Commission Regulation (EC) No 1041/2005 of 29 June 2005 amending Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark   (Text with EEA relevance)
Date: 2005-06-29
Institutions: European Commission
Subjects: EU trade mark, European Union Intellectual Property Office, administrative procedure, data recording, form, operation of the Institutions, trade-mark law

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COMMISSION REGULATION (EC) No 1041/2005

of 29 June 2005

amending Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the
Community trade mark

(Text with EEA relevance)

THE COMMISSION OF THE EUROPEAN COMMUNITIES,

amended: Rule 1(1)(c), Rule 3(2), Rule 61, Rule 72(4),
Rule 79, Rule 82, Rule 89(1) and (2).

Having regard to the Treaty
Community,

establishing the European

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

Whereas:

(1)

(2)

(3)

(4)

(5)

technical measures

According to Regulation (EC) No 40/94, it is necessary to
adopt
to implement dispositions
concerning the standard form for the searches reports,
division of the application and registration, revocation of
decisions, authorisations, and decisions taken by a single
member of the Opposition or Cancellation Division.

After 10 March 2008 the search system will remain
compulsory for Community trade marks, but it should
be made optional, subject to the payment of a fee, for
searches in the trade mark registers of the Member States
which notified their own decision to carry out a search.
A standard form comprising essential elements for the
search report is hereby laid out with a view to improving
the quality and uniformity of such search reports.

(trade marks and designs)

The declaration of division and registration must comply
with the elements set out in the present regulation. The
new ex officio revocation of a decision or an entry in the
register by the Office for Harmonization in the Internal
(The Office) must
Market
comply with the specific procedure as established in
the present regulation. The exceptional cases where an
authorisation is mandatory are specified. A list of simple
cases where a decision can be taken by a single member
of the Opposition or Cancellation Divisions is provided
for.

Furthermore, existing rules should be amended in order
to improve or clarify the procedure for registration. In
addition, certain procedural points should be amended
without changing the substance of the system.

In order to cover the specificities and facilities of the
are
e-filing

procedure,

provisions

following

the

(6)

(7)

(8)

(9)

electronic

filing and electronic publication of
The
Community trade mark applications
should facilitate
the filing of trade marks in general and in particular
enhance the filing of trade marks consisting of colours
per se or sounds by means of a representation of the
easily
mark which is
accessible,
objective. The
technical conditions,
in particular the data format for
sound files, should be laid down by the President of
the Office. E-filing of trade marks consisting of sounds
can be accompanied by an electronic sound file and this
file can be included in the electronic publication of the
Community trade mark applications to facilitate public
access to the sound itself.

clear, precise,
durable

self-contained,
and

intelligible,

The provisions concerning the opposition procedure
should be reframed completely as to specify the admis-
sibility requirements, to specify clearly the legal conse-
quences of deficiencies and to bring the provisions in the
chronological order of the proceedings.

Following the additional competence of the Office for the
examination of the admissibility of conversion the refusal
of a request for conversion may become partial in the
some
sense that conversion can be acceptable for
Member States but inadmissible for others. In addition,
some criteria to be used for examining absolute grounds
by reference to the language of a Member State should
be added.

Regarding costs to be born by the losing party in oppo-
sition and cancellation procedures, reimbursable costs of
the present
the representation should be limited but
maximum amounts should be increased slightly in view
of the time elapsed since adoption of the Implementing
Regulation. Where witnesses or experts are summoned,
no such maximum rate should be provided but the reim-
bursable costs shall comprise the actual amounts those
witnesses and experts can claim.

(10)

Commission Regulation (EC) No 2868/95 (2)
therefore be amended accordingly.

should

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

(2) OJ L 303, 15.12.1995, p. 1. Regulation as amended by Regulation

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

(EC) No 782/2004 (OJ L 123, 27.4.2004, p. 88).

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(11)

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 marks and designs),

HAS ADOPTED THIS REGULATION:

Article 1

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

1. Rule 1(1) is amended as follows:

(a) point (b) is replaced by the following:

‘(b) the name, address and nationality of the applicant
and the State in which he is domiciled or has his
seat or an establishment. Names of natural persons
shall be indicated by the persons family name and
given name(s). Names of legal entities, as well as
bodies falling under Article 3 of the Regulation,
shall be indicated by their official designation and
include the legal form of the entity, which may be
abbreviated in a customary manner. The telephone
numbers, fax numbers, electronic mail address and
details of other data communications links under
which the applicant accepts to receive communi-
cations may be given. Only one address shall,
in
principle, be indicated for each applicant. Where
several addresses are indicated, only the address
mentioned first
taken into account,
except where the applicant designates one of the
addresses as an address for service;’

shall be

(b) in point (c), the following is added:

‘, or a reference to the list of the goods and services of
a previous Community trade mark application;’

be

not

shall

(type-area)

the application appears. The sheet on which the mark
is reproduced shall not exceed DIN A4 size (29,7 cm
high, 21 cm wide) and the space used for the repro-
duction
than
26,2 cm × 17 cm. A margin of at least 2,5 cm shall
be left on the left-hand side. Where it is not obvious,
the correct position of the mark shall be indicated by
adding the word “top” to each reproduction. The repro-
duction of the mark shall be of such quality as to
to be reduced or enlarged to a size not
enable it
more than 8 cm wide by 16 cm high for publication
in the Community Trade Mark Bulletin.’;

larger

(b) paragraphs 5 and 6 are replaced by the following:

‘5. Where registration in colour is applied for, the
representation of the mark under paragraph 2 shall
consist of the colour reproduction of the mark. The
colours making up the mark shall also be indicated
in words and a reference to a recognized colour code
may be added.

6. Where registration of a sound mark is applied for,
the representation of the trade mark shall consist of a
in particular a
graphical representation of the sound,
musical notation; where
filed
through electronic means, it may be accompanied by
an electronic file containing the sound. The President of
the Office shall determine the formats and maximum
size of the electronic file.’;

application is

the

3. Rule 4 is replaced by the following:

‘Rule 4

Fees for the application

The fees payable for the application shall be:

(c) point (k) is replaced by the following:

(a)

the basic fee;

‘(k) the signature of the applicant or his representative

in accordance with Rule 79;’

(b) a class fee for each class exceeding three to which the

goods or services belong according to Rule 2;

(d) point (l) is added:

(c) where applicable, the search fee.’;

‘(l) where applicable,

the request of a search report

referred to in Article 39(2) of the Regulation.’;

2. Rule 3 is amended as follows:

(a) paragraph 2 is replaced by the following:

‘2.
In cases other than those referred to in paragraph
1 and save where the application is filed by electronic
means, the mark shall be reproduced on a sheet of
paper separate from the sheet on which the text of

4. The following Rule 5a is inserted:

‘Rule 5a

Search report

The search reports shall be prepared using a standard form
which contains at least the following information:

(a)

the name of the central industrial property offices that
carried out the search;

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(b) the number of

the trademark applications or regis-

trations mentioned in the search report;

