Proposal for a Council Regulation amending Regulation (EC) No 40/94 on the Community trade mark
Date: 2002-12-27
Institutions: European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, operation of the Institutions, trade-mark law

COMMISSION OF THE EUROPEAN COMMUNITIES

Brussels, 27.12.2002
COM(2002) 767 final

2002/0308 (CNS)

Proposal for a

COUNCIL REGULATION

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

(presented by the Commission)

EXPLANATORY MEMORANDUM

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as
last amended by Council Regulation (EC) No 3288/94 of 22 December 19941, set up a unitary
system  of  protection  of  trade  marks  throughout  the  Member  States  via  Community
registration. This system has generally  fulfilled users’  expectations satisfactorily.  It  has  also
had a positive effect on the effective achievement of the internal market. This has been shown
by an evaluation, done at the Commission’s request, of the results of this system, which has
been  successfully  administered  by  the  Office  for  Harmonisation  in  the  Internal  Market
(OHIM) (hereinafter referred to as “the Office”).

As required under Article 39(7) of that Regulation, five years after the opening of the Office
for  the  filing  of  applications  the  Commission  submitted  to  the  Council  a  report  on  the
functioning  of  the  system  of  searching2,  including  the  payments  made  to  Member  States,
which  is  laid  down  by  this  provision.  The  problems  detected  and  various  alternatives  for
trying  to  solve  them  were  described.  The  Commission  is  also  responsible  for  proposing
appropriate adjustments to the system on the basis of the experience gained and developments
in searching techniques.

As  it  undertook  to  do  in  a  declaration  concerning  Article  89  of  the  same  Regulation,  the
Commission  also  presented  to  the  Council  a  Communication3  on  the  functioning  of  the
system of representation before the Office. This examination showed that, at this stage, there
was no need for changes to the above system as set out in the said Regulation.

The  examination  of  the  functioning  of  the  systems  of  searching  and  representation  made  it
possible  to  identify  other  points  where  clarification  or  amendment  would  have  a  positive
impact on the management of the Community patent system. As a result, it should be possible
to improve the effectiveness of the system, increase the value it adds and prevent, as of now,
the consequences of the accession of new Member States in future, without it being necessary
to  change  the  substance  of  the  system,  which  has  proven  itself  to  be  perfectly  valid  with
regard to the objectives set.

This proposal was drawn up in close cooperation with the Office. Similarly, in the Working
Party  on  the  Community  Trade  Mark  convened  periodically  by  the  OHIM,  the  various
associations  concerned  by  the  Regulation  on  the  Community  trade  mark  had,  as  users,  the
opportunity  to  give  their  opinion  on  the  proposed  changes.  They  also  submitted  written
comments4  to  the  Commission.  Most  of  the  points  proposed  were  positively  received.
Furthermore,  in  several  meetings  of  the  OHIM  Administrative  Board,  the  Member  States
were  also  informed  of  the  Commission's  intention  to  present  a  proposal  to  the  Council
regarding certain points which it considers relevant at this stage. All these exchanges of view
further highlighted the appropriateness of this action.

1

2

3

4

OJ L 349, 31.12.1994, p. 83 et seq.
OJ ...
OJ ...
IAPIP, AIM, ECTA, FICPI, UNICE, INTA.

2

                                                
Proprietors (Article 5)

Article 5 lays down who can be a proprietor of a Community trade mark. Nationals of third
countries  which  are  not  members  of  the  Paris  Convention  and/or  the  World  Trade
Organisation (WTO) may become proprietors of such a mark only if a published Commission
Decision has established that the third country in question accords the same protection to all
Member States as it does to its own nationals

There  are  a  number  of  reasons  for  opting  for  a  more  flexible  approach  with  regard  to  this
requirement.  Not  imposing  such  reciprocity  would  clearly  make  for  easier  access  to  the
Community system. Removing such an obstacle is in line with the current trend on the world
market. Establishing these conditions of reciprocity and/or equivalence between systems has,
furthermore, proved to be an excessively complex exercise. The advantages do not make up
for the disadvantages with regard to the effective functioning of the Community system. This
has  also  been  made  necessary  by  the  need  to  align  the  Regulation  on  the  Community  trade
mark  with  the  new  Community  design  system,  under  which  the  Council  has  not  made
reciprocity and/or equivalence a condition of access for third countries.

For  this  reason,  it  is  deemed  appropriate  to  abolish  these  conditions.  The  nationality
requirement has also been abolished. As a result, the definition of proprietor is now open to
any natural or legal person or authority established under public law. All the other conditions
provided for by this provision therefore become superfluous.

Nonetheless, the rules on the priority of an  earlier  trade mark, which  are  also subject to the
conditions  of  reciprocity  and  equivalence,  as  provided  for  under  Article  29(5)  of  the  same
Regulation, will continue to apply, so as not to damage the rights acquired by proprietors who
are nationals of the Member States.

Search (Article 39)

The purpose of the searching system is to identify conflicts with other prior rights which might
be invoked via the opposition procedure and might prevent the registration of the Community
trade mark applied for.

With  regard  to  the  operation  of  the  searching  system,  the  experience  gained,  reflected  in  the
above-mentioned  report,  has  made  it  clear  that  the  system  is  extremely  expensive  for  the
Office,  that  users,  in  particular,  are  not  impressed  by  it,  and  that  it  slows  down  the
Community  registration  procedure.  Certain  Member  States  have  never  taken  part  in  the
system, which somewhat reduces its usefulness, as the quality of the search reports can vary
and is generally  unsatisfactory. These serious  shortcomings  will  be  considerably  aggravated
when the new members join, particularly in terms of cost, since forecasts indicate that the cost
of  extending  each  search  report  to  cover  twelve  new  Member  States  would  be  more  than
double  the  present  cost  of  registration.  This  would  impose  excessive  costs  on  applicants,
particularly  small  and  medium-sized  enterprises,  which  would  become  uncompetitive  as  a
result. The outcome of this would be the opposite of the objective pursued, which is precisely
to assist enterprises which cannot afford to identify possible conflicts with other rights. At the
same  time,  an  excessively  costly  searching  system  would  adversely  affect  the  Office's
management of the system and its financial independence.

