Commission Regulation (EC) No 782/2004 of 26 April 2004 amending Regulation (EC) No 2868/95 the accession of the European Community to the Madrid Protocol (Text with EEA relevance)
Date: 2004-04-26
Institutions: European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, European integration, administrative formalities, international trade

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COMMISSION REGULATION (EC) No 782/2004

of 26 April 2004

amending Regulation (EC) No 2868/95 the accession of the European Community to the Madrid
Protocol

(Text with EEA relevance)

THE COMMISSION OF THE EUROPEAN COMMUNITIES,

Having regard to the Treaty establishing the European
Community,

Having regard to Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark (1), and in par-
ticular Article 158 thereof,

3(4) of the Madrid Protocol or the date on which the
territorial extension to the European Community made
subsequently to the international registration pursuant
to Article 3 ter (2) of the Madrid Protocol was recorded
and, where applicable, the date of priority of the inter-
national registration.’

Whereas:

2. Rule 84 shall be amended as follows:

(1)

(2)

(3)

Following the Council Decision approving the accession
of the European Community to the Protocol relating to
the Madrid Agreement concerning the International
Registration of Marks adopted at Madrid on 27 June
1989 (hereinafter ‘Madrid Protocol’) (2), it is necessary to
adopt technical measures to implement Council Regu-
lation (EC) No 1992/2003 of 27 October 2003
amending Regulation (EC) No 40/94 on the Community
trade mark (3).

Commission Regulation (EC) No 2868/95 of 13
December 1995 implementing Council Regulation (EC)
No 40/94 on the Community trade mark (4) should
therefore be amended according.

The measures provided for in this Regulation are in
accordance with the opinion of the Committee on fees,
Implementation Rules and the Procedure of the Boards
of Appeal of
the Office for Harmonization in the
Internal Market (trade mark and designs),

HAS ADOPTED THIS REGULATION:

Article 1

Article 1 of Regulation (EC) No 2868/95 is amended as
follows:

1. In Rule 12 a new subparagraph (m) are added:

‘(m) where applicable, a statement

the application
results from a transformation of an international regis-
tration designating the European Community pursuant
to Article 156 of the Regulation, together with the date
to Article
of

the international registration pursuant

that

(1) OJ L 11 of 14.1.1994, p. 1.
(2) OJ L 296, 14.11.2003, p. 20.
(3) OJ L 296, 14.11.2003, p. 1.
(4) OJ L 303, 15.12.1995, p. 1.

(a) In paragraph 2, a new subparagraph (p) is added:

‘(p) a statement that the application results from a trans-
registration desig-
formation of an international
nating the European Community pursuant
to
Article 156 of the Regulation, together with the
date of the international registration pursuant to
Article 3(4) of the Madrid Protocol or the date on
which the territorial extension to the European
Community made subsequently to the international
the
registration pursuant
Madrid Protocol was recorded and, where applic-
able, the date of priority of the international regis-
tration.’

to Article 3 ter (2) of

(b) In paragraph 3, the new subparagraphs (t), (u) and (v)

are added:

‘(t) the replacement of the Community trade mark by
an international registration pursuant to Article 152
of the Regulation;

(u) the date and number of an international registration
based on the Community trade mark application
which has been registered as a Community trade
mark pursuant to Article 143(1) of the Regulation;

(v) the date and number of an international registration
based on the Community trade mark pursuant to
Article 143(2) of the Regulation.’

3. In Rule 89 a new paragraph 6 is added:

‘The files kept by the Office relating to international registra-
tions designating the European Community may be
inspected on request as from the date of publication referred
to in Article 147(1) of the Regulation, under the conditions
laid down in paragraphs (1), (3) and (4) and subject to Rule
88.’

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4. The following Title XIII is added:

Rule 103

‘TITLE XIII

Examination of international applications

PROCEDURES CONCERNING THE INTERNATIONAL REGIS-
TRATION OF MARKS

P a r t a

International registration on the basis of applications for
a community trade mark and of community trade marks

Rule 102

Filing of an international application

1.
The form provided by the Office for the filing of an
international application, as referred to in Article 142(1) of
the Regulation, shall be an adaptation of the official form
provided by the International Bureau of the World Intellec-
tual Property Organisation (hereinafter “the International
Bureau”) having the same format but including such addi-
tional indications and elements as are required or may be
appropriate pursuant to these Rules. Applicants may also
use the official form provided by the International Bureau.