(c)

the date of application and if applicable date of priority
registrations
trademark
of
mentioned in the search report;

applications

the

or

industrial property offices if

An international registration designating the European
2.
Community shall not be subjected to a search by the
central
for a
search report pursuant to Article 39(2) of the Regulation
is not made to the Office within one month starting with
the date on which the International Bureau notifies the
international registration to the Office, or if
the search
fee is not paid within the same period.’;

the request

(d) the date of registration of the trademarks mentioned in

the search report;

(e)

the name and contact address of the holder of the
trademarks applications or registrations mentioned in
the search report;

(f) a representation of

the trademarks applied for or

registered mentioned in the search report;

(g) an indication of the classes, according to the Nice Clas-
sification, for which the earlier national trademarks are
applied for or registered or of the goods and services
for which the trademarks mentioned in the search
report are either applied for or registered.’;

8. Point (c) of Rule 12 is replaced by the following:

‘(c) the reproduction of

together with the
the mark,
elements and descriptions referred to in Rule 3; where
the reproduction of the mark is in colour or contains
colours, the publication shall be in colour and shall
indicate the colour or colours making up the mark,
as well as, where applicable, the colour code indicated’;

9. In Rule 13, point (c) of paragraph 1, and paragraph 2

are deleted;

10. The following Rule 13a is inserted:

5. In Rule 6(1) the following sentence is added:

‘Rule 13a

‘If the previous application is a Community trade mark
application, the Office shall ex officio include a copy of
the previous application in the file of
the Community
trade mark application.’;

Division of the application

A declaration of

1.
pursuant to Article 44a of the Regulation shall contain:

the division of

the application

6. Rule 8(2) is replaced by the following:

(a) the file number of the application;

the declaration of seniority,

‘2. Where the applicant wishes to claim the seniority of
one or more earlier registered trade marks as referred to in
Article 34 of the Regulation, subsequent to the filing of the
application,
indicating the
Member State or Member States in or for which the
mark is registered, the number and the filing date of the
relevant registration, and the goods and services for which
the mark is registered, shall be submitted within a period of
two months from the filing date. The evidence required
under paragraph 1 shall be submitted to the Office
within a period of
the
declaration of seniority.’;

three months from receipt of

7. Rule 10 is replaced by the following:

‘Rule 10

Searches by national offices

If the request for a search report referred to in Article
1.
39(2) of the Regulation is not made in the application for a
Community trade mark, or if the search fee referred to in
Rule 4(c) is not paid within the time limit for paying the
basic application fee, the application shall not be subjected
to a search by the central industrial property offices.

(b) the name and address of the applicant in accordance

with Rule 1(1)(b);

(c) the list of goods and services which shall

form the
divisional application, or, where the division into
more than one divisional application is sought,
the
list of goods and services for each divisional application;

(d) the list of goods and services which shall remain in the

original application.

2. Where the Office finds that
the requirements laid
down in paragraph 1 are not fulfilled or the list of goods
and services which shall
form the divisional application
overlap with the goods and services which shall remain
in the original application, it shall invite the applicant to
remedy the deficiencies noted within such period as it may
specify.

If the deficiencies are not remedied before the time limit
expires, the Office shall refuse the declaration of division.

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The periods as referred to in Article 44a(2)(b) of the
3.
Regulation during which a declaration of division of the
application is not admissible shall be:

(a) the file number of the application against which oppo-
sition is entered and the name of the applicant for the
Community trade mark;

(a) the period before a date of filing has been accorded;

(b) a clear identification of the earlier mark or earlier right

on which the opposition is based, namely:

(b) the period of three months following the publication of
the application provided for in Article 42(1) of the
Regulation;

(c) the period after the date of issue of the notification to
pay the registration fee referred to in Rule 23(1).

the declaration of
4. Where the Office finds,
division is inadmissible pursuant
the
Regulation or pursuant to paragraph 3(a) and (b), it shall
refuse the declaration of division.

to Article 44a of

that

(i) where the opposition is based on an earlier mark
within the meaning of Article 8(2)(a) or (b) of the
Regulation or where the opposition is based on
Article 8(3) of the Regulation, the indication of
the file number or registration number of
the
earlier mark,
the indication whether the earlier
mark is registered or an application for registration,
the Member States
as well as the indication of
including, where applicable, the Benelux, in or for
which the
if
applicable, the indication that it is a Community
trade mark;

earlier mark is protected, or,

the file of

5.
The Office shall establish a separate file for the divi-
sional application, which shall consist of a complete copy
of
including the
the original application,
declaration of division and the correspondence relating
thereto. The Office shall assign a new application number
to the divisional application.

(ii) where the opposition is based on a well-known
mark within the meaning of Article 8(2)(c) of the
the Member State
Regulation,
where the mark is well-known and either the indi-
cations referred to in point (i) or a representation
of the mark;

the indication of

6. Where the declaration of division relates to an appli-
cation which has already been published pursuant to Article
40 of the Regulation, the division shall be published in the
Community Trade Marks Bulletin. The divisional appli-
cation shall be published;
the publication shall contain
the indications and elements referred to in Rule 12. The
publication does not open a new period for the filing of
oppositions.’;

(iii) where the opposition is based on an earlier right
within the meaning of Article 8(4), an indication of
its kind or nature, a representation of the earlier
right, and an indication of whether this earlier right
exists in the whole Community or in one or more
Member States, and if so, an indication of
the
Member States;

11. Rules 15 to 20 are replaced by the following:

‘Rule 15

Notice of opposition

1.
A notice of opposition may be entered on the basis
of one or more earlier marks within the meaning of Article
8(2) of the Regulation (earlier marks) and one and/or more
other earlier rights within the meaning of Article 8(4) of
the Regulation (earlier rights), provided that
the earlier
marks or earlier rights all belong to the same proprietor
or proprietors. If an earlier mark and/or an earlier right has
more than one proprietor (co-ownership), the opposition
may be filed by any or all of them.

(c) the grounds on which the opposition is based, namely a
statement to the effect that the respective requirements
under Article 8(1), (3), (4) and (5) of the Regulation are
fulfilled;

(d) the filing date and, where available, the registration date
and the priority date of the earlier mark, unless it is an
unregistered well-known trade mark;

(e) a representation of the earlier mark as registered or
applied for; if the earlier mark is in colour, the repre-
sentation shall be in colour;

2.

The notice of opposition shall contain:

(f)

the goods and services on which the opposition is
based;

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(g) where the opposition is based on an earlier mark
having a reputation within the meaning of Article
8(5) of the Regulation, an indication of the Member
State in which, and the goods and services for which,
the mark has a reputation;

(h) as concerns the opposing party:

(i)

the name and address of the opposing party in
accordance with Rule 1(1)(b);

(ii) where the opposing party has appointed a repre-
sentative, the name and business address of the
representative in accordance with Rule 1(1)(e);

(iii) where the opposition is entered by a licensee or by
a person who is entitled under the relevant national
law to exercise an earlier right, a statement to that
effect and indications concerning the authorisation
or entitlement to file the opposition.

3.

The notice of opposition may contain:

one month from the said date. Where the translation is not
filed or filed late, the language of the proceedings shall
remain unchanged.