Action should therefore be taken to deal with such consequences. Thus, when taking all the
available  elements  into  account,  the  least  harmful  of  the  possible  alternatives  seems  to  be
simply to abolish the searching system provided for under Article 39 of the Regulation. Insofar

3

as  the  system  does  not  add  any  real  value,  this  measure  would  seem  to  be  the  most
appropriate.

Representation (Article 89)

With regard to representation, the above report leads to the conclusion that, for the moment,
the  system  can  be  retained  as  it  stands.  However,  problems  have  been  reported  regarding
certain  professional  representatives  who,  having  transferred  their  professional  place  of
residence  or  the  place  where  they  conduct  their  business  to  another  Member  State,  are  no
longer entitled to represent clients before the central industrial property body of their former
Member State. They must therefore be removed from the list of professional representatives
unless  the  President  of  the  Office  grants  them  special  exemption  under  Article 89(4).  The
wording of Article 89(2)(c) has therefore been adapted to avoid this type of situation. In this
way,  it  would  suffice  to  be  resident  in  any  EU  Member  State  to  be  able  to  deal  with  the
Office. Changing one’s place of residence or employment within the territory of the various
Member States would no longer have any implications for one’s representation at the Office.

Boards of Appeal (Articles130 and 131)

Experience and  an assessment of the  functioning of  the  Boards  of  Appeal  has  revealed  that
there is a need for improvement with regard to certain aspects of these Boards. This mainly
relates to giving them additional means of improving the efficiency of their activities and their
output.  It  is  also  crucial  for  the  credibility,  particularly  outside  the  EU,  of  the  Community
system and of the work carried out by the Office. It is also a crucial point for the users.

The measures taken to ensure this are:

(1)  Henceforth,  the  members  of  the  Boards  of  Appeal,  including  the  Chairmen,  will  be
appointed  by  the  Administrative  Board  and  not  the  Council.  The  goal  of  this  measure  is  to
make the appointment procedure more efficient and easier to administer. The Administrative
Board  of  the  OHIM  decided  unanimously  at  its  meeting  of  14 May  2001  (CA-01-07)  to
appoint  new  members  of  the  Boards  of  Appeal  in  grade  A5  instead  of  A3,  so  that  it  is  no
longer  considered  appropriate  for  the  Council  of  Ministers  to  be  responsible  for  such
appointments.  Henceforth  the  decisions  will  be  taken  by  the  Administrative  Board.  The
principle whereby the Member States take the decision is therefore maintained.

On the other hand, the removal of members will continue to be the responsibility of the Court
of Justice, to which the cases concerned will be referred by the Administrative Board. This is
intended to guarantee their independence as provided for in the Regulation itself.

(2) It is now possible for a chairman of the Boards of Appeal to also take on the position of
chairman of the appeals department. Its purpose is, in particular, to ensure that the Boards of
Appeal  are  efficiently  administered,  as  well  as  to  guarantee,  insofar  as  is  possible,  that
decisions  made  by  the  Boards  are  consistent.  Moreover,  these  measures  are  also  the
responsibilities of the President of the Office, who may take all necessary steps, including the
adoption of internal administrative instructions and the publication of notices, to ensure that
the Office functions properly (Article 119).

(3)  Moreover,  with the sole purpose of speeding up decisions  by  the  Boards  of  Appeal,  the
possibility  for  a  single  member  to  take  decisions  where  circumstances  so  merit  has  been
provided  for.  This  must  be  restricted  to  certain  cases  when  the  parties,  where  appropriate,

4

have already been heard. It should not apply to provisions which have never been decided on
previously.

(4) In addition, in order to avoid contradictions between the various Boards in similar cases,
and  taking  into  account  the  difficulties  this  poses  for  the  Office’s  work  and  for  the  outside
world, it is now possible for  the  Boards  of  Appeal  to  take  decisions,  in  certain  cases,  in  an
enlarged Board. The deliberations of this enlarged Board should provide useful guidelines and
principles  for  cases  which  have  never  been  addressed  before  in  order  to  guarantee  the
consistency required in the decisions of the Boards of Appeal.

Points of procedure

(a) Absolute grounds for refusal: Article 7

With regard to the compatibility between the Community system of protection of Community
geographical indications and that of Community trade marks, Article 142 already lays down
that the provisions of Regulation (EEC) No 2081/92, and in particular its Article 14, are not
affected  by  Regulation  (EC)  No  40/94.  A  provision  has  been  added  to  the  list  of  absolute
grounds  for  refusal  which  makes  this  aspect  more  explicit  during  the  examination  of  a
Community trade mark application.

(b) Relative grounds for refusal: Article 8

The proprietors of signs protected within the EU acquire the right to oppose the registration of
a Community trade mark under the conditions set out in Article 8(4) of Regulation (EC) No
40/94.  The  existing  wording  takes  account  of  this  right  of  opposition  only  by  virtue  of  the
legislation  of  the  Member  States.  This  should  facilitate  and  consolidate  the  exercise  and
protection of the rights acquired by the proprietors in question. If these are earlier rights, and
on the same  grounds, a  Community  trade  mark  may  be  declared  invalid  pursuant  to  Article
52(2)

This  concerns,  for  example,  the  proprietors  of  signs  protected  under  Council  Regulation
(EEC)  No  2081/92  of  14  July  19925  on  the  protection  of  geographical  indications  and
designations  of  origin  and  Council  Regulation  (EC)  No  6/2002  of  12  December  20016  on
Community designs.

(c) Insolvency proceedings (Article 21)

Council Regulation (EC) No 1346/2000 laid down common rules on insolvency7. On the one
hand, this Regulation stipulates that the term "bankruptcy" is to be replaced by "insolvency",
so that the title and wording of Article 21 have been amended accordingly. On the other hand,
the said Regulation lays down that the entry of an insolvency proceeding in a register and its
publication  also  fall  within  the  field  of  competence  of  the  receiver  and  not  only  of  the
competent national authority, i.e. a court of law. This possibility has therefore been added to
the text.

