Commission Regulation (EC) No 2082/2004 of 6 December 2004 amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)
Date: 2004-12-06
Institutions: European Commission
Subjects: European Union Intellectual Property Office, administrative procedure, appeal to an administrative authority, operation of the Institutions

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Official Journal of the European Union

7.12.2004

COMMISSION REGULATION (EC) No 2082/2004

of 6 December 2004

amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal
of the Office for Harmonization in the Internal Market (Trade Marks and Designs)

THE COMMISSION OF THE EUROPEAN COMMUNITIES,

HAS ADOPTED THIS REGULATION:

Having regard to the Treaty
Community,

establishing the European

Article 1

Regulation (EC) No 216/96 is amended as follows:

Having regard to Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark (1), and in
particular Article 157(3) thereof,

1. Article 1 is replaced by the following:

Whereas:

(1)

(2)

(3)

Regulation (EC) No 422/2004 amended Regulation (EC)
No 40/94 with regard, inter alia, to the organisation and
procedures of
the Boards of Appeal provided for in
Articles 130 and 131.

Regulation (EC) No 422/2004 introduced, inter alia, the
new post of President of the Boards of Appeal, created an
enlarged Board of Appeal and laid down that, under
certain conditions, decisions of the Boards of Appeal
is therefore
may be taken by a single member.
necessary to set out
the
in detail
President of the Boards of Appeal, the composition and
powers of the Boards of Appeal, the allocation of cases
to the Boards of Appeal and the composition of the
enlarged Board, cases to be referred to the enlarged
Board and cases to be decided by a single member.

the powers of

It

The practical operation of
the Boards of Appeal has
shown the need to make certain changes to their orga-
nisation and procedures, including changes to the role of
the Registry and certain procedural aspects. Centralisation
of the Registry and revision of its powers, and rules on
exchanges of submissions between parties, are designed
to ensure greater efficiency in the handling of cases by
In order not to interfere with
the Boards of Appeal.
already pending when this Regulation
proceedings
enters
transitional period must be
provided for with respect to the exchange of submissions
by the parties.

into force,

a

(4)

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),

(1) OJ L 11, 14.1.1994, p. 1. Regulation as last amended by Regulation

(EC) No 422/2004 (OJ L 70, 9.3.2004, p. 1).

‘Article 1

Presidium of the Boards of Appeal

The authority referred to in Articles 130 and 131 of
the Boards of

1.
the Regulation shall be the Presidium of
Appeal (referred to hereinafter as ‘the Presidium’).

2.
the
The Presidium shall comprise the President of
Boards of Appeal, who shall chair it, the chairmen of the
Boards and Board members elected for each calendar year by
and from among all the members of the Boards other than
the President of the Boards of Appeal and the chairmen of
the Boards. The number of Board members so elected shall
be a quarter of the number of Board members, other than
the President of the Boards of Appeal and the chairmen of
the Boards, rounded up if necessary.

3.
If the President of the Boards of Appeal is unable to act
or if the post of President is vacant, the Presidium shall be
chaired by:

(a)

the chairman of the Board having the longest service on
the Boards of Appeal; or

(b) where chairmen have the same length of service, by the
eldest of those qualifying under the preceding subpar-
agraph.

its members

The Presidium may validly deliberate only if at least
4.
including its
two-thirds of
chairman and two Board chairmen. Decisions of
the
Presidium shall be taken by a majority vote. In the event
of a tie, the vote of the chairman shall be decisive.

are present,

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Before the beginning of each calendar year, and
5.
without prejudice to Article 1(b),
the Presidium shall
decide on objective criteria for allocating cases among the
Boards for the calendar year in question and shall designate
the full and alternate members of each of the Boards for that
year. Each member of the Boards of Appeal may be assigned
to several Boards as a full or alternate member. These
measures may be modified, as necessary,
in the course of
the calendar year in question. Decisions adopted by the
Presidium pursuant to this paragraph shall be published in
the Official Journal of the Office.