Rule 16a

Information of the applicant

as well

Any notice of opposition and any document submitted by
the opposing party,
any communication
addressed to one of the parties by the Office prior to the
expiry of the period referred to in Rule 18 shall be sent by
the Office to the other party for purposes of informing of
the introduction of an opposition.

as

Rule 17

Examination of admissibility

1.
If the opposition fee has not been paid within the
opposition period, the opposition shall be deemed not to
have been entered. If the opposition fee has been paid after
the expiry of the opposition period, it shall be refunded to
the opposing party.

(a) an indication of the goods and services against which
the opposition is directed;
in the absence of such an
indication the opposition shall be considered to be
directed against all of the goods and services of the
opposed Community trade mark application;

(b) a reasoned statement setting out the main facts and
arguments on which the opposition relies,
and
evidence to support the opposition.

2.
If the notice of opposition has not been filed within
the opposition period, or if the notice of opposition does
not clearly identify the application against which oppo-
sition is entered or the earlier mark or the earlier right
on which the opposition is based in accordance with
Rule 15(2)(a) and (b), or does not contain grounds for
opposition in accordance with Rule 15(2)(c), and if those
deficiencies have not been remedied before the expiry of
the opposition period, the Office shall reject the opposition
as inadmissible.

4. Where the opposition is based on more than one
earlier mark or earlier right, paragraphs 2 and 3 shall
apply for each of these rights.

Rule 16

Use of languages in the notice of opposition

The time limit referred to in Article 115(6) of the
1.
Regulation within which the opposing party has to file a
translation of his opposition shall be one month from the
expiry of the opposition period.

2. Where the opposing party or the applicant, before the
date on which the opposition proceedings are deemed to
commence pursuant to Rule 18(1), informs the Office that
the applicant and the opposing party have agreed on a
proceedings
different
the
pursuant
the
opposing party shall, where the notice of opposition has
not been filed in that language, file a translation of the
notice of opposition in that language within a period of

language
for
to Article 115(7) of

the Regulation,

opposition

3. Where the opposing party does not submit a trans-
lation as required under Rule 16(1), the opposition shall be
rejected as inadmissible. Where the opposing party submits
an incomplete translation, the part of the notice of oppo-
sition that has not been translated shall not be taken into
account in the examination of admissibility.

4.
If the notice of opposition does not comply with the
other provisions of Rule 15, the Office shall
inform the
opposing party accordingly and shall
invite him to
remedy the deficiencies noted within a period of
two
If the deficiencies are not remedied before the
months.
time limit expires, the Office shall reject the opposition
as inadmissible.

5.
Any finding pursuant to paragraph 1 that the notice
of opposition is deemed not to have been entered and any
decision to reject an opposition as inadmissible under para-
graphs 2, 3 and 4 shall be notified to the applicant.

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Rule 18

Commencement of opposition proceedings

1. When the opposition is found admissible pursuant to
Rule 17, the Office shall send a communication to the
parties informing them that
the opposition proceedings
shall be deemed to commence two months after receipt
of the communication. This period may be extended up
to a total of 24 months if both parties submit requests
for such an extension before the period expires.

2. Within the period referred to in paragraph 1, the
opposing party shall also file proof of
the existence,
validity and scope of protection of his earlier mark or
earlier right, as well as evidence proving his entitlement
In particular, the opposing party
to file the opposition.
shall provide the following evidence:

(a) if the opposition is based on a trade mark which is not
a Community trade mark, evidence of its filing or regis-
tration, by submitting:

2.
If, within the period referred to in paragraph 1, the
application is withdrawn or restricted to goods and services
against which the opposition is not directed, or the Office
is informed about a settlement between the parties, or the
application is rejected in parallel proceedings, the oppo-
sition proceedings shall be closed.

(i)

if the trade mark is not yet registered, a copy of the
relevant filing certificate or an equivalent document
emanating from the administration with which the
trade mark application was filed; or

3.
If, within the period referred to in paragraph 1, the
applicant restricts the application by deleting some of the
goods and services against which the opposition is directed,
the Office shall invite the opposing party to state, within
such a period as it may specify, whether he maintains the
opposition, and if so, against which of the remaining goods
and services. If the opposing party withdraws the oppo-
sition in view of the restriction the opposition proceedings
shall be closed.

4.
If before expiry of the period referred to in paragraph
1 the opposition proceedings are closed pursuant to para-
graphs 2 or 3, no decision on costs shall be taken.

If before expiry of the period referred to in paragraph
5.
1 the opposition proceedings are closed following a with-
drawal or restriction of
to
paragraph 3, the opposition fee shall be refunded.

the application or pursuant

Rule 19

Substantiation of the opposition

The Office shall give the opposing party the oppor-
1.
the facts, evidence and arguments in
tunity to present
to complete any facts,
support of his opposition or
evidence or arguments that have already been submitted
pursuant to Rule 15(3), within a time limit specified by it
and which shall be at least 2 months starting on the date
on which the opposition proceedings shall be deemed to
commence in accordance with Rule 18(1).

(ii) if the trade mark is registered, a copy of the relevant
registration certificate and, as the case may be, of
the latest renewal certificate, showing that the term
of protection of the trade mark extends beyond the
time limit referred to in paragraph 1 and any
extension
documents
emanating from the administration by which the
trade mark was registered;

equivalent

thereof,

or

(b) if the opposition is based on a well-known mark within
the meaning of Article 8(2)(c) of
the Regulation,
evidence showing that this mark is well-known in the
relevant territory;

(c) if the opposition is based on a mark with reputation
within the meaning of Article 8(5) of the Regulation, in
addition to the evidence referred to in point (a) of this
paragraph, evidence showing that the mark has a repu-
tation, as well as evidence or arguments showing that
use without due cause of the trade mark applied for
would take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the earlier
trade mark;

(d) if the opposition is based on an earlier right within the
meaning of Article 8(4) of the Regulation, evidence of
its
and scope of
continued existence
protection of that right;

acquisition,

(e) if the opposition is based on Article 8(3) of the Regu-
lation, evidence of the opposing party's proprietorship
and of the nature of his relationship with the agent or
representative.

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The information and evidence referred to in para-
3.
graphs 1 and 2 shall be in the language of the proceedings
or accompanied by a translation. The translation shall be
submitted within the time limit specified for submitting the
original document.

(b) where the opposition is based on an application for
registration for a geographical indication or designation
of
(EEC) No
under Council Regulation
2081/92 (*) until a final decision is taken in that
proceeding; or

origin

The Office shall not

4.
take into account written
submissions or documents, or parts thereof, that have not
been submitted, or that have not been translated into the
language of the proceedings, within the time limit set by
the Office.

(c) where a suspension is appropriate under the circum-

stances.
___________
(*) OJ L 208, 24.7.1992, p. 1.’;

12. Rule 22 is replaced by the following:

Rule 20

Examination of the opposition

If until expiry of the period referred to in Rule 19(1)
1.
the opposing party has not proven the existence, validity
and scope of protection of his earlier mark or earlier right,
as well his entitlement to file the opposition, the opposition
shall be rejected as unfounded.

‘Rule 22

Proof of use

1.
A request for proof of use pursuant to Article 43(2)
or (3) of the Regulation shall be admissible only if the
applicant
request within the period
such a
specified by the Office pursuant to Rule 20(2).

submits

If

the opposition is not

2.
to
paragraph 1, the Office shall communicate the submission
of the opposing party to the applicant and shall invite him
to file his observations within a period specified by the
Office.

rejected pursuant

3.
If the applicant submits no observations, the Office
shall base its ruling on the opposition on the evidence
before it.