5

6

7

OJ L 208, 24.07.1992, p. 1 et seq.
OJ L 3, 5.01.2002, p.1.
OJ L 160, 30.06.2000, p.1

5

                                                
(d) Filing of applications (Article 25)

In order not to penalise users without cause  when  a  Community  trade  mark  application  has
been forwarded to the Office by the national offices after the prescribed period, resulting in
the application being withdrawn, the period for forwarding the  application to the Office has
been extended. Where the document is submitted late, the application must not be considered
to be withdrawn, but the date for filing must simply be put back and replaced by the date on
which it was received by the Office

(e) Division of the application and the registration (Articles 44a and 48a)

With a view to simplifying and facilitating the procedure set out in the Regulation for users
and  for  the  Office,  the  possibility  of  submitting  and  subsequently  hearing  an  application  to
divide an application for registration or a registration has been added. This is in line with the
provisions set out in this respect by the Trademark Law Treaty (TLT) of 27 October 1994.

(f) Revision of ex parte and inter partes decisions (Article 60 and 60a)

The  possibility  of  revision  of  decisions  has  also  been  extended  to  inter  partes  cases  with  a
view to reducing the number of appeals before the Boards of Appeal. The term "interlocutory"
has been deleted because it leads to confusion.

(g) Revocation of decisions (Article 77a)

In  exceptional  cases,  where  the  Office  takes  a  mistaken  procedural  decision,  including  an
erroneous entry in the Register, it will be possible for the Office to revoke or correct that error
ex officio within six months of the date on which the decision was taken or the  entry made.
This should allow such situations to be rectified while complying with principles of legitimate
expectations  and  legal  certainty  which  might  be  invoked  by  the  proprietors  or  third  parties
concerned. Appeals may be made against the Office’s decision.

(h) Powers (Articles 88 and 89)

For  procedural  questions,  and  with  a  view  to  accelerating  the  representation  process  when
filing  a  Community  trade  mark,  the  cases  and  conditions  for  which  a  power  remains  or
becomes obligatory are determined by the Implementing Regulation.

The main purpose of this measure is to align the text with the new Community design system.
Under  this  system,  which  also  concerns  unitary  rights,  the  Council  chose  to  delegate  this
power to the Commission. Thus, Article 78 of Regulation (EC) No 6/2002 lays down that the
Implementing Regulation shall specify whether and under what conditions the representatives
must file with the Office a signed authorisation for insertion on the files.

(i) Apportionment of costs (Article 81)

With regard to the apportionment of costs, when the amount of the costs to be paid is limited
to  the  fees  paid  to  the  Office  and  the  representation  costs,  the  amount  is  set  automatically,
without a request being required, by the Opposition Division or the Cancellation Division or
registry of the Boards of Appeal. The purpose of this provision is to avoid unnecessary work
for the Office.

6

(j) Continuation of proceedings (Article 78a)

The  new  Article  78a  provides  for  a  period  of  grace  in  the  form  of  a  continuation  of  the
proceedings where a party to proceedings before the Office has failed to observe a time limit
set  by  the  Office.  In  such  circumstances,  it  is  possible  to  obtain,  on  request,  the  automatic
continuation  of  the  proceedings  against  payment  of  a  fee.  The  Office  can  thus  continue  the
proceedings  as  if  the  time  limit  had  been  observed.  There  are  certain  exceptions  to  this
possibility, so that it would not apply where the application was not submitted within the time
limit,  the  right  of  priority  is  claimed,  the  application  is  being  examined,  the  opposition
procedure is under way, an appeal has been lodged with the Court of Justice or an application
for restitutio in integrum has been made.

(k) Request for conversion and requirements (Article 109 and 110)

In  order  to  harmonise  and  centralise  the  examination  of  the  admissibility  of  requests  to
convert a Community trade mark application into a national trade mark application, this task
is to be entrusted to the Office and not to the national offices. The Office can thus rule on the
admissibility of the conversion request, while the national offices decide on the substance of
the conversion of the application into a national trade mark application.

During the  consultations  on  this point, this  measure  was  warmly  welcomed  by  the  Member
States  and  by  users.  It  will  make  the  task  of  the  national  offices  easier  and  will  ensure,
through  the  centralised  examination  of  applications,  that  decision  on  the  admissibility  of
requests for conversion are not based on different criteria.

(l) Counterclaims (Article 96)

The  provisions  laid  down  in  Article  56  concerning  the  examination  of  applications  for
revocation  of  rights  or  for  a  declaration  of  invalidity  before  the  Office  are  applicable  to
counterclaims  for  revocation  or  for  a  declaration  of  invalidity.  However,  Article  96(5)  does
not  refer  to  Article  56(2),  under  which  the  proprietor  of  the  Community  trade  mark  may
request  the  proprietor  of  an  earlier  Community  trade  mark  to  furnish  proof  of  genuine  use.
This  reference  therefore  needs  to  be  added.  On  the  other  hand,  a  reference  to  Article  56(6)
concerning the registration of decisions by a Community trade marks court mistakenly figures
in  Article  96(5),  while  such  registration  is  already  provided  for  in  Article  96(6).  This
reference has therefore been deleted.

(m) Checks on legality (Article 118)

The  Commission  shall  check  the  legality  of  certain  acts  referred  to  in  Article  118.  If  no
decision has been taken within the period prescribed, the case shall be deemed to have been
dismissed. Without relinquishing the principle of complying with a certain time limit, and for
reasons of legal certainty, the time limits in question should be lengthened.

(n) Decisions on opposition or cancellation (Articles 127 and 129)

In  order  to  enable  decisions  on  opposition  to  an  application  to  register  a  Community  trade
mark or on its cancellation to be taken as simply and effectively as possible, the possibility of
decisions  being  taken  by  a  single  member  of  the  Opposition  or  Cancellation  Division  is
provided for in certain cases, which must, in any event, be simple cases. It is preferable that
this person be legally qualified.

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Fees (Article 140)

Certain  fees  have  been  abolished,  such  as  those  which  do  not  provide  the  Office  with  real
revenue but make the procedure considerably more cumbersome.