Official Journal of the Office. If a rapporteur has not been
designated prior to referral to the Grand Board, the chairman
of the Grand Board shall designate a rapporteur from among
the members of the Grand Board.

3.
If the President of the Boards of Appeal is unable to act
or if the post of President is vacant, or in the event of
exclusion or objection within the meaning of Article 132
of the Regulation, the Grand Board shall be chaired by:

6.

The Presidium shall also be competent to:

(a)

the chairman having the longest service on the Boards of
Appeal; or

(a)

lay down such rules of a procedural nature as are
necessary for the processing of cases brought before
the Boards and such rules as are necessary on the orga-
nisation of the Boards’ work;

(b) rule on any conflict concerning the allocation of cases

among the Boards of Appeal;

(c)

lay down its internal rules;

(d) lay down practical instructions of a procedural nature for
parties involved in proceedings before the Boards of
Appeal, for example, with regard to the submission of
written statements and to oral proceedings;

(e) exercise any other powers as are conferred to it by the

present Regulation.

7.
The President of the Boards of Appeal shall consult the
Presidium on the expenditure requirements of the Boards,
which he shall communicate to the President of the Office
with a view to drawing up the expenditure estimates and
where he considers it appropriate, on any other question
relating to the management of the Boards of Appeal.’

2. Articles 1(a) to (d) are inserted as follows:

‘Article 1(a)

Grand Board

The enlarged Board set up by Article 130(3) of the

1.
Regulation shall be the Grand Board.

it,

the chairmen of

The Grand Board shall

2.
comprise nine members,
including the President of the Boards of Appeal, who shall
chair
the rapporteur
designated prior to referral to the Grand Board, if applicable,
and members drawn in rotation from a list comprising the
names of all members of the Boards of Appeal other than
the President of the Boards of Appeal and the chairmen of
the Boards.

the Boards,

The Presidium shall draw up the list referred to in the first
paragraph and establish the rules according to which
members are drawn from that list on the basis of objective
criteria. The list and such rules shall be published in the

(b) where chairmen have the same length of service, by the
eldest of those qualifying under the preceding subpar-
agraph 4.

4.
If another member of the Grand Board is unable to act
or in the event of exclusion or objection within the meaning
of Article 132 of the Regulation, he or she shall be replaced
by the person highest on the list referred to in paragraph 2
of this Article.

The Grand Board may not hear cases and oral
5.
proceedings may not take place before it unless seven of
its members are present,
including its chairman and the
rapporteur.

If the Grand Board hears a case in the presence of only eight
of its members, the member with the least seniority in the
Boards of Appeal shall not take part in the vote, unless that
member is the chairman or the rapporteur, in which case the
member with the next highest seniority to that of
the
chairman or rapporteur shall not vote.

Article 1(b)

Referral to the Grand Board

1.
A Board may refer a case allocated to it to the Grand
Board if it believes that this is justified by the legal difficulty
or importance of the case or by special circumstances, for
example, if Boards of Appeal have issued diverging decisions
on a point of law raised by that case.

2.
A Board shall refer a case allocated to it to the Grand
Board if it believes that it must deviate from an interpre-
tation of the relevant legislation given in an earlier decision
of the Grand Board.

The Presidium may, on a proposal made by the
3.
President of
the Boards of Appeal on his or her own
initiative or at the request of a member of the Presidium,
refer to the Grand Board a case allocated to a Board if it
is justified by the legal difficulty or
believes
importance of
for
example,
issued diverging
decisions on a point of law raised by that case.

the case or by special circumstances,

if Boards of Appeal have

that

this

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The Grand Board shall, without delay, refer the case
4.
back to the Board to which it was originally allocated if it
believes that the conditions for the original referral are not
met.

5.
All decisions relating to referral to the Grand Board
shall be reasoned and shall be communicated to the
parties to the case.

Article 1(c)

Decisions by a single member

1.
The Presidium shall draw up an indicative list of the
types of cases which the Boards may, unless special circum-
stances apply, devolve to a single member, such as decisions
closing the proceedings following agreement between the
parties, and decisions on the award of costs and the admis-
sibility of the appeal.