4.
The observations submitted by the applicant shall be
communicated to the opposing party who shall be invited
by the Office, if it considers it necessary to do so, to reply
within a period specified by the Office.

Rule 18(2) and (3) shall apply mutatis mutandis after
5.
the date on which the opposition proceedings are deemed
to commence.

In appropriate cases, the Office may invite the parties
6.
to limit their observations to particular issues,
in which
case it shall allow the party to raise the other issues at a
later stage of the proceedings. In no case shall the Office be
required to inform the parties which facts or evidence could
be or have not been submitted.

7.

The Office may suspend opposition proceedings:

(a) where the opposition is based on an application for
registration pursuant to Article 8(2)(b) of the Regu-
lation until a final decision is taken in that proceeding;

2. Where the opposing party has to furnish proof of use
or show that there are proper reasons for non-use, the
required
Office shall
within such period as it shall specify.
the opposing
party does not provide such proof before the time limit
expires, the Office shall reject the opposition.

invite him to provide the proof

If

time, extent and nature of use of

3.
The indications and evidence for the furnishing of
proof of use shall consist of indications concerning the
the opposing
place,
trade mark for
the goods and services in respect of
is registered and on which the opposition is
which it
based, and evidence in support of
these indications in
accordance with paragraph 4.

The evidence shall be filed in accordance with Rules
4.
in principle, be confined to the
79 and 79a and shall,
submission of supporting documents and items such as
invoices, photo-
packages,
graphs, newspaper
in
advertisements,
writing as referred to in Article 76(1)(f) of the Regulation.

labels, price lists, catalogues,

and statements

5.
A request for proof of use may be made with or
without submitting at the same time observations on the
grounds on which the opposition is based. Such obser-
vations may be filed together with the observations in
reply to the proof of use.

6. Where the evidence supplied by the opposing party is
not in the language of the opposition proceedings, the
Office may require the opposing party to submit a trans-
lation of that evidence in that language, within a period
specified by the Office.’

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13. Rule 24(2) is replaced by the following:

17. Rule 28(1) is amended as follows:

‘2.
The Office shall provide certified or uncertified copies
of the certificate of registration, upon payment of a fee.’;

(a) point (c) is deleted;

14. In Rule 25(1) point (c) is deleted;

(b) point (d) is replaced by the following:

15. The following Rule 25a is inserted:

‘Rule 25a

Division of a registration

A declaration of

1.
pursuant to Article 48a of the Regulation shall contain:

the division of a registration

(a) the registration number;

(b) the name and address of the proprietor of the trade

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

(c) the list of goods and services which shall

form the
registration, or, where the division into
divisional
more than one divisional registration is sought,
the
list of goods and services for each divisional regis-
tration;

(d) the list of goods and services which shall remain in the

original registration.

2. Where the Office finds that
the requirements laid
down in paragraph 1 are not fulfilled or the list of goods
and services which shall form the divisional registration
overlap with the goods and services which shall remain
in the original registration, it shall invite the applicant to
remedy the deficiencies noted within such period as it may
specify.

If the deficiencies are not remedied before the time limit
expires, the Office shall refuse the declaration of division.

3. Where the Office finds,
division is inadmissible pursuant
to Article 48a of
Regulation, it shall refuse the declaration of division.

the declaration of
the

that

the file of

4.
The Office shall establish a separate file for the divi-
sional registration, which shall consist of a complete copy
of
including the
declaration of division and the correspondence relating
thereto. The Office shall assign a new registration number
to the divisional registration.’;

the original

registration,

16. In Rule 26(2), point (d) is deleted;

‘(d) an indication of

the Member State or Member
States in or for which the earlier mark is registered,
the relevant
the number and the filing date of
for
registration,
which the earlier mark is registered;’

and the goods

and services

18. Rule 30 is replaced by the following:

‘Rule 30

Renewal of registration

1.

An application for renewal shall contain:

(a) the name of the person requesting renewal;

(b) the registration number of the Community trade mark

to be renewed;

(c) if the renewal is requested for only part of the goods
and services for which the mark is registered, an indi-
cation of those classes or those goods and services for
is requested or those classes or those
which renewal
is not
goods
for which renewal
the
requested, grouped according to the classes of
Nice classification, each group being preceded by the
number of the class of that classification to which that
group of goods or services belongs and presented in the
order of the classes of that classification.

services

and

2.
The fees payable under Article 47 of the Regulation
for the renewal of a Community trade mark shall consist of
the following:

(a) a basic fee;

(b) a class fee for each class exceeding three in respect of

which renewal is applied for; and

(c) where applicable, the additional fee for late payment of
the renewal fee or late submission of the request for
renewal, pursuant to Article 47(3) of the Regulation, as
specified in the Fees Regulation.

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It shall be deemed to constitute a request for renewal
3.
if the payment referred to in paragraph 2 is made by a
means of payment referred to in Article 5(1) of the Fees
Regulation, provided that
the indications
required under paragraph 1 (a) and (b) of this Rule and
Article 7(1) of the Fees Regulation.

it contains all

21. Rule 33 is amended as follows:

(a) paragraph 1 is replaced by the following:

4. Where the application for renewal is filed within the
periods provided for in Article 47(3) of the Regulation, but
the other conditions governing renewal provided for in
Article 47 of
the Regulation and these Rules are not
satisfied, the Office shall inform the applicant of the defi-
ciencies found.

5. Where an application for renewal is not submitted or
is submitted after expiry of the period provided for in the
third sentence of Article 47(3) of the Regulation, or where
the fees are not paid or are paid only after the period in
question has expired, or where the deficiencies are not
remedied within that period,
the Office shall determine
that the registration has expired and shall so notify the
proprietor of the Community trade mark.

Where the fees paid are insufficient to cover all the classes
of goods and services for which renewal is requested, such
a determination shall not be made if it is clear which class
or classes are to be covered. In the absence of other criteria,
the Office shall take the classes into account in the order of
classification.

(2),

Rule 31(1),

‘1.
(5) and (7) shall apply mutatis
mutandis to the registration of a licence, of a transfer
of a licence, of a right in rem, of a transfer of a right in
rem, of an enforcement measure or of
insolvency
proceedings, subject to the following:

(a) Rule 31(1)(c) shall not apply in respect of a request
in rem, of a levy of

for registration of a right
execution or of insolvency proceedings;

(b) Rule 31(1)(d) and (5) shall not apply where the
request was made by the proprietor of
the
Community trade mark.’;

(b) paragraph 2 is replaced by the following:

‘2.
The application for registration of a licence, a
transfer of a licence, a right in rem, a transfer of a
right in rem or an enforcement measure shall not be
deemed to have been filed until the required fee has
been paid.’;

6. Where the determination made pursuant to paragraph
5 has become final, the Office shall cancel the mark from
the register. The cancellation shall take effect from the day
following the day on which the existing registration
expired.