2.
Paragraph 1 shall apply mutatis mutandis for the form
for territorial extension subsequent to the
for a request
international registration pursuant to Article 144 of the
Regulation.

1. Where the Office receives an international application
and the fee referred to in Article 142(5) of the Regulation
for the international application has not been paid,
the
Office shall inform the applicant that the international appli-
cation will be deemed not to have been filed until the fee
has been paid.

2. Where the examination of the international applica-
tion reveals any of the following deficiencies, the Office
shall invite the applicant to remedy those deficiencies within
such period as it may specify:

(a) the international application is not filed on one of the
forms referred to in Rule 102(1), and does not contain
all
the indications and information required by that
form;

(b) the list of goods and services contained in the interna-
tional application is not covered by the list of goods and
services appearing in the basic Community trade mark
application or basic Community trade mark;

(c) the mark which is subject to the international applica-
tion is not identical to the mark as appearing in the
basic Community trade mark application or basic Com-
munity trade mark;

(d) any indication in the international application as to the
mark, other than a disclaimer pursuant to Article 38(2)
the Regulation or a colour claim, does not also
of
appear in the basic Community trade mark application
or basic Community trade mark;

The Office shall inform the applicant filing the interna-
3.
tional application of
the date on which the documents
making up the international application are received by the
Office.

(e) if colour is claimed in the international application as a
distinctive feature of the mark, the basic Community
trade mark application or basic Community trade mark
is not in the same colour or colours; or

4. Where the international application is filed in an offi-
cial
language of the European Community other than a
language allowed under the Madrid Protocol for the filing of
an international application and where the international
application does not contain, or is not accompanied by, a
translation of the list of goods and services and of any other
text matter forming part of the international application in
the language in which the application is to be submitted to
the International Bureau pursuant to Article 142(2) of the
Regulation,
the applicant shall authorise the Office to
include in the international application a translation of the
said list of goods and services and other text matter in the
language in which the application is to be submitted to the
International Bureau pursuant to Article 142(2) of the Regu-
lation. Where the translation has not yet been established in
the course of the registration procedure for the Community
trade mark application on which the international applica-
tion is based, the Office shall without delay arrange for the
translation.

(f) according to the indications made in the international
form, the applicant is not eligible to file an international
application through the Office in accordance with
Article 2(1)(ii) of the Madrid Protocol,

3. Where the applicant has failed to authorise the Office
to include a translation as provided for in Rule 102(4), or
where it is otherwise unclear on which list of goods and
services the international application shall be based, the
Office shall invite the applicant to make the required indica-
tions within such a period as it may specify.

4.
If the deficiencies referred to in paragraph 2 are not
remedied or the required indications referred to in para-
graph 3 are not made within the time limit fixed by the
Office, the Office will take a decision refusing to forward
the international application to the International Bureau.

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Rule 104

Rule 106

Forwarding of the international application

Dependence of the international registration on the
basic application or registration

The Office shall forward the international application to the
International Bureau along with the certification provided
for under Article 3(1) of the Madrid Protocol as soon as the
international application meets the requirements laid down
in Rules 102 and 103 as well as in Articles 141 and 142 of
the Regulation.

Rule 105

Subsequent designations

The Office shall

1.
invite the applicant requesting the
territorial extension subsequent to the international registra-
tion, as referred to in Article 144 of the Regulation, to
remedy any of the following deficiencies within such time
limit as it may specify:

(a) the request for territorial extension is not filed on one of
the form referred to Rule 102(1) and (2) and does not
contain all the indications and information required by
that form;

(b) the request for territorial extension does not indicate the
the international registration to which it

number of
relates;

(c) the list of goods and services is not covered by the list
of goods and services contained in the international
registration; or

(d) according to the indications made in the international
form, the applicant requesting the territorial extension is
not entitled to make a designation subsequent to the
international registration through the Office in accord-
ance with Articles 2(1)(ii) and Article 3 ter (2) of the
Madrid Protocol,

2.
If the deficiencies referred to in paragraph 1 are not
remedied within the time limit fixed by the Office, the
Office will take a decision refusing to forward the request
for territorial extension made subsequently to the interna-
tional registration to the International Bureau.