Comitology (Article 141)

The  Council  Decision  of  28  June  1999  (1999/468/EC)  laying  down  the  procedures  for  the
exercise  of  implementing  powers  conferred  on  the  Commission8  laid  down  new  rules  on
"comitology". Article 141 of Regulation (EC) No 40/94 provides for a regulatory committee
to  be  set  up  to  deal  with  various  questions  defined  by  implementing  regulations.  This
provision  will  be  aligned  with  the  said  Decision  by  a  Council  Regulation  adapting  the
provisions  relating  to  the  committees  which  assist  the  Commission  in  the  exercise  of  its
implementing  powers  laid  down  in  Council  instruments  adopted  in  accordance  with  the
consultation procedure (unanimity)9. It is therefore no longer necessary for Article 141 to be
adapted by this proposal for a Regulation.

8

9

OJ L 184, 17.07.1999, p. 23
OJ C 75 E, 26.03.2002, p.0448 et seq.

8

                                                
2002/0308 (CNS)

Proposal for a

COUNCIL REGULATION

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

(Text with EEA relevance)

THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Article
308 thereof,

Having regard to the proposal from the Commission10,

Having regard to the opinion of the European Parliament11,

Having regard to the opinion of the European Economic and Social Committee12,

Whereas:

(1)

(2)

(3)

Council  Regulation  (EC)  No  40/94  of  20  December  1993  on  the  Community  trade
mark,  as  last  amended  by  Council  Regulation  (EC)  No  3288/94  of  22  December
199413, instituted a unitary system of  protection  of  the  mark throughout  the  Member
States  via  Community  registration.  This  system  has  generally  been  satisfactory  in
fulfilling users’ expectations. It also had a positive effect on the effective achievement
of the internal market.

The  functioning  of  the  system  has  made  it  possible  to  identify  other  aspects  which
could  clarify  and  further  supplement  it.  This  exercise  should  make  it  possible  to
improve the effectiveness of the system, increase the value it adds and prevent, as of
now, the consequences of additional members in future, without it being necessary to
change the substance of the system, which has proven itself to be perfectly valid with
regard to the objectives set.

The  Community  trade  mark  system  should  be  made  accessible  to  all,  without  any
requirement of reciprocity, equivalence and/or nationality. This also encourages trade
on  the  world  market.  The  disadvantages  of  such  requirements  make  the  system
complex, inflexible and ineffective. In addition, in the context of the new Community
design system, the Council took a flexible line on this question.

10

11

12

13

OJ C ....,...... , p......
OJ C ....,........ , p.....
OJ C ....., p......
OJ L 349, 31.12.1994, p 83 et seq.

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(4)

(5)

(6)

In order to rationalise the procedure, the search system is abolished. Insofar as it does
not add any real value to the Community system, but rather results in exorbitant costs,
slows  down  the  procedure  and  causes  other  problems,  this  action  is  the  most
appropriate.

Certain  measures  have  been  taken  in  order  to  give  the  Boards  of  Appeal  additional
means of speeding up their decisions and improving their operation.

The  experience  acquired  in  the  application  of  the  system  highlighted  the  possible
improvement  of  certain  aspects  of  the  procedure.  Consequently,  certain  points  have
been  amended  and  others  inserted  in  order  to  offer  users  a  higher-quality  product
which is still competitive.

HAS ADOPTED THIS REGULATION:

Article 1

HAS ADOPTED THIS REGULATION:

1.

Article 5 is replaced by the following:

“Article 5

Persons who can be proprietors of Community trade marks

Any  natural  or  legal  person,  including  authorities  established  under  public  law,  may  be  the
proprietor of a Community trade mark.”

2.

In Article 7(1), a new point (k) is added:

“k)

trade  marks  which  comprise  or  consist  of  a  registered  name,  if  subsequently
registered as a protected geographical indication or a protected designation of
origin pursuant  to  Regulation  (EEC)  No  2081/92,  when  the  products  covered
by the trade mark do not have the right to bear the said geographical indication
or designation of origin.”

3.

“4.

Article 8(4), first paragraph, is replaced by the following:

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  a
Community Regulation or the law of the Member State governing that sign.”

4.

Article 21 is amended as follows:

The  title  “Bankruptcy  or  like  proceedings”  is  replaced  by  the  title  “Insolvency

(a)
proceedings.”

In  Paragraph  1,  the  words  “bankruptcy  and  like  proceedings”  shall  be  replaced  by

(b)
“insolvency proceedings”.

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(c)

“2.

Paragraph 2 is replaced by the following:

Where a Community trade mark is involved in an insolvency proceeding, on request
of the competent receiver or the competent national authority, an entry to this effect
shall be made in the Register and published.”

5.

Article 25(3) is replaced by the following:

Applications referred to in paragraph 2 which reach the Office more than two months
“3.
after  filing  shall  be  deemed  to  have  been  submitted  on  the  date  on  which  the  application
arrived at the Office.”

6.

Article 35(1) is replaced by the following text:

"1.  The  proprietor  of  a  Community  trade  mark  who  is  the  proprietor  of  an  earlier  identical
trade mark registered in a Member State, including a trade mark registered in the territory of
the Benelux, 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 an earlier trade
mark  has been registered, or  contained within  them,  may  claim priority  for the  earlier  trade
mark with regard to the Member State in which, or for which, it was registered.”

7.

Article 36(1)(b) is replaced by the following:

“b)

the Community trade mark application complies with the conditions laid down
in  this  Regulation  and  with  the  conditions  laid  down  in  the  Implementing
Regulation.”

8.

9.

10.

“1.

2.

Article 37 is deleted.

Article 39 is deleted.

Article 40 is replaced by the following:

If  the  conditions  which  the  application  for  a  Community  trade  mark  must  satisfy
have  been  fulfilled,  the  application  shall  be  published  provided  that  that  it  has  not
been refused pursuant to Article 38.

Where, after publication, the application is refused under Article 38, the decision that
it has been refused shall be published upon becoming final.”

11.

The title of section five under Title IV is replaced by the following:

“WITHDRAWAL,  RESTRICTION,  AMENDMENT  AND  DIVISION  OF  THE
APPLICATION”.

12.

Following Article 44, the following Article 44a is inserted:

“Article 44a

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 and services in the divisional application shall not

11

overlap with the goods and services which remain in the original application or those
which are included in other divisional applications.

2.

Divisional applications are not admissible:

(a)

if  an  opposition  has  been  entered  against  the  original  application,  and  the
divisional  application  concerns  the  products  and  services  against  which  the
opposition  is  directed,  until  the  decision  of  the  Opposition  Division  has
become  final  or  until  the  opposition  proceedings  are  finally  terminated
otherwise;

(b)

during the periods laid down in the Implementing Regulation.