(c)

‘Articles 19, 20 or 22’ is replaced by
in paragraph 3,
‘Articles 19 to 22’ and ‘in paragraphs 1 and 2 above,’ is
replaced by ‘in paragraph 1 of this Rule and in Rule
34(2)’.

7. Where the renewal fees provided for in paragraph 2
have been paid but the registration is not renewed, those
fees shall be refunded.

8.
A single application for renewal may be submitted for
two or more marks, upon payment of the required fees for
each of the marks, provided that the proprietors or the
representatives are the same in each case.’;

(d) paragraph 4 is replaced by the following:

‘4.
Paragraphs 1 and 3 shall apply mutatis mutandis
to applications for Community trade marks. Licences,
rights in rem, insolvency proceedings and enforcement
measures shall be recorded in the files kept by the
Office concerning the Community trade mark appli-
cation.’;

19. Rule 31(3) and (4) is deleted;

22. Rule 34 is replaced by the following:

20. Rule 32(4) is replaced by the following:

‘Rule 34

‘4.
The Office shall establish a separate file for the new
registration, which shall consist of a complete copy of the
file of the original registration, including the application for
registration of the partial transfer and the correspondence
relating thereto. The Office shall assign a new registration
number to the new registration.’;

Special provisions for the registration of a licence

1.
The application for registration of a licence may
contain a request to record the licence in the Register as
one or more of the following:

(a) an exclusive licence;

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(b) a sub-licence in case where the licence is granted by a
licensee whose licence is recorded in the Register;

(c) a licence limited to only a part of the goods or services

for which the mark is registered;

(d) a licence limited to part of the Community;

(e) a temporary licence.

2. Where a request is made to record the licence as a
licence pursuant to paragraph 1(c), (d) and (e), the appli-
cation for registration of a licence shall indicate the goods
and services and the part of the Community and the time
period for which the licence is granted.’;

23. Rule 35(3) is replaced by the following:

‘3.
The application for cancellation of a licence, a right
in rem or an enforcement measure shall not be deemed to
have been filed until the required fee has been paid.’;

24. Point (c) of Rule 36(1) is deleted;

25. Rule 38 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘1.
The time limit referred to in Article 115(6) of the
Regulation within which the applicant for revocation or
a declaration of invalidity has to file a translation of his
application shall be one month, starting with the date
of the filing of his application, failing which the appli-
cation shall be rejected as inadmissible.’;

(b) in paragraph 3, the following sentence is added:

‘Where the translation is not filed or filed late, the
language of the proceedings shall remain unchanged.’;

inform the applicant that the application for revocation or
for declaration of invalidity is deemed not to have been
filed. If the fee has been paid after expiry of the period
specified, it shall be refunded to the applicant.

filed within the prescribed period,

2. Where the translation required under Rule 38(1) is
not
the Office shall
reject the application for revocation or for declaration of
invalidity as inadmissible.

If

the Office finds that

the application does not
3.
comply with Rule 37,
to
invite the applicant
it shall
remedy the deficiencies found within such period as it
may specify.
If the deficiencies are not remedied before
expiry of the time limit, the Office shall reject the appli-
cation as inadmissible.

4.
Any decision to reject an application for revocation
or declaration of invalidity under paragraph 2 or 3 shall be
communicated to the applicant and the proprietor of the
Community trade mark.’;

27. Rule 40 is amended as follows:

(a) paragraph 1 is replaced by the following:

or

for

Every

revocation

application

‘1.
for
invalidity which is deemed to have
declaration of
been filed shall be notified to the proprietor of the
Community trade mark. When the Office has found
the application admissible, it shall invite the proprietor
of the Community trade mark to file his observations
within such period as it may specify.’

(b) paragraph 4 is replaced by the following:

‘4.
Save where Rule 69 otherwise provides or allows,
all observations filed by the parties shall be sent to the
other party concerned.’;

26. Rule 39 is replaced by the following:

(c) paragraph 5 is replaced by the following:

‘Rule 39

Rejection of
declaration of invalidity as inadmissible

the application for revocation or for

1. Where the Office finds that the required fee has not
been paid, it shall invite the applicant to pay the fee within
a period specified by it.
If the required fee is not paid
within the period specified by the Office, the Office shall

‘5.
In the case of an application for revocation based
on Article 50(1)(a) of the Regulation, the Office shall
invite the proprietor of the Community trade mark to
furnish proof of genuine use of the mark, within such
period as it may specify. If the proof is not provided
within the time limit set, the Community trade mark
shall be revoked. Rule 22(2), (3) and (4) shall apply
mutatis mutandis.’;

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(d) a new paragraph 6 is added:

‘6.
If the applicant has to furnish proof of use or
proof that there are proper reasons for non-use under
Article 56(2) or (3) of the Regulation, the Office shall
invite the applicant to furnish proof of genuine use of
the mark, within such period as it may specify. If the
proof is not provided within the time limit set, the
shall be
invalidity
application for declaration of
(3) and (4) shall apply mutatis
rejected. Rule 22(2),
mutandis.’;

28. Rules 44 and 45 are replaced by the following:

‘Rule 44

Application for conversion

1.
An application for conversion of a Community trade
mark application or a registered Community trade mark
into a national trade mark application pursuant to Article
108 of the Regulation shall contain:

(a)

the name and the address of
conversion in accordance with Rule 1(1)(b);

the applicant

for

(b) the filing number of the Community trade mark appli-
cation or the registration number of the Community
trade mark;

(c)

indication of

the
conversion in
accordance with Article 108(1)(a) or (b) of the Regu-
lation;

the ground for

(d) the specification of the Member State or the Member
States in respect of which conversion is requested;

(e) where the request does not relate to all of the goods
and services for which the application has been filed or
for which the trade mark has been registered, the appli-
cation shall contain an indication of the goods and
services for which conversion is requested, and, where
conversion is requested in respect of more than one
Member State and the list of goods and services is
not the same for all Member States, an indication of
the respective goods and services for each Member
State;

(f) where conversion is

requested pursuant

to Article
108(6) of the Regulation, the application shall contain
the indication of the date on which the decision of the
national court has become final, and a copy of that
decision; that copy may be submitted in the language
in which the decision was given.

The application for conversion shall be filed within
2.
the relevant period pursuant to Article 108(4), (5) or (6) of
the Regulation. Where conversion is requested following a
failure to renew the registration, 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
request for renewal can be presented pursuant to Article
47(3) of the Regulation.

Rule 45

Examination of application for conversion

1. Where the application for conversion does not
comply with the requirements of Article 108(1) or (2) of
the Regulation or has not been filed within the relevant
period of three months or does not comply with Rule 44
or other Rules,
the Office shall notify the applicant
accordingly and specify a period within which he may
amend the application or furnish any missing information
or indications.

2. Where the conversion fee has not been paid within
the relevant period of three months, the Office shall inform
the applicant that the application for conversion is deemed
not to have been filed.

3. Where
the missing indications have not been
furnished within the period specified by the Office, the
Office shall reject the application for conversion.