The Office shall inform the applicant requesting the
3.
territorial extension of the date on which the request for
territorial extension is received by the Office.

The Office shall

forward the request

4.
for territorial
extension made subsequently to the international registra-
tion to the International Bureau as soon as the deficiencies
referred to in paragraph 1 of this Rule have been remedied
and the requirements of Article 144 of the Regulation are
complied with.

1.
The Office shall notify the International Bureau where,
within a period of five years from the date of the interna-
tional registration,

(a) the Community trade mark application on which the
international registration was based has been withdrawn,
is deemed to be withdrawn or has been refused by a
final decision;

(b) the Community trade mark on which the international
registration was based has ceased to have effect because
it
is surrendered, has not been renewed, has been
revoked, or has been declared invalid by the Office by a
final decision or, on the basis of a counterclaim in
infringement proceedings, by a Community trade mark
court;

(c) the Community trade mark application or the Com-
munity trade mark on which the international registra-
tion was based has been divided into two applications
or registrations,

The notification referred to in paragraph 1 shall

2.
include:

(a) the number of the international registration;

(b) the name of the holder of the international registration;

(c) the facts and decisions affecting the basic application or
registration, as well as the effective date of those facts
and decisions;

(d) in the case referred to in paragraph 1(a) or (b), the

request to cancel the international registration;

(e) where the act referred to in paragraph 1(a) or (b) affects
the basic application or basic registration only with
respect to some of the goods and services, those goods
and services, or the goods and services which are not
affected;

(f) in the case referred to in paragraph 1(c), the number of
each Community trade mark application or registration
concerned.

The Office shall notify the International Bureau where,
3.
at the end of a period of five years from the date of the
international registration,

(a) an appeal is pending against a decision of an examiner
to refuse the Community trade mark application on
which the international registration was based pursuant
to Article 38 of the Regulation;

(b) an opposition is pending against the Community trade
mark application on which the international registration
was based;

(c) an application for revocation or an application for
declaration of invalidity is pending against the Com-
munity trade mark on which the international registra-
tion was based;

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(d) mention has been made in the Register of Community
Trade Marks that a counterclaim for revocation or for
declaration of invalidity has been filed before a Com-
munity trade mark court against the Community trade
mark on which the international registration was based,
but no mention has yet been made in the Register of
the decision of the Community trade mark court on the
counterclaim;

Once the proceedings referred to in paragraph 3 have
4.
been concluded by means of a final decision or an entry in
the register, the Office shall notify the International Bureau
accordingly with paragraph 2.

5.
Any reference in paragraphs 1 and 3 to a Community
trade mark on which the international registration was
based shall
include a Community trade mark registration
resulting from a Community trade mark application on
which the international application was based.

Rule 107

Renewals

The international registration shall be renewed directly at
the International Bureau.

Pa r t b

International registrations designating the European Com-
munity

Rule 108

Seniority claimed in an international application

1. Where the seniority of one or more earlier registered
trade marks, as referred to in Article 34 of the Regulation,
has been claimed in an international application pursuant to
Article 148(1) of the Regulation, the holder shall, within
three months from the date on which the International
Bureau notifies the international registration to the Office,
submit a copy of the relevant registration to the Office. The
copy must be certified by the competent authority to be an
exact copy of the relevant registration.

2. Where the holder of the international registration is
obliged to be represented in proceedings before the Office
pursuant to Article 88(2) of the Regulation, the communica-
tion as referred to in paragraph 1 shall contain the appoint-
ment of a representative within the meaning of Article
89(1) of the Regulation.

3.
The President of the Office may determine that the
evidence to be provided by the holder may consist of less
than is required under paragraph 1, provided that the infor-
mation required is available to the Office from other
sources.

Rule 109

Examination of seniority claims

1. Where the Office finds that the seniority claim under
Rule 108(1) does not comply with Article 34 of the Regu-
lation, or does not comply with the other requirements of
Rule 108, it shall invite the holder to remedy the deficien-
cies within such period as it may specify.

If the requirements referred to in paragraph 1 are not
2.
satisfied within the time limit,
the right of seniority in
respect of that international registration shall be lost. If the
deficiencies concern only some of the goods and services,
the right of seniority shall be lost only in so far as those
goods and services are concerned.