Divisional applications must comply with the provisions set out in the Implementing
Regulation.

Divisional applications are subject to a  fee. The application  shall be  deemed  not to
have been made until the fee has been paid.

The division shall take effect on the date on which it is recorded in the files kept by
the Office concerning the original application.

All requests and applications submitted and all fees paid with regard to the original
application prior to the date on which the Office  receives the divisional  application
are deemed to also have been submitted or paid with regard to the application or the
divisional  applications.  The  fees  for  the  original  application  which  have  been  duly
paid  prior  to  the  date  on  which  the  divisional  application  is  received  are  not
refundable.

The divisional application keeps the original application’s date of filing and all other
dates of priority and seniority.”

3.

4.

5.

6.

7.

13.

The title of Title V is replaced by the following:

“DURATION,  RENEWAL,  ALTERATION  AND  DIVISION  OF  COMMUNITY  TRADE
MARKS”.

14.

Following Article 48, the following Article 48a is inserted:

“Article 48a

Division of the registration

1.

The proprietor of the Community trade mark may divide the registration by declaring
that  some  of  the  goods  or  services  included  in  the  original  registration  will  be  the
subject  of  one  or  more  divisional  registrations.  The  goods  and  services  in  the
divisional registration shall not overlap with the goods and services which remain in
the original registration or those which are included in other divisional registrations.

12

2.

Divisional registrations are not admissible:

(a)

(b)

if an application for revocation of  rights or for a declaration  of invalidity  has
been  entered  against  the  original  registration,  and  the  divisional  registration
concerns  the  products  and  services  against  which  the  application  is  directed,
until  the  decision  of  the  Cancellation  Division  has  become  final  or  the
proceedings are finally terminated otherwise;

if  a  counterclaim  for  revocation  or  for  a  declaration  of  invalidity  has  been
entered  in  a  case  before  a  Community  trade  mark  court,  and  the  divisional
registration concerns the products and services against which the counterclaim
is directed, until the mention of the Community trade mark court’s judgment is
recorded in the Register pursuant to Article 96(6).

Divisional registrations must comply with the provisions set out in the Implementing
Regulation.

Divisional registrations are subject to a fee. The  application shall be deemed not to
have been made until the fee has been paid.

The division shall take effect on the date on which it is entered in the Register.

All requests and applications submitted and all fees paid with regard to the original
registration prior to the date on which the Office receives the divisional application
are deemed to also have been submitted or paid with regard to the registration or the
divisional registrations.  The  fees  for  the  original  registration  which  have  been  duly
paid  prior  to  the  date  on  which  the  divisional  registration  is  received  are  not
refundable.

The divisional registration keeps the original registration’s date of filing and all other
dates of priority and seniority.”

In Article 50(1), point (d) is deleted.

Article 51(1)(a) is replaced by the following:

“a) where the  Community trade mark  has not been  registered  in  accordance  with

the provisions of Article 7.”

Article 52(2) is replaced by the following:

A Community trade mark shall also be declared invalid on application to the Office
or on the basis of a counterclaim in infringement proceedings where the use of such
trade mark may be prohibited pursuant to another earlier right, and in particular:

3.

4.

5.

6.

7.

15.

16.

17.

“2.

a)

b)

c)

a right to a name;

a right of personal portrayal;

a copyright;

13

d)

an industrial property right;

under the Community legislation or national Law governing the protection.”

Article 56(6) is replaced by the following:

A mention of the Office’s decision on the application for revocation of rights or for a
declaration  of  invalidity  shall  be  transcribed  in  the  Register  once  it  has  become
final.”

18.

“6.

19.

Article 60 is replaced by the following:

“Article 60

Revision of decisions in ex parte cases

1.

2.

If the party which has lodged the appeal is the sole party to the procedure, and if the
department  whose  decision  is  contested  considers  the  appeal  to  be  admissible  and
well founded, the department shall rectify its decision.

If  the  decision  is  not  rectified  within  one  month  after  receipt  of  the  statement  of
grounds,  the  appeal  shall  be  remitted  to  the  Board  of  Appeal  without  delay,  and
without comment as to its merit.”

20.

Following Article 60, a new Article 60a is inserted:

“Article 60a

Revision of decisions in inter partes cases

1.

2.

3.

Where  the  party  which  has  lodged  the  appeal  is  opposed  to  another,  and  if  the
department  whose  decision  is  contested  considers  the  appeal  to  be  admissible  and
well founded, it shall rectify its decision.

It  can  only  be  rectified  if  the  department  whose  decision  is  contested  notifies  the
other party of its intention to rectify it, and that party accepts it within two months of
the date on which it received the notification.

If,  within  one  month  of  receiving  the  statement  of  grounds,  the  department  whose
decision  is  contested  does  not  consider  that  it  should  accept  the  appeal,  the  appeal
shall be remitted to the Board of Appeal without delay, and without comment as to
its  merit.  If  the  department  considers  that  the  appeal  should  be  accepted,  but  the
appellant does not accept this within one month, the appeal shall be remitted to the
Board of Appeal without delay, and without comment as to its merit, after receipt of
the  appellant’s  declaration  that  he  does  not  accept  it  or,  if  no  such  declaration  has
been received within the period prescribed, after that period elapses.”

14

21.

Following Article 77, a new Article 77a is inserted:

“Article 77a

Revocation of decisions

Where  the  Office  has  taken  a  decision  or  made  an  entry  in  the  Register  which  affects  the
rights of one party, and when that decision or entry contains an obvious material error which
does  not  comply  with  the  Regulation,  the  Office  may  revoke  that  decision  or  entry  if  such
revocation  is  needed  to  correct  the  error  and  restore  legality,  if  the  rights  of  the  party  or
parties  harmed  by  the  revocation  are  not  greater  than  the  interests  of  the  party  or  parties
affected positively by the revocation, and if rectifying the error is more in the public interest
than not doing so. Such a revocation is not permissible unless it is declared within six months
of the date on which the decision or entry to be revoked was taken.”

22.

“5.