The Presidium may also draw up a list of the types of cases
which may not be devolved to a single member.

4. Article 5 is replaced by the following:

‘Article 5

Registry

A Registry shall be set up at the Boards of Appeal, and
1.
shall,
inter alia, be responsible, under the authority of the
President of the Boards of Appeal, for the receipt, dispatch,
safekeeping and notification of all documents relating to the
proceedings before the Boards of Appeal, and for compi-
lation of the relevant files.

2.
The Registry shall be headed by a Registrar. The
President of the Boards of Appeal shall appoint a Registry
agent who shall perform the tasks of the Registrar when the
latter is absent or unable to act or if the post of Registrar is
vacant.

shall,

The Registrar

3.
the
deadlines and other formal conditions relating to the presen-
tation of the appeal and of the statement of grounds are
respected.

in particular, ensure that

A Board may delegate to its chairman the decision to
2.
allocate to a single member cases falling within the types of
cases defined by the Presidium in accordance with paragraph 1.

If an irregularity is detected which is liable to make the
appeal inadmissible, the Registrar shall, without delay, send
a reasoned opinion to the chairman of the Board concerned.

The decision to devolve the case upon a single member

3.
shall be communicated to the parties.

The member to whom the case has been devolved shall refer
it to the Board if he finds that the conditions for devolution
are no longer met.

Article 1(d)

Referral of a case following a ruling of the Court of
Justice

If, pursuant to Article 63(6) of the Regulation, the
1.
measures necessary to comply with a judgment of
the
Court of Justice annulling all or part of a decision of a
Board of Appeal or of the Grand Board include re-exami-
nation by the Boards of Appeal of the case which was the
subject of that decision, the Presidium shall decide if the case
shall be referred to the Board which adopted that decision,
or to another Board, or to the Grand Board.

2.
If the case is referred to another Board, that Board shall
not comprise members who were party to the contested
decision. This provision shall not apply if
the case is
referred to the Grand Board.’

3. Article 4(3)
Article 4(3).

is deleted and Article 4(4)

is renumbered as

The minutes of oral proceedings and of the taking of
4.
evidence shall be drawn up by the Registrar or,
the
President of the Boards of Appeal agrees, by such agent of
the Boards of Appeal as
the Board
concerned may designate.

the chairman of

if

5.
The President of the Boards of Appeal may delegate to
the Registrar the task of allocating cases to the Boards of
Appeal in accordance with allocation criteria laid down by
the Presidium.

The Presidium may, upon a proposal by the President of the
tasks
Boards of Appeal, delegate to the Registry other
relating to the conduct of proceedings before the Boards
of Appeal.’

5. Article 8 is replaced by the following:

‘Article 8

Procedure

If

the Registrar sends the chairman of a Board of
1.
in
Appeal an opinion on the admissibility of an appeal
the
accordance with Article 5(3),
chairman of the Board in question may either suspend the
proceedings and request the Board to rule on the admissi-
bility of the appeal, or reserve judgement on the admissibility
of the appeal for the decision to end the proceedings before
the Board of Appeal.

second paragraph,

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In inter partes proceedings, and without prejudice to
2.
Article 61(2) of the Regulation, the statement setting out
the grounds of appeal and the response to it may be supple-
mented by a reply from the appellant,
lodged within two
months of the notification of the response, and a rejoinder
by the defendant, lodged within two months of notification
of the reply.

Such submissions shall cease to have effect should the
appellant discontinue the proceedings.’

Article 2

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

In inter partes proceedings, the defendant may, in his or
3.
her
response, seek a decision annulling or altering the
contested decision on a point not raised in the appeal.

The provisions of Article 8(2) and (3) of Regulation (EC) No
216/96, as amended by Article 1(5) of this Regulation, shall
apply only to proceedings in respect of which the appeal was
lodged after the entry into force of this Regulation.

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

Done at Brussels, 6 December 2004.

For the Commission

Charlie McCREEVY
Member of the Commission