The Office shall

inform the International Bureau of
3.
any declaration of a loss of the right of seniority pursuant
to paragraph 2. It shall also inform the International Bureau
of any withdrawal or restriction of the seniority claim.

4.
The Office shall inform the Benelux Trade Mark Office
or the central industrial property office of the Member State
concerned of the claiming of seniority, unless the right of
seniority is declared lost pursuant to paragraph 2.

Rule 110

Seniority claimed before the Office

1.
The holder of an international registration designating
the European Community may claim, directly before the
Office, the seniority of one or more earlier registered trade
marks as referred to in Article 35 of the Regulation as from
the date on which the Office has, pursuant to Article 147(2)
of the Regulation, published the fact that no refusal for
protection of the international registration designating the
European Community has been notified or if any such
refusal has been withdrawn, as provided for in Article
148(2) of the Regulation.

2. Where seniority is claimed before the Office before the
date referred to in paragraph 1, the seniority claim shall be
deemed to have been received by the Office on the date
referred to in paragraph 1.

An application to claim seniority pursuant to Article

3.
148(2) of the Regulation and paragraph 1 shall contain:

(a) an indication that the seniority claim is made for an
international registration under the Madrid Protocol;

(b) the registration number of the international registration;

(c) the name and address of the holder of the international

registration in accordance with Rule 1(1)(b);

(d) where the holder has appointed a representative, the
name and the business address of the representative in
accordance with Rule 1(1)(e);

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(e) an indication of the Member State or Member States in
or for which the earlier mark is registered, the date from
which the
the
number of the relevant registration, and the goods and
services for which the earlier mark is registered;

registration was

effective,

relevant

(f) where seniority is claimed for less than all the goods
and services contained in the earlier registration, the
indication of the goods and services in respect of which
seniority is claimed;

(g) a copy of

the relevant registration; certified by the

competent authority as being an exact copy;

(h) where the holder of

the international registration is
obliged to be represented in proceedings before the
Office pursuant to Article 88(2) of the Regulation, the
appointment of a representative within the meaning of
Article 89(1) of the Regulation.

4.
If the requirements governing the claiming of seniority
referred to in paragraph 3 are not fulfilled, the Office shall
invite the holder of the international registration to remedy
the deficiencies. If the deficiencies are not remedied within a
period specified by the Office, the Office shall reject the
application.

5. Where the Office has accepted the application to
claim seniority,
inform the International Bureau
accordingly by communicating

it shall

(a) the number of the international registration concerned,

(b) the name of the Member state or Member States in or

for which the earlier mark is registered,

(c) the number of the relevant registration, and

(d) the date from which the relevant registration was effec-

tive.

6.
The Office shall inform the Benelux Trade Mark Office
or the central industrial property office of the Member State
concerned of the application to claim seniority once it has
been accepted by the Office.

7.
The President of the Office may determine that the
evidence to be provided by the holder of the international
registration may consist of less than is required under para-
graph 1(g), provided that the information required is avail-
able to the Office from other sources.

Rule 112

Examination as to absolute grounds for refusal

the Regulation,

1. Where, in the course of the examination pursuant to
the Office finds that
Article 149(1) of
pursuant to Article 38(1) of the Regulation, the trade mark
which is subject to the territorial extension to the European
Community is ineligible for protection for all or any part of
the goods or services for which it has been registered by the
issue an ex officio
International Bureau, the Office shall
notification of provisional refusal pursuant to Article 5(1),
and (2) of
the
Common Regulations to the International Bureau.

the Madrid Protocol and Rule 17(1) of

Where the holder of the international registration is obliged
to be represented in proceedings before the Office pursuant
to Article 88(1) of the Regulation, the notification shall
contain an invitation to appoint a representative within the
meaning of Article 89(1) of the Regulation.

The notification of provisional refusal shall state the reasons
on which it is based, and shall specify a time limit within
which the holder of
registration may
submit his observations and, if appropriate, must appoint a
representative.

the international

The time limit shall start on the day on which the Office
issues the provisional refusal.

the Regulation,

2. Where, in the course of the examination pursuant to
Article 149(1) of
the Office finds that
pursuant to Article 38(2) of the Regulation, registration of
the mark must be subject to the statement by the holder of
the international registration that he disclaims any exclusive
rights in a non-distinctive element of the mark, the notifica-
tion of ex officio refusal of provisional protection pursuant
to paragraph 1 shall state that the international registration
will be refused protection if the relevant statement is not
submitted within the specified time limit.