Where Article 108(2) of the Regulation applies, the Office
shall reject the application for conversion as inadmissible
only with respect
to those Member States for which
conversion is excluded under that provision.

the Member States

4.
If the Office or a Community trade mark court has
refused the Community trade mark application or has
declared the Community trade mark invalid on absolute
grounds by reference to the language of a Member State,
conversion shall be excluded under Article 108(2) of the
Regulation for all
in which that
language is one of the official languages. If the Office or
a Community trade mark court has refused the Community
trade mark application or has declared the Community
trade mark invalid on absolute grounds which are found
to apply in the whole Community or on account of an
earlier Community trade mark or other Community
industrial property right, conversion is excluded under
Article 108(2) of the Regulation for all Member States.’;

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29. Rule 47 is replaced by the following:

‘Rule 47

transcription or obvious mistake in a
error, error of
decision, it shall ensure that error or mistake is corrected
by the department or division responsible.’

Transmission to central industrial property offices of
the Member States

33. The following Rule 53a is inserted:

the Regulation and these Rules,

Where the application for conversion complies with the
the
requirements of
Office shall transmit the application for conversion and
the data referred to in Rule 84(2), to the central industrial
property offices of
including the
Benelux Trade Mark Office, for which the application has
inform the
been found admissible. The Office
applicant of the date of transmission.’;

the Member States,

shall

30. In Rule 50(1) the following is added:

‘In particular, when the appeal is directed against a decision
taken in opposition proceedings, Article 78a of the Regu-
lation shall not be applicable to the time limits fixed
pursuant to Article 61(2) of the Regulation.

Where the appeal is directed against a decision of an Oppo-
sition Division, the Board shall limit its examination of the
appeal to facts and evidence presented within the time
limits set in or specified by the Opposition Division in
accordance with the Regulation and these Rules, unless
the Board considers
supplementary
facts and evidence should be taken into account pursuant
to Article 74(2) of the Regulation.’;

that additional or

31. Rule 51 is replaced by the following:

‘Rule 51

Reimbursement of appeal fees

‘Rule 53a

Revocation of a decision or entry in the Register

1. Where the Office finds of its own motion or pursuant
to corresponding information by the parties
to the
proceedings that a decision or entry in the Register is
subject to revocation pursuant to Article 77a of the Regu-
lation, it shall inform the party affected about the intended
revocation.

2.
The affected party may submit observations on the
intended revocation within a period specified by the Office.

3. Where the affected party agrees to the intended revo-
cation or where he does not submit any observations
within the period, the Office shall revoke the decision or
entry. If the affected party does not agree to the revocation,
the Office shall take a decision on the revocation.

Paragraphs 1, 2 and 3 shall apply mutatis mutandis if
4.
the revocation is likely to affect more than one party. In
these cases the observations submitted by one of the parties
pursuant to paragraph 3 shall always be communicated to
the other party or parties with an invitation to submit
observations.

The appeal fee shall only be reimbursed by order of either
of the following:

5. Where the revocation of a decision or an entry in the
Register affects a decision or entry that has been published,
the revocation shall also be published.

(a)

the department whose decision has been impugned,
where it grants revision pursuant to Article 60(1) or
Article 60a of the Regulation;

(b) the Board of Appeal, where it allows the appeal and
considers such reimbursement equitable by reason of a
substantial procedural violation.’;

32. Rule 53 is replaced by the following:

‘Rule 53

Correction of errors in decisions

Where the Office becomes aware, of its own motion or at
the instance of a party to the proceedings, of a linguistic

Competence for revocation under paragraphs 1 to 4
lie with the department or unit which took the

6.
shall
decision.’;

34. Rule 59(4) is replaced by the following:

‘4.
The amounts and the advances for expenses to be
paid pursuant to paragraphs 1, 2 and 3 shall be determined
by the President of the Office and shall be published in the
Official
shall be
calculated on the same basis as laid in the Staff Regulations
of the Officials of the European Communities and Annex
VII thereto.’;

the Office. The amounts

Journal of

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35. Rule 60 is replaced by the following:

registered letter with advice of delivery. All other noti-
fications shall be by ordinary mail.’;

‘Rule 60

Minutes of oral proceedings

(b) the second sentence of paragraph 2 is deleted;

1. Minutes of oral proceedings or the taking of evidence
shall be drawn up, containing:

(c) paragraph 5 is replaced by the following:

(a)

the date of the proceedings;

(b) the names of the competent officials of the Office, the
parties, their representatives, and of the witnesses and
experts who are present;

(c)

the applications and requests made by the parties;

(d) the means of giving or obtaining evidence;

‘5.
Notification by ordinary mail shall be deemed to
have been effected on the tenth day following that of
its posting.’;

38. In Rule 65(1), the second sentence is replaced by the

following:

‘Notification shall be deemed to have been taken place on
the date on which the communication was received by the
telecopying device of the recipient.’;

(e) where applicable, the orders or the decision issued by

the Office.

39. Rule 66(1) is replaced by the following:

The minutes shall become part of

2.
the
relevant Community trade mark application or registration.
The parties shall be provided with a copy of the minutes.

the file of

‘1.
If the address of the addressee cannot be established
or if after at least one attempt, notification in accordance
with Rule 62 has proved impossible, notification shall be
effected by public notice.’;

3. Where witnesses, experts or parties are heard in
accordance with Article 76(1)(a) or (d) of the Regulation
or Rule 59(2), their statements shall be recorded.’;

40. Rule 72(2) is replaced by the following:

36. Rule 61 is amended as follows:

(a) paragraph 1 is replaced by the following:

‘1.
In proceedings before the Office, notifications to
be made by the Office shall take the form of trans-
mitting the original document, an uncertified copy
thereof or a computer print-out in accordance with
Rule 55, or, as concerns documents emanating from
the parties themselves, duplicates or uncertified copies.’;

‘2.
If a time limit expires on a day on which there is a
general interruption in the delivery of mail in the Member
State where the Office is located, or, if and to the extent
that
the President of the Office has allowed communi-
cations to be sent by electronic means pursuant to Rule
82, on which there is an actual interruption of the Offices
connection to these electronic means of communication,
the time limit shall extend until the first day following
interruption on which the Office is open for the
that
receipt of documents and on which ordinary mail
is
delivered. The duration of the period of interruption shall
be determined by the President of the Office.’;

(b) the following paragraph 3 is added:

41. Rule 72(4) is replaced by the following:

‘3. Where the addressee has indicated his telecopier
number or contact details for communicating with him
through other technical means, the Office shall have the
choice between any of these means of notification and
notification by post.’;

37. Rule 62 is amended as follows:

(a) paragraph 1 is replaced by the following:

Decisions subject

‘1.
for appeal,
summonses and other documents as determined by
the Office shall be notified by
the President of

to a time limit

the proceedings having their

‘4.
If an exceptional occurrence such as a natural disaster
or strike interrupts or dislocates proper communication
from the parties to the proceedings to the Office or vice
versa, the President of the Office may determine that for
residence or
parties of
registered office in the State concerned or who have
appointed a representative with a place of business in the
State concerned, all time limits that otherwise would expire
on or after the date of commencement of such occurrence,
as determined by him, shall extend until a date to be
determined by him. If the occurrence affects the seat of
such determination of
the Office,
shall
specify that
it applies in respect of all parties to the
proceedings.’;

the President

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42. Rule 76 is amended as follows:

43. Rule 79 is amended as follows:

(a) paragraphs 1 to 4 are replaced by the following:

(a) points (a) and (b) are replaced by the following:

Legal practitioners and professional

‘1.
represen-
tatives entered on the list maintained by the Office
pursuant to Article 89(2) of the Regulation shall file
with the Office a signed authorisation for insertion in
the files only if the Office expressly requires it, or where
there are several parties to the proceedings in which the
representative acts before the Office, if the other party
expressly asks for it.