Article 78(5) is replaced by the following:

The provisions of this Article shall not be applicable to the time limits referred to in
paragraph 2 of this Article, Article 42(1) and (3) and Article 78a.”

23.

Following Article 78, a new Article 78a is inserted:

“Article 78a

Continuation of proceedings

1.

2.

3.

4.

24.

“6.

An  applicant  for  or  proprietor  of  a  Community  trade  mark  or  any  other  party  to
proceedings before the Office who has been unable to observe a time limit vis-à-vis
the Office may, upon request, obtain the continuation of proceedings in cases other
than  those  set  out  in  Article  25(3),  Article  27,  Article  29(1),  Article  33(1),  Article
36(2), Article 42(1) and (3), Article 63(5), Article 78 and that set out in this Article,
provided  that,  at  the  time  the  application  is  made,  the  omitted  act  has  been  carried
out. The application for continuation of proceedings shall be admissible only if it is
presented within two months following the expiry of the unobserved time limit. The
application shall not be deemed to have been filed until a fee for continuation of the
proceedings has been paid.

The  department  competent  to  decide  on  the  omitted  act  shall  decide  upon  the
application.

If the Office accepts the application, the consequences of having failed to observe the
time limit are deemed not to have occurred.

If the Office rejects the application. the fee shall be refunded.”

Article 81(6) is replaced by the following:

The Opposition Division or Cancellation Division or Board  of  Appeal  shall  fix  the
amount of the costs to be paid pursuant to the preceding paragraphs when the costs to
be paid are limited to the fees paid to the Office and the representation costs. In all
other  cases,  the  registry  of  the  Board  of  Appeal  or  a  member  of  the  staff  of  the
Opposition Division or Cancellation Division shall fix the amount of the costs to be
reimbursed on request. The request is admissible only within two months of the date

15

on  which  the  decision  for  which  an  application  was  made  for  the  costs  to  be  fixed
became  final.  The  amount  so  determined  may  be  reviewed  by  a  decision  of  the
Opposition Division or Cancellation Division or Board of Appeal on a request filed
within the prescribed period.”

25.

(a)

Article 88 is amended as follows:

The first sentence of paragraph 3 is replaced by the following:

“Natural  or  legal  persons  having  their  domicile  or  principal  place  of  business  or  a  real  and
effective industrial or commercial establishment in the Community may be represented before
the Office by an employee.”

(b)

“4.

26.

(a)

A new paragraph 4 shall be added:

The  Implementing  Regulation  shall  specify  whether  and  under  what  conditions  an
employee must file with the Office a signed authorisation for insertion on the files.”

Article 89 is amended as follows:

Paragraph 1, point (b), is replaced by the following:

“b)

professional representatives whose names appear on the list maintained for this
purpose by the Office. The Implementing Regulation shall specify whether and
under what conditions the representatives before the Office must file with the
Office a signed authorisation for insertion on the files.”

(b)

The first sentence of paragraph 2, point (c) is replaced by the following

“c)

he must be entitled to represent natural or legal persons in trade mark matters
before the central industrial property office of a Member State.”

27.

“5.

28.

(a)

“4.

(b)

“5.

Article 96(5) is replaced by the following:

Article 56(2), (3), (4) and (5) shall apply.”.

Article 108 is amended as follows:

Paragraph 4 is replaced by the following:

In cases where a Community trade mark application is deemed to be withdrawn, the
Office  shall send to the applicant  or  proprietor  a  communication  fixing  a  period  of
three months from the date of that communication in which a request for conversion
may be filed.”.

Paragraph 5 is replaced by the following:

Where the Community trade mark application is withdrawn or the Community trade
mark ceases to have effect as a result of  a surrender being recorded or of failure to
renew the registration, the request for conversion shall be filed within three months
after the date on which the Community trade mark application was withdrawn or on
which the Community trade mark ceases to have effect.”

16

(c) Paragraph 6 is replaced by the following:

“6.

29.

“3.

30.

“1.

Where  the  Community  trade  mark  is  refused  by  decision  of  the  Office  or  where  it
ceases to have effect as a result of a decision of the Office or of a Community trade
mark  court,  the  request  for  conversion  shall  be  filed  within  three  months  after  the
date on which that decision acquired the authority of a final decision.”

Article 109(3) is replaced by the following:

The Office shall check whether the conversion requested meets the conditions set out
in the Regulation, in particular Article 108(1), (2) and (4) to (6), and Article 109(1),
together  with  the  formal  conditions  laid  down  in  the  Implementing  Regulation.  If
these conditions are fulfilled, the Office shall transmit the request for conversion to
the central industrial property offices of the Member States specified therein.”

Article 110(1) is replaced by the following:

Any  central  industrial  property  office  to  which  the  request  for  conversion  is
transmitted  may  obtain  from  the  Office  any  information  concerning  the  request
enabling  that  office  to  make  a  decision  regarding  the  national  trade  mark  resulting
from the conversion.”

31.
In the second  sentence  of  Article 118(3),  the phrase  “within  15 days”  is  replaced  by
the phrase  “within one month”  and, in  the  third sentence,  the  phrase  “within  one  month”  is
replaced by the phrase “within three months.”

32.

“2.

33.

“2.

34.

(1)

“2.

Article 127(2) is replaced by the following:

The decisions of the Opposition Divisions shall be taken by three-member groups of
which at least one member is legally qualified. In certain specific cases provided for
in the Implementing Regulation, the decisions shall be taken by a single member. In
any event, the decisions taken by a single member must relate to simple cases.”

Article 129(2) is replaced by the following:

The decisions of the Cancellation Divisions shall be taken by three-member groups
of which at least one member is legally qualified. In certain specific cases provided
for by the Implementing Regulation, the decisions shall be taken by a single member.
In any event, the decisions taken by a single member must relate to simple cases.”

Article 130 is amended as follows:

Paragraph 2 is replaced by the following:

Decisions of the Boards of Appeal shall be taken by three-members, at least two of
whom are legally qualified. In certain specific cases, decisions shall be taken by an
enlarged  Board  presided  by  the  Chairman  of  the  Boards  of  Appeal,  or  by  a  single
member.”

17

(2)

“3.

(3)

“4.