Rule 111

Decisions affecting seniority claims

Where a seniority claim which has been made in accordance
with Article 148(1) of the Regulation, or which has been
communicated pursuant
to Rule 110(5), has been with-
drawn or cancelled by the Office, the Office shall inform the
International Bureau accordingly.

3. Where, in the course of the examination pursuant to
Article 149(1) of the Regulation, the Office finds that the
international registration designating the European Com-
munity does not contain the indication of a second language
pursuant to Rule 126 of the present Regulation and Rule
(ii) of the Common Regulations, the Office shall
9(5)(g)
issue an ex officio notification of provisional
refusal
pursuant to Article 5(1), and (2) of the Madrid Protocol and
Rule 17(1) of the Common Regulations to the International
Bureau. Paragraph 1, second, third and fourth sentence,
shall apply.

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4. Where the holder of the international registration fails
to overcome the ground for refusing protection within the
time limit or to comply with the condition laid down in
paragraph 2 or, if appropriate, to appoint a representative
or to indicate a second language, the Office will take a deci-
sion refusing the protection in whole or for a part of the
goods and services for which the international registration is
registered. The decision shall be subject to appeal in accord-
ance with Article 57 to 63 of the Regulation.

5. Where, until the start of the opposition period referred
to in Article 151(2) of the Regulation, the Office has not
issued an ex officio notification of provisional
refusal
pursuant to paragraph 1, the Office shall send a statement
of grant of protection to the International Bureau, indicating
that the examination of absolute grounds of refusal pursuant
to Article 38 of the Regulation has been completed but that
the international registration is still subject to oppositions or
observations of third parties.

Rule 113

Notification of ex officio provisional refusals to the
International Bureau

1.
The notification of ex officio provisional refusal of
protection of the international registration in whole or in
part, pursuant to Rule 112, shall be sent to the International
Bureau and shall contain:

(a) the number of the international registration;

(b) all the grounds on which the provisional refusal is based
together with a reference to the corresponding provi-
sions of the Regulation;

(c) the indication that the provisional refusal of protection
will be confirmed by a decision of the Office if the
holder of the international registration does not over-
come the grounds for refusal by submitting his observa-
tions to the Office within a time limit of two months
from the date on which the Offices issues the provi-
sional refusal;

(d) if the provisional refusal relates to only part of the
goods and services, the indication of those goods and
services.

2.
In respect of each notification of ex officio provisional
refusal issued pursuant to paragraph 1, and provided that
the time limit for entering an opposition has expired and
that no provisional refusal based on an opposition has been
issued pursuant to Rule 115(1), the Office shall inform the
International Bureau as follows:

(a) where as the result of the proceedings before the Office
the provisional refusal has been withdrawn, the fact that
the mark is protected in the European Community;

(b) where a decision to refuse protection of the mark has
become final, if applicable, following an appeal under
Article 57 of the Regulation or an action under Article

63 of the Regulation, the Office shall inform the Inter-
national Bureau that protection of the mark is refused in
the European Community;

(c) where the refusal pursuant to subparagraph (a) or (b)
concerns only part of the goods and services, the goods
and services for which the mark is protected in the
European Community.

Rule 114

Opposition proceedings

1. Where opposition is entered against an international
registration designating the European Community pursuant
to Article 151 of the Regulation, the notice of opposition
shall contain:

(a) the number of

the international registration against

which opposition is entered;

(b) an indication of the goods and services listed in the
international registration against which opposition is
entered;

(c) the name of the holder of the international registration;

(d) the

indications and elements

referred to in Rule

15(2)(b), (c) and (d), and (3).

Rules 15(1) and 16 to 22 shall apply, subject to the

2.
following:

(a) any reference to an application for registration of the
Community trade mark shall be read as a reference to
an international registration;

(b) any reference to a withdrawal of the application for
registration of the Community trade mark shall be read
as a reference to the renunciation of the international
registration in respect of the European Community;

(c) any reference to the applicant shall be read as a refer-
ence to the holder of the international registration.