‘(a) by submitting a signed original of the document in
question at the Office, such as by post, personal
delivery, or by any other means;

(b) by transmitting a document by telecopier

accordance with Rule 80;’

in

2.
Employees acting on behalf of natural or legal
persons pursuant to Article 88(3) of the Regulation
file with the Office a signed authorisation for
shall
insertion in the files.

(b) point (c) is deleted;

44. The following Rule 79a is inserted:

the Community.

The authorisation may be filed in any official
3.
language of
It may cover one or
more applications or registered trade marks or may
be in the form of a general authorisation authorisin-
gauthorising the representative to act in respect of all
proceedings before the Office to which the person
giving the authorisation is a party.

4. Where it is required, pursuant to paragraphs 1 or
2, that a signed authorisation be filed, the Office shall
specify a time limit within which such authorisation
shall be filed. If the authorisation is not filed in due
time, proceedings shall be continued with the repre-
sented person. Any procedural steps other than the
filing of
the application taken by the representative
shall be deemed not to have been taken if the repre-
sented person does not approve them within a period
specified by the Office. The application of Article 88(2)
of the Regulation shall remain unaffected.’;

(b) paragraphs 8 and 9 are replaced by the following:

the

representative

‘8. Where the appointment of a representative is
the name and the
communicated to the Office,
shall be
address of
business
indicated in accordance with Rule 1(1)(e). Where a
representative acts before the Office who has already
been appointed, he
indicate his name and
preferably the identification number attributed to him
are
several
by the Office. Where
appointed by the same party,
they may, notwith-
standing any provisions to the contrary in their author-
isations, act either jointly or singly.

representatives

shall

9.
The appointment or authorisation of an asso-
ciation of representatives shall be deemed to be an
appointment or authorisation of any representative
who practices within that association.’;

‘Rule 79a

Annexes to written communications

Where a document or an item of evidence is submitted in
(a) by a party in a
accordance with Rule 79 point
proceeding before the Office involving more than one
party to the proceedings,
item of
evidence, as well as any annex to the document, shall be
submitted in as many copies as the number of parties to
the proceedings.’

the document or

45. Rule 80 is amended as follows:

(a) paragraph 1 is replaced by the following:

a

reproduction of

‘1. Where an application for a Community trade
mark is submitted to the Office by telecopier and the
application contains
the mark
pursuant
to Rule 3(2) which does not satisfy the
requirements of that Rule, the required reproduction
suitable for publication shall be submitted to the
Office in accordance with Rule 79(a). Where the repro-
duction is received by the Office within a period of one
month from the date of receipt of the telecopy, the
reproduction shall be deemed to have been received
by the Office on the date on which the telecopy was
received.’;

(b) in paragraph 3, the following sentence is added:

‘Where the communication has been sent by telecopier
electronically, the indication of the name of the sender
shall be equivalent to the signature.’;

(c) paragraph 4 is deleted;

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46. Rule 81 is deleted;

47. Rule 82 is amended as follows:

The Office shall make available the forms referred to
the
the official

languages

for

3.
in paragraph 1 in all
Community.’;

(a) paragraph 1 is replaced by the following:

49. Rule 84 is amended as follows:

The President of

‘1.
the Office shall determine
technical
to what extent and under what
whether,
conditions communications may be sent to the Office
by electronic means.’;

(b) paragraph 4 is deleted;

48. Rule 83 is replaced by the following:

‘Rule 83

Forms

The Office shall make available to the public free of

1.
charge forms for the purposes of:

(a)

filing an application for a Community trade mark,
including where appropriate a request for the search
report;

(b) entering an opposition;

(c) applying for revocation or declaration of invalidity;

(a)

in Paragraph 2 point (d) is replaced by the following:

‘(d) the name and address of the applicant;’

(b) paragraph 3 is amended as follows:

(i) point (i) is replaced by the following:

‘(i) levy of execution pursuant

to Article 20 of
the Regulation and insolvency proceedings
pursuant to Article 21 of the Regulation;’

(ii) the following points (w) and (x) are added:

‘(w) the division of a registration pursuant to Article
48a of the Regulation and Rule 25a, together
with the items referred to in paragraph 2 in
respect of the divisional registration, as well
the
the list of goods and services of
as
original registration as amended;

(d) applying for the registration of a transfer and the
transfer form and transfer document provided for in
Rule 31(5);

(x)

(e) applying for the registration of a licence;

the revocation of a decision or an entry in the
Register pursuant to Article 77a of the Regu-
lation, where
a
decision or entry which has been published.’;

revocation concerns

the

(f) applying for the renewal of a Community trade mark;

50. Rule 85(1) is replaced by the following:

(g) making an appeal;

(h) authorising a representative,

in the form of an indi-

vidual authorisation or a general authorisation;

(i)

submitting an international application or a subsequent
designation under the Madrid Protocol to the Office.

2.
use

(a)

Parties to the proceedings before the Office may also

forms established under the Trademark Law Treaty or
pursuant to recommendations of the Assembly of the
Paris Union for the Protection of Industrial Property;

(b) with the exception of the form referred to in point (i)
forms with the same content and

of paragraph 1,
format.

‘1.
The Community Trade Marks Bulletin shall be
published in the manner and frequency determined by
the President of the Office.’;

51. Rule 89(1) and (2) is replaced by the following:

Inspection of

‘1.
the files of Community trade mark
applications and of registered Community trade marks
shall either be of
the original document, or of copies
thereof, or of technical means of storage if the files are
stored in this way. The means of
inspection shall be
determined by the President of the Office.

Where inspection takes place as provided for in paragraphs
3, 4 and 5, the request for inspection of the files shall not
be deemed to have been made until the required fee has
been paid. No fee is payable if
technical
means of storage takes place online.

inspection of

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2. Where inspection of the files of a Community trade
mark application which has not yet been published
pursuant to Article 40 of the Regulation is requested, the
request shall contain an indication and evidence to the
effect that the applicant has consented to the inspection
or has stated that after the trade mark has been registered
he will
the party
requesting the inspection.’;

invoke the rights under

it against

52. Rule 91 is replaced by the following:

‘Rule 91

Keeping of files

accompanied by a bill and supporting evidence. For the
costs of representation referred to in paragraph 7(d) of
this Rule, an assurance by the representative that the
costs have been incurred shall be sufficient. For other
costs, it shall be sufficient if their plausibility is estab-
lished. Where the amount of the costs is fixed pursuant
to Article 81(6), first sentence, of the Regulation, repre-
sentation costs shall be awarded at the level laid down
in paragraph 7(d) of
this Rule and irrespective of
whether they have been actually incurred.’;

(b) in paragraph 4,

the words ‘the second sentence of
Article 81(6)’ are replaced by ‘the third sentence of
Article 81(6)’;.

The President of the Office shall determine the form

1.
in which the files shall be kept.