A new paragraph 3 is added:

Decisions taken by the enlarged Board shall lay down the guidelines to be followed
by  the  Boards  of  Appeal  for  similar  cases.  In  order  to  determine  the  special  cases
which fall under the jurisdiction  of the  enlarged  Board,  account  should be taken of
the legal difficulty or the importance of the affair or of special circumstances which
justify  it.  The  composition  of  the  enlarged  Board  shall  be  defined  pursuant  to  the
rules of procedure of the Boards laid down in Article 140(3).”

A new paragraph 4 is added:

To  determine  which  specific  cases  fall  under  the  authority  of  a  single  member,
account should be taken of the lack of difficulty of the legal or factual matters raised,
the  limited  importance  of  the  individual  case  and  the  absence  of  other  specific
circumstances.  It  may  also  cover  cases  which  raise  only  issues  which  have  already
been  clarified  by  an  established  tenet  of  the  Office  or  which  belong  to  a  series  of
cases on the same subject on one of which there has already been a final ruling. The
decision  to  confer  a  case  on  one  member  in  the  cases  referred  to  shall,  after  the
parties concerned have been heard, be  adopted unanimously by  the  Board  handling
the case. The types of cases which may fall under the jurisdiction of a single member
are  defined  pursuant  to  the  rules  of  procedure  of  the  Boards  laid  down  in  Article
140(3). The member shall refer the case to the Board if he finds that the conditions of
delegation  are  nor  fulfilled.  These  measures  shall  be  supplemented  as  required  in
accordance with the rules of procedure of the Boards laid down in Article 140(3).”

35.

Article 131 is replaced by the following:

“Article 131

Independence of the members of the Boards of Appeal

1.

The  Chairman  of  the  Boards  of  Appeal  shall  be  appointed,  in  accordance  with  the
procedure  laid  down  in  Article  120  for  the  appointment  of  the  President  of  the
Office, for a term of five years. Power to dismiss the Chairman of the Boards shall
lie with the  Council,  acting  on a proposal  from  the  Administrative  Board,  after  the
President  of  the  Office  has  been  heard.  The  term  of  office  of  the  Chairman  of  the
Boards  of  Appeal  may  be  renewed  for  additional  five-year  periods,  or  until
retirement age if this age is reached during the new term of office.

The  Chairman  of  the  Boards  of  Appeal  shall  have  managerial  and  organisational
powers, principally to:

(a) lay down the rules and organisation of work with the Chairmen of the Boards;

(b)  allocate  cases  and,  where  appropriate,  set  deadlines  for  decision-making,  on  a
proposal by the Chairman of the Board concerned;

(c)  request  the  President  of  the  Office  to  inform  the  Administrative  Board  in  the
event of repeated failure to comply with the obligations set in this way.

These  powers  shall  be  supplemented  as  required  in  accordance  with  the  rules  of
procedure of the Boards laid down in Article 140(3).

18

2.

3.

4.

5.

The  members, including the Chairmen  of  the  Boards  of  Appeal,  shall  be  appointed
by  the  Administrative  Board  for  a  term  of  five  years.  Their  term  of  office  may  be
renewed for additional five-year periods, or until retirement age if that age is reached
during the new term of office.

Any  disciplinary  decision  against  the  Chairmen  and  members  of  the  Boards  of
Appeal shall be taken by the Court of Justice after the case has been referred to it by
the Administrative Board on the  recommendation of  the  chairman  of  the Boards of
Appeal.

The members of the Boards of Appeal shall be independent.  In their decisions they
shall not be bound by any instructions.

The  Chairmen  and  members  of  the  Boards  of  Appeal  may  not  be  examiners  or
members  of  the  Opposition  Divisions,  Administration  of  Trade  Marks  and  Legal
Division or Cancellation Divisions.”

36.

In Article 140(2), points (1) and (4) are deleted.

This  Regulation  shall  enter  into  force  on  the  day  following  that  of  its  publication  in  the
Official Journal of the European Communities.

Article 2

This Regulation shall be binding in its entirety and directly applicable in all Member States.

Done at Brussels,

For the Council
For the President

19

LEGISLATIVE FINANCIAL STATEMENT

Policy area(s): Internal Market

Activity(ies): Improving the Community trade mark system

TITLE OF ACTION:

Proposal  for  a  Council  Regulation  amending  Regulation  (EC)  No  40/94  on  the
Community trade mark

Subsequently,  and  in  consequence,  amending  the  Implementing  Regulation  under  the
procedure laid down in Article 141 of the said Regulation

1.

BUDGET LINE(S) + HEADING(S)

A-1, A-7 0 3 1 Expenditure on committee meetings

2.

2.1

OVERALL FIGURES

Total allocation for action (Part B): € million for commitment (EC)

Not applicable

2.2

Period of application:

(Start and expiry years)

2003

2.3

a)

Overall multiannual estimate on expenditure:

Schedule  of  commitment  appropriations/payment  appropriations 
intervention) (see point 6.1.1)

(financial

Not applicable

Commitments

Payments

€ million ( to three decimal places))

[n+5 and

[n+1]

[n+2]

[n+3]

[n+4]

subs. years] Total

Year
[n]

b)

Technical and administrative assistance and support expenditure (see point 6.1.2

Not applicable

20

Commitments

Payments

Subtotal a+b

Commitments

Payments

c)

Overall  financial  impact  of  human  resources  and  other  operating  expenditure  (see
points 7.2 and 7.3)

Commitments/
payments

TOTAL a+b+c

Commitments

Payments

0

0

0

0.25

0

0.25

0.25

0

0

0

0

0

0

0

0

0

0

0

0.25

/ year

0.25

/ year

0.25

/ year

2.4

Compatibility with financial programming and financial perspective

[X…]Proposal is compatible with existing financial programming.

Proposal  will  entail  reprogramming  of  the  relevant  heading  in  the  financial
perspective.

Proposal  may  require  application  of  the  provisions  of  the  Interinstitutional
Agreement.

2.5

Financial impact on revenue14

[…X]Proposal  has  no  financial  implications  (involves  technical  aspects  regarding

implementation of a measure).

OR

Proposal has financial impact - the effect on revenue is as follows:

NB All details and observations relating to the method of calculating the effect on
revenue should be shown in a separate annex.

14

For further information, see separate explanatory note.