3.
If the notice of opposition is filed before the expiry of
the period of six months referred to in Article 151(2) of the
Regulation, the notice of opposition shall be deemed to
have been filed on the first day following the expiry of the
period of six months. The application of Article 42(3)
second sentence of the Regulation shall remain unaffected.

4. Where the holder of the international registration is
obliged to be represented in proceedings before the Office
pursuant to Article 88(2) of the Regulation, and where he
has not already appointed a representative within the
meaning of Article 89(1) of the Regulation, the communica-
tion of the opposition to the holder of the international
registration pursuant to Rule 19 shall contain the invitation
to appoint a representative within the meaning of Article
89(1) of the Regulation within a period of two months from
the date of notification of the communication.

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Where the holder of the international registration fails to
appoint a representative within this period, the Office will
take a decision refusing the protection of the international
registration.

5.
The opposition procedure shall be stayed if an ex
officio provisional refusal of protection is or has been issued
pursuant
to Rule 112. When the ex officio provisional
refusal leads to a decision to refuse protection of the mark
which has become final, the Office shall not proceed to
judgment and refund the opposition fee, and no decision on
the apportionment of costs shall be taken.

Rule 115

Notification of provisional refusals based on an opposi-
tion

1. When an opposition against an international registra-
tion is entered at the Office pursuant to Article 151(2) of
the Regulation, or is deemed to have been entered pursuant
to Rule 114(3), the Office shall issue a notification of provi-
sional refusal of protection based on an opposition to the
International Bureau.

The notification of provisional refusal of protection

2.
based on an opposition shall contain:

(a) the number of the international registration;

(b) the indication that the refusal is based on the fact that
an opposition has been filed, together with a reference
to the provisions of Article 8 of the Regulation on
which the opposition relies;

(c) the name and the address of the opposing party.

3. Where the opposition is based on a trademark applica-
tion or registration, the notification referred to in paragraph
2 shall contain the following indications:

(i) the filing date, the registration date and,

if any, the

priority date,

(ii) the filing number and,

if different,

the registration

number,

(iii) the name and address of the owner,

(iv) a reproduction of the mark, and

(v) the list of goods and services on which the opposition

is based.

4.
If the provisional refusal relates to only part of the
goods and services, the notification referred to in paragraph
2 shall indicate those goods and services.

The Office shall

5.
follows:

inform the International Bureau as

(a) where as the result of the opposition proceeding the
provisional refusal has been withdrawn, the fact that the
mark is protected in the European Community;

(b) where a decision to refuse protection of the mark has
become final, if applicable, following an appeal under
Article 57 of the Regulation or an action under Article
63 of the Regulation, the fact that protection of the
mark is refused in the European Community;

(c) where the refusal pursuant to subparagraph (a) or (b)
concerns only part of the goods and services, the goods
and services for which the mark is protected in the
European Community.

6. Where for one and the same international registration,
more than one provisional refusal has been issued pursuant
to Rule 112(1), (2) or paragraph 1 of this Rule, the commu-
nication referred to in paragraph 5 of this Rule shall relate
to the total or partial refusal of protection of the mark as it
results from all the procedures under Article 149 and 151
of the Regulation.

Rule 116

Statement of grant of protection

1. Where the Office has not issued an ex officio notifica-
tion of provisional refusal pursuant to Rule 112 and no
opposition has been received by the Office within the oppo-
sition period referred to in Article 151(2) of the Regulation
and the Office has not issued an ex officio notification of
provisional refusal as a result of the third party observations
filed, the Office shall send a further statement of grant of
protection to the International Bureau,
indicating that the
mark is protected in the European Community.

2.
For the purposes of Article 146(2) of the Regulation,
the further statement of grant of protection referred to in
paragraph 1 shall have the same effect as a statement by the
Office that a notice of refusal has been withdrawn.

Rule 117

Notification of invalidation to the International Bureau

1. Where, pursuant to Article 56 or 96 and Article 153
of the Regulation, the effects of an international registration
designating the European Community have been declared
invalid and where that decision has become final, the Office
shall notify the International Bureau accordingly.

2.