(c) paragraph 7 is replaced by the following:

2. Where files are kept electronically, these electronic
files, or back-up copies thereof, shall be kept without
time limitation. The original documents filed by parties to
the proceedings which form the basis of such electronic
files shall be disposed of after a period following their
reception by the Office, which shall be determined by the
President of the Office.

3. Where and to the extent that files or parts of the files
are kept in any other form than electronically, documents
or items of evidence constituting part of such files shall be
kept for at least five years from the end of the year in
which any of the following occurrences takes place:

Subject

to paragraph 3 of

‘7.
this Rule, costs
essential to the proceedings and actually incurred by
the successful party shall be borne by the losing party
in accordance with Article 81(1) of the Regulation on
the basis of the following maximum rates:

(a) where the party is not represented by a represen-
tative, travel and subsistence expenses of one party
for one person for the outward and return journey
between the place of residence or the place of
business and the place where oral proceedings are
held pursuant to Rule 56, as follows:

(a)

the application is rejected or withdrawn or is deemed to
be withdrawn;

(i)

the first-class rail-fare including
transport supplements where the total

the cost of
usual
distance by rail does not exceed 800 km;

(b) the registration of the Community trade mark expires
completely pursuant to Article 47 of the Regulation;

(c)

the complete surrender of the Community trade mark
is registered pursuant to Article 49 of the Regulation;

(d) the Community trade mark is completely removed
from the Register pursuant to Article 56(6) or Article
96(6) of the Regulation.’;

53. Rule 94 is amended as follows:

(ii)

the cost of the tourist-class air-fare where the
total distance by rail exceeds 800 km or the
route includes a sea-crossing;

(iii) subsistence expenses as laid down in Article 13
to the Staff Regulations of

of Annex VII
Officials of the European Communities;

(b) travel

expenses of

representatives within the
meaning of Article 89(1) of the Regulation, at the
rates provided for in point (a)(i) and (ii) of this Rule;

(a) paragraph 3 is replaced by the following:

(c)

‘3. Where the amount of the costs has not been
fixed pursuant to Article 81(6), first sentence, of the
Regulation, the request for the fixing of costs shall be

travel expenses, subsistence expenses, compensation
for loss of earnings and fees to which witnesses and
experts are entitled to be reimbursed pursuant to
Rule 59(2),
final
liability lies with a party to the proceedings
pursuant to Rule 59(5)(b);

to the extent

(3) or (4),

that

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Official Journal of the European Union

5.7.2005

(d) cost of

representation, within the meaning of

54. Rule 98 is replaced by the following:

Article 89(1) of the Regulation,

(i)

of
the
proceedings:

opposing

party

in

opposition

‘Rule 98

Translations

EUR 300;

(ii) of the applicant in opposition proceedings:

EUR 300;

(iii) of

the applicant

revocation or
trade mark:

EUR 450;

in proceedings relating to
a Community

invalidity of

(iv) of

the proprietor of

trade mark in
proceedings relating to revocation or invalidity
of a Community trade mark:

the

EUR 450;

(v) of the appellant in appeal proceedings:

1. When a translation of a document is to be filed, the
translation shall
identify the document to which it refers
and reproduce the structure and contents of the original
document. The Office may require the filing, within a
period to be specified by it, of a certificate that the trans-
lation corresponds to the original text. The President of the
Office shall determine the manner in which translations
shall be certified.

2.
Save where the Regulation or these Rules provide
otherwise, a document for which a translation is to be
filed shall be deemed not to have been received by the
Office

(a) where the translation is received by the Office after
expiry of
submitting the
the relevant period for
original document or the translation;

(b) in the case of paragraph 1, where the certificate is not

filed within the period specified.’;

EUR 550;

55. Rule 100 is replaced by the following:

(vi) of the defendant in appeal proceedings:

‘Rule 100

EUR 550;

(vii) where an oral proceedings have taken place to
which the parties have been summoned
pursuant to Rule 56, the amount referred to
in the points (i) to (vi) shall be incremented by
EUR 400;

(e) where there are several applicants or proprietors of
the Community trade mark application or regis-
tration or where there are several opposing parties
or applicants for revocation or declaration of inva-
lidity who have filed the opposition or application
for revocation or declaration of invalidity jointly,
the losing party shall bear the costs referred to in
point (a) for one such person only;

(f) where the successful party is represented by more
than one representative within the meaning of
Article 89(1) of the Regulation, the losing party
shall bear the costs referred to in points (b) and
(d) of this Rule for one such person only;

(g) the losing party shall not be obliged to reimburse
the successful party for any costs, expenses and fees
other than those referred to in points (a) to (f).’;

Decisions taken by a single member

The cases in which pursuant to Article 127(2), or Article
129(2), of the Regulation a single member of the Oppo-
sition Division or of the Cancellation Division may take a
decision shall be the following:

(a) decisions on the apportionment of costs;

(b) decisions to fix the amount of the costs to be paid
pursuant to Article 81(6), first sentence, of the Regu-
lation;

(c) decisions
judgment;

to close the file or not

to proceed to

(d) decisions to reject an opposition as inadmissible before

expiry of the period referred to in Rule 18(1);

(e) decisions to stay proceedings;

(f) decisions

to join or

separate multiple oppositions

pursuant to Rule 21(1).’;

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56. Paragraphs 1, 2 and 3 of Rule 101 are replaced by the

(a)

in paragraph 1 point (d) is replaced by the following:

following:

‘1.
If necessary, the President of the Office shall request
the Commission to enquire whether a State which is not
party to the Paris Convention or to the Agreement estab-
lishing the World Trade Organization accords reciprocal
treatment within the meaning of Article 29(5) of the Regu-
lation.

If

the Commission determines

reciprocal
2.
treatment in accordance with paragraph 1 is accorded,
it
shall publish a communication to this effect in the Official
Journal of the European Union.

that

3.
Article 29(5) of the Regulation shall apply from the
date of publication in the Official Journal of the European
Union of the communication referred to in paragraph 2,
unless the communication states an earlier date from which
it is applicable. It shall cease to apply from the date of
publication in the Official Journal of the European Union of
a communication of the Commission to the effect that
is no longer accorded, unless the
reciprocal
communication states an earlier date from which it
is
applicable.’;

treatment

57. Rule 114 is amended as follows:

‘(d) the indications and elements referred to in Rule

15(2)(b) to (h).’;

(b) in paragraph 2, the introductory phrase is replaced by

the following:

‘Rules 15(1),
subject to the following:’;

(3) and (4) and 16 to 22 shall apply,

58. Point (c) of Rule 122(1) is replaced by the following:

‘(c) the indications and elements
44(1)(a), (c), (d), (e) and (f)’.

referred to in Rule

Article 2

1.
This Regulation shall enter into force on the 20th day
following its publication in the Official Journal of the European
Union.

2.
In Article 1 point (1)(d), point (3), point (4) and point (7)
shall apply from 10 March 2008, as shall the second part,
commencing with the word ‘including’, of point (a) of Rule
83(1), set out at point 48 of Article 1 of this Regulation.

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

Done at Brussels, 29 June 2005.

For the Commission

Charlie McCREEVY
Member of the Commission