opportunity to withdraw or amend the application or to submit his observations. To this effect, the Office shall notify the applicant of the grounds for refusing registration and shall specify a period within which he may withdraw or amend the application or submit his observations. Where the applicant fails to overcome the grounds for refusing registration, the Office shall refuse registration in whole or in part. ê 207/2009 SECTION 2 Search ê 2424/2015 Art. 1.36 (adapted) Article 43 Search report 1. The Office shall, at the request of the applicant for the EU trade mark when filing the application, draw up a European Union search report (‘EU search report’) citing those earlier EU trade marks or EU trade mark applications discovered which may be invoked under Article 8 against the registration of the EU trade mark applied for. 2. Where, at the time of filing an EU trade mark application, the applicant requests that a search report be prepared by the central industrial property offices of the Member States and where the appropriate search fee has been paid within the time limit for the payment of the filing fee, the Office shall transmit without delay a copy of the EU trade mark application to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks in respect of EU trade mark applications. 3. Each of the central industrial property offices of the Member States referred to in paragraph 2 shall communicate a search report which shall either cite any earlier national trade marks, national trade mark applications or trade marks registered under international agreements, having effect in the Member State or Member States concerned, which have been discovered and which may be invoked under Article 8 against the registration of the EU trade mark applied for, or state that the search has revealed no such rights. 4. The Office, after consulting the Management Board provided for in Article 153 (‘the Management Board’), shall establish the contents and modalities for the reports. 5. The Office shall pay an amount to each central industrial property office for each search report provided in accordance with paragraph 3. The amount, which shall be the same for each office, shall be fixed by the Budget Committee by means of a decision adopted by a majority of three quarters of the representatives of the Member States. 6. The Office shall transmit to the applicant for the EU trade mark the EU search report requested and any requested national search reports received. 7. Upon publication of the EU trade mark application, the Office shall inform the proprietors of any earlier EU trade marks or EU trade mark applications cited in the EU search report of the publication of the EU trade mark application. The latter shall apply irrespective of whether the applicant has requested to receive the EU search report, unless the proprietor of an earlier registration or application requests not to receive the notification. ê 207/2009 SECTION 3

Publication of the application Article 44 Publication of the application ê 2424/2015 Art. 1.37(a) 1. If the conditions which the application for an EU trade mark is required to satisfy have been fulfilled, the application shall be published for the purposes of Article 46 to the extent that it has not been refused pursuant to Article 42. The publication of the application shall be without prejudice to information already made available to the public otherwise in accordance with this Regulation or acts adopted pursuant to this Regulation. ê 207/2009 2. Where, after publication, the application is refused under Article 42, the decision that it has been refused shall be published upon becoming final. ê 2424/2015 Art. 1.37(b) (adapted) 3. Where the publication of the application contains an error attributable to the Office, the Office shall of its own motion or at the request of the applicant correct the error and publish the correction. The rules adopted pursuant to Article 49(3) shall apply mutatis mutandis where a correction is requested by the applicant. 4. Article 46(2) shall also Ö apply Õ where the correction concerns the list of goods or services or the representation of the mark. 5. The Commission shall adopt implementing acts laying down the details to be contained in the publication of the application. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2). ê 207/2009 SECTION 4 Observations by third parties and opposition

ê 2424/2015 Art. 1.38 Article 45 Observations by third parties 1. Any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Office written observations, explaining on which grounds, under Articles 5 and 7, the trade mark should not be registered ex officio. Persons and groups or bodies as referred to in the first subparagraph shall not be parties to the proceedings before the Office. 2. Third party observations shall be submitted before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken. 3. The submission referred to in paragraph 1 shall be without prejudice to the right of the Office to re-open the examination of absolute grounds on its own initiative at any time before registration, where appropriate. 4. The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them. ê 207/2009 è1 2424/2015 Art. 1.2 Article 46 Opposition 1. Within a period of three months following the publication of an è1 EU trade mark ç application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8: (a)by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (6); (b)by the proprietors of trade marks referred to in Article 8(3); (c)by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights; ê 2424/2015 Art. 1.39(a) (d)by the persons authorised under the relevant Union legislation or national law to exercise the rights referred to in Article 8(5).

ê 207/2009 2. Notice of opposition to registration of the trade mark may also be given, subject to the conditions laid down in paragraph 1, in the event of the publication of an amended application in accordance with the second sentence of Article 49(2). ê 2424/2015 Art. 1.39(b) 3. Opposition shall be expressed in writing, and shall specify the grounds on which it is made. It shall not be considered as duly entered until the opposition fee has been paid. ê 2424/2015 Art. 1.39(c) 4. Within a period to be fixed by the Office, the opponent may submit facts, evidence and arguments in support of his case. ê 207/2009 (adapted) Article 47 Examination of opposition 1. In the examination of the opposition the Office shall invite the parties, as often as necessary, to file observations, within a period set by the Office, on communications from the other parties or issued by itself. ê 2424/2015 Art. 1.40 (adapted) 2. If the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided Ö that Õ the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. ê 207/2009 è1 2424/2015 Art. 1.5

è2 2424/2015 Art. 1.2 3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the è1 Union ç. 4. The Office may, if it thinks fit, invite the parties to make a friendly settlement. 5. If examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the è2 EU trade mark ç application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected. 6. The decision refusing the application shall be published upon becoming final. ê 2424/2015 Art. 1.41 (adapted) Article 48 Delegation of powers The Commission Ö is Õ empowered to adopt delegated acts in accordance with Article 208 specifying the details of the procedure for filing and examining an opposition set out in Articles 46 and 47. ê 207/2009 è1 2424/2015 Art. 1.2 SECTION 5 Withdrawal, restriction, amendment and division of the application Article 49 Withdrawal, restriction and amendment of the application 1. The applicant may at any time withdraw his è1 EU trade mark ç 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, an è1 EU trade mark ç application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction 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.

ê 2424/2015 Art. 1.42 (adapted) 3. The Commission Ö is Õ empowered to adopt delegated acts in accordance with Article 208 specifying the details of the procedure governing the amendment of the application. ê 207/2009 Article 50 Division of the application 1. The applicant may divide the application by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications. The goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications. 2. The declaration of division shall not be admissible: (a)if, where an opposition has been entered against the original application, such a divisional application ha