The notification shall be dated and shall contain:

(a) the indication that the invalidation has been pronounced
by the Office, or the indication of the Community trade
mark court which has pronounced the invalidation;

(b) the

invalidation

indication whether

been
pronounced in the form of revocation of the rights of
the holder of the international registration, of a declara-
tion that the trade mark is invalid on absolute grounds,
or of a declaration that the trade mark is invalid on rela-
tive grounds;

has

(c) the indication of the fact that the invalidation is no

longer subject to appeal;

(d) the number of the international registration;

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(e) the name of the holder of the international registration;

(f) if the invalidation does not concern all the goods and
services, those goods and services in respect of which
the invalidation has been pronounced or
those in
invalidation has not been
respect of which the
pronounced;

(g) the

date on which

been
the
pronounced, together with the indication whether the
invalidation is effective as of that date or ex tunc.

invalidation has

mark, the international registration designating the Euro-
pean Community shall be dealt with as a Community collec-
tive mark.

The holder of

the international

the regulations governing use of

registration shall
2.
submit
the mark as
provided for in Article 65 of the Regulation and Rule 43
directly to the Office within a period of two months from
the date on which the International Bureau notifies the
international registration to the Office.

Rule 118

Legal effect of registration of transfers

For the purposes of Article 17, and also in conjunction with
Article 23(1) or (2) and Article 24, of
the Regulation,
recordal of a change in the ownership of the international
registration on the International Register shall replace the
entry of a transfer in the Register of Community Trade
Marks.

Rule 119

Legal effect of registration of licenses and other rights

For the purposes of Articles 19, 20, 21 and 22, and also in
conjunction with Article 23 and Article 24, of the Regu-
lation, recordal of a license or a restriction of the holder's
right of disposal in respect of the international registration
on the International Register shall replace the registration of
a license, a right in rem, a levy of execution or insolvency
proceedings in the Register of Community Trade Marks.

Rule 120

Examination of requests for registrations of transfers,
licenses or restrictions of the holder's right of disposal

1. Where a request to register a change in ownership, a
license or a restriction of the holder's right of disposal is
filed through the Office by a person other than the holder
of the international registration, the Office shall refuse to
the
transmit
request is not accompanied by proof of the transfer, license
or the restriction of the right of disposal.

to the International Bureau if

the request

2. Where a request to register the amendment or cancel-
lation of a license or the removal of a restriction of the
holder's right of disposal is filed through the Office by the
holder of the international registration, the Office will take a
decision refusing to transmit the request to the International
Bureau if the request is not accompanied by proof that the
license no longer exists or has been amended, or that the
restriction of the right of disposal has been removed.

Rule 121

Collective marks

A notification of

3.
pursuant to Rule 112 shall also be issued:

ex officio provisional

refusal

(a) if one of the grounds for refusal foreseen in Article
66(1) or (2), in conjunction paragraph 3 of that Article,
of the Regulation exists;

(b) where the regulations governing use of the mark have
not been submitted in accordance with paragraph 2.

Rules 112(2), (3) and 113 shall apply.

Notice of amendments to the regulations governing
4.
use of the mark pursuant to Article 69 of the Regulation
shall be published in the Community Trade Marks Bulletin.

Rule 122

Conversion of an international registration into a
national trade mark application

1.
An application for conversion of an international
registration designating the European Community into a
national trade mark application pursuant to Articles 108
and 154 of the Regulation shall contain:

(a) the registration number of the international registration;

(b) the date of the international registration or the date of
the European Community made
the designation of
subsequently to the international registration pursuant
to Article 3 ter (2) of the Madrid Protocol and, where
applicable, particulars of the claim to priority for the
international registration pursuant to Article 154(2) of
the Regulation and particulars of the claim to seniority
pursuant to Articles 34, 35 and 148 of the Regulation;

(c) the indications and elements referred to in Rule 44(1)
(a), (b), (f) and (g) and, where applicable, (h) and (k), and
(2).

2. Where conversion is requested pursuant
to Article
108(5) and 154 of the Regulation following a failure to
renew the international registration designating the Euro-
pean Community, the application referred to in paragraph 1
shall contain an indication to that effect, and the date on
which the protection has expired. The period of
three
months provided for in Article 108(5) of the Regulation
shall begin to run on the day following the last day on
which the renewal may still be effected pursuant to Article
7 (4) of the Madrid Protocol;

1. Where the international registration indicates that it is
based on a basic application or basic registration which
relates to a collective mark, certification mark or guarantee

Rules 45, 46(2) (a) and (c), and 47 shall apply mutatis

3.
mutandis.