21

                                                
Budget line Revenue

€ million (to one decimal place)

Situation following implementation of action:

[n+1] [n+2]

[n+3]

[n+4] [n+5]

[Year
n]

Prior to
action
[Year
n-1]

a) Revenue in absolute terms

b) Change in revenue

 (cid:1)

(Please specify each budget line involved, adding the appropriate number of rows
to the table if there is an effect on more than one budget line)

3.

BUDGET CHARACTERISTICS

Type of expenditure

New

EFTA
contribution

Contributions
from
applicant
countries

Heading in
financial
perspective

Non-comp

Non-diff

NO

NO

NO

No

4.

LEGAL BASIS

Article 308 of the Treaty

5.

5.1

DESCRIPTION AND GROUNDS

Need for Community intervention15

5.1.1

Objectives pursued

Not applicable

5.1.2 Measures taken in connection with ex ante evaluation

(This involves:

a)

explaining how and when the ex ante evaluation was conducted (author, timing and
where  the  report(s)  is/are  available)  or  how  the  corresponding  information  was
gathered16.

Not applicable

b)

describing briefly the findings and lessons learnt from the ex ante evaluation.)

15

16

For further information, see separate explanatory note.
For minimum information requirements relating to new initiatives, see Document SEC (2000)1051.

22

                                                
5.1.3 Measures taken following ex post evaluation

Not applicable

5.2

Actions envisaged and budget intervention arrangements

Not applicable

5.3

Methods of implementation

Not applicable

FINANCIAL IMPACT

Total financial impact on Part B - (over the entire programming period)

6.

6.1

Not applicable. No financial impact on Part B of the budget.

6.1.1

Financial intervention

Commitments in € million (to three decimal places)

Breakdown

[Year
n]

[n+1]

[n+2]

[n+3]

[n+4]

Total

[n + 5
and subs.
years]

Action 1

Action 2

Etc.

TOTAL

23

6.1.2

Technical  and  administrative  assistance,  support  expenditure  and  IT  expenditure
(commitment appropriations)

[Year
n]

[n+1]

[n+2]

[n+3]

[n+4]

Total

[n + 5
and subs.
years]

Technical and administrative
assistance:

Technical assistance offices

b)  Other 
administrative assistance:

technical 

and

- intra-muros:

- extra-muros:

including 
for  construction
of
maintenance 
and 
computerised  management
systems:

Subtotal 1

2) Support expenditure:

a) Studies

b) Meetings of experts

c) Information and
publications

Subtotal 2

TOTAL

24

6.2

Calculation  of  costs  by  measure  envisaged  in  Part  B  (over  the  entire
programming period)17

Not applicable. No financial impact on Part B of the budget.

Breakdown

Commitments in € million (to three decimal places)

Type of outputs
(projects, files,
etc. )

1

Number of
outputs
(total for years
1…n)
2

Average unit
cost

Total cost
(total for years
1…n)

3

4=(2X3)

Action 1

- Measure 1

- Measure 2

Action 2

- Measure 1

- Measure 2

- Measure 3

Etc.

TOTAL COST

(If necessary, explain the method of calculation)

IMPACT ON STAFF AND ADMINISTRATIVE EXPENDITURE

Description of tasks deriving from the
action

Taking part in meetings to negotiate
the proposal for a Council Regulation;
preparing an amendment to the
Implementing Regulation, preparing
committee meetings, taking part in
meetings and follow-up on meetings

Total

1,5
0,5

0
2

7.

7.1

Impact on human resources

Types of post

Staff to be assigned to management of the
action using existing and/or additional
resources

Number of
permanent posts

Number of
temporary posts

Officials or
temporary staff

1.5
0.5

A
B
C

Other human resources
Total

0
2

0
0

17

For further information, see separate explanatory note.

25

                                                
7.2

Overall financial impact of human resources

Type of human resources

Amount (€)

Method of calculation *

Officials
Temporary staff

Other human resources

€ 216 000
0

0

Annual cost per official:
€ 108 000 X 2 officials =
€ 216 000

(give budget line)

Total

€ 216 000

The  requirements  in  terms  of  human  and  administrative  resources  will  be  covered  by  the
appropriation granted to the administering DG under the annual allocation procedure.

The amounts are total expenditure for twelve months.

7.3

Other administrative expenditure deriving from the action

Budget line
(number and heading)

Overall allocation (Title A7)
A0701 – Missions
A07030 – Meetings
A07031 – Compulsory committees1
Comitology/Legislative Committee
A07032 – Non-compulsory committees1
A07040 – Conferences
A0705 – Studies and consultations
Other expenditure (specify)
Information systems (A-5001/A-4300)

Other expenditure - Part A (specify)

Amount €

Method of calculation

€ 43.200

1 representative per Member State
€ 720 X 15 = € 10 800 per meeting
Four meetings per year = € 43 200)

0

0

Total

€ 43 200

The amounts are total expenditure for 12 months.
(1) Specify the type of committee and the group to which it belongs.

I.
II.
III.

8.

8.1

Annual total (7.2 + 7.3)
Duration of action
Total cost of action (I x II)

€259 200
1 year
€259 200

FOLLOW-UP AND EVALUATION

Follow-up arrangements

Not applicable

(Adequate  follow-up  information  must  be  collected,  from  the  start  of  each  action,  on  the
inputs,  outputs  and  results  of  the  intervention.  In  practice  this  means  (i)  identifying  the
indicators for inputs, outputs and results and (ii) putting in place methods for the collection of
data.)

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8.2

Arrangements and schedule for evaluation

Not applicable

(Describe  the  planned  schedule  and  arrangements  for  interim  and  ex  post  evaluations  to
assess  whether  the  intervention  has  achieved  the  objectives  set.  In  the  case  of  multiannual
programmes,  at  least  one  thorough  evaluation  is  needed  during  the  life  cycle  of  the
programme.  For  other  activities,  ex  post  or  mid-term  evaluations  should  be  carried  out  at
intervals not exceeding six years.)

9.

ANTI-FRAUD MEASURES

Not applicable

(Article 3(4) of the Financial Regulation: “In order to prevent risk of fraud or irregularity,
the  Commission  shall  record  in  the  financial  statement  any  information  regarding  existing
and planned fraud prevention and protection measures.”)

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