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Rule 123

Conversion of an international registration into a desig-
nation of a Member State party to the Madrid Protocol
or the Madrid Agreement

1.
An application for conversion of an international
registration designating the European Community into a
designation of a Member State party to the Madrid Protocol
or the Madrid Agreement pursuant to Article 154 of the
Regulation shall contain the indications and elements
referred to in Rule 122(1) and (2).

Rule 45 shall apply mutatis mutandis. The Office shall
2.
also reject the application for conversion where the condi-
tions to designate the Member State which is a party to the
Madrid Protocol or to the Madrid Agreement were not
fulfilled both on the date of the designation of the European
Community and the date on which the application for
conversion was received or, pursuant to the second sentence
of Article 109(1) of the Regulation, is deemed to have been
received by the Office.

Rule 46(2)(a) and (c) shall apply mutatis mutandis. The
3.
publication of
the application for conversion shall also
contain the indication that conversion has been requested
into a designation of a Member State party to the Madrid
Protocol or the Madrid Agreement pursuant to Article 154
of the Regulation.

4. Where the application for conversion complies with
the requirements of the Regulation and these Rules, the
Office shall transmit it without delay to the International
Bureau. The Office shall inform the holder of the interna-
tional registration of the date of transmission.

Rule 124

Transformation of an international registration desig-
nating the European Community into a Community
trade mark application

1.
In order to be considered a transformation of an inter-
national registration which has been cancelled at the request
of the office of origin by the International Bureau pursuant
to Article 9 quinquies of the Madrid Protocol and in accord-
ance with Article 156 of the Regulation, a Community trade
mark application must contain an indication to that effect.
That indication must be made on filing of the application.

The application shall contain, in addition to the indica-

2.
tions and elements referred to in Rule 1,

(a) the indication of the number of the international regis-

tration which has been cancelled;

(b) the date on which the international registration was

cancelled by the International Bureau;

(c) as appropriate, the date of the international registration
pursuant to Article 3(4) of the Madrid Protocol or the
date of recordal of the territorial extension to the Euro-
pean Community made subsequently to the interna-
tional registration pursuant to Article 3 ter (2) of the
Madrid Protocol;

(d) where applicable, the date of priority claimed in the
international application as entered in the International
Register kept by the International Bureau.

3. Where, in the course of the examination in accordance
with Rule 9(3), the Office finds that the application was not
filed within three months from the date on which the inter-
national
registration was cancelled by the International
Bureau; or the goods and services for which the Community
trade mark is to be registered are not contained in the list of
goods and services for which the international registration
was registered in respect of the European Community, the
Office shall invite the applicant to remedy the deficiencies
noted and in particular to restrict the list of goods and
services to those goods and services which have been
contained in the list of goods and services for which the
international registration was registered in respect of the
European Community, within such a period as it may
specify.

4.
If the deficiencies referred to in paragraph 3 are not
remedied within the time limit, the right to the date of the
international registration or to the date of the territorial
extension and, if any, to the date of the priority of the inter-
national registration shall be lost.

P a r t c

Communications

Rule 125

Communications with the International Bureau and
electronic forms

Communications with the International Bureau shall
1.
be in a manner and format agreed on between the Interna-
tional Bureau and the Office, preferably by electronic
means.

Any reference to forms shall be construed as including

2.
forms made available in electronic format.

Rule 126

Use of languages

For the purposes of applying the Regulation and these Rules
to international registrations designating the European Com-
munity, the language of filing of the international applica-
tion shall be the language of the proceedings within the
meaning of Article 115(4) of the Regulation, and the second
language indicated in the international application shall be
the second language within the meaning of Article 115(3)
of the Regulation.’

Article 2

This Regulation shall enter into force on the date on which the
Madrid Protocol enters into force with respect to the European
Community. The date of entry into force of this Regulation
shall be published in the Official Journal of the European Union.

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

Done at Brussels, 26 April 2004.

For the Commission

Frederik BOLKESTEIN

Member of the